[Federal Register Volume 71, Number 131 (Monday, July 10, 2006)]
[Proposed Rules]
[Pages 38808-38823]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 06-6027]


=======================================================================
-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2005-0024]
RIN 0651-AB95


Changes To Information Disclosure Statement Requirements and 
Other Related Matters

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (Office) is 
proposing changes to information disclosure statement (IDS) 
requirements and other related matters to improve the quality and 
efficiency of the examination process. The proposed changes will enable 
the examiner to focus on the relevant portions of submitted information 
at the very beginning of the examination process, give higher quality 
first actions, and minimize wasted steps. The Office is proposing the 
following changes relating to submissions of IDSs by applicants/patent 
owners: Before a first Office action on the merits, require additional 
disclosure for English language documents over twenty-five pages, for 
any foreign language documents, or if more than twenty documents are 
submitted, but documents submitted in reply to a requirement for 
information or resulting from a foreign search or examination report 
would not count towards the twenty document limit; permit the filing of 
an IDS after a first Office action on the merits only if certain 
additional disclosure requirements have been met; and eliminate the 
fees for submitting an IDS. Updates to the additional disclosure 
requirements would be required as needed for every substantive 
amendment. The Office is also proposing to revise the protest rule to 
better set forth options that applicants have for dealing with 
unsolicited information received from third parties.

DATES: To be ensured of consideration, written comments must be 
received on or before September 8, 2006. No public hearing will be 
held.

ADDRESSES: Comments should be sent by electronic mail over the Internet 
addressed to: [email protected]. Comments may also be submitted 
by mail addressed to: Mail Stop Comments-Patents, Commissioner for 
Patents, P.O. Box 1450, Alexandria, VA 22313-1450; or by facsimile to 
(571) 273-7707, marked to the attention of Hiram H. Bernstein. Although 
comments may be submitted by mail or facsimile, the Office prefers to 
receive comments via the Internet.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (http://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    The comments will be available for public inspection at the Office 
of Patent Legal Administration, Office of the Deputy Commissioner for 
Patent Examination Policy, currently located at Room 7D74 of Madison 
West, 600 Dulany Street, Alexandria, Virginia, and will be available 
through anonymous file transfer protocol (ftp) via the Internet 
(address: http://www.uspto.gov). Because comments will be made 
available for public inspection, information that is not desired to be 
made public, such as an address or phone number, should not be included 
in the comments.

FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein ((571) 272-7707), 
Senior Legal Advisor, Office of Patent Legal Administration, Office of 
the Deputy Commissioner for Patent Examination Policy; or Robert J. 
Spar ((571) 272-7700), Director of the Office of Patent Legal 
Administration, Office of the Deputy Commissioner for Patent 
Examination Policy, directly by phone, or by facsimile to (571) 273-
7707, or by mail addressed to: Mail Stop Comments-Patents, Commissioner 
for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: The Office is proposing changes to the rules 
of practice in title 37 of the Code of Federal Regulations (CFR) to 
revise IDS practice. The Office is specifically proposing changes to 
Sec. Sec.  1.17, 1.48, 1.55, 1.56, 1.97, 1.98, 1.99 1.291, 1.312, 
1.555, and 1.948.
    The Office will post a copy of this notice on its Internet Web site 
(http://www.uspto.gov). Additionally, individuals or organizations that 
need a copy for the purpose of providing comments, may send a request 
by phone or e-mail to Terry Dey at ((571) 272-7730 or 
[email protected]) to receive an e-mail copy of the notice. When 
making a request for an e-mail copy, it is requested that persons 
please specify whether they wish to receive the document in MS-Word, 
WordPerfect, or HTML format.
    The following definitions are intended to facilitate an 
understanding of the discussion of the proposed rules.

[[Page 38809]]

The words ``information,'' ``citation'' and ``document'' are used to 
describe any item of information listed in an IDS. Unless otherwise 
indicated, the term ``applicant'' is intended to cover the ``patent 
owner'' in regard to submissions of IDSs in ex parte or inter partes 
reexaminations. The words ``Sec.  1.56(c) individual'' are intended to 
cover all parties identified in Sec.  1.56(c).
    Background and Rationale: Persons associated with a patent 
application have a duty to disclose certain information to the Office. 
This duty was codified as Sec.  1.56 in 1977. Pursuant to Sec.  
1.56(a), each individual associated with the filing and prosecution of 
a patent application must disclose to the Office ``all information 
known to that individual to be material to patentability.'' It must be 
emphasized that there is no duty to disclose information to the Office 
if the information is not material. As a companion to Sec.  1.56, 
Sec. Sec.  1.97 and 1.98 were added to provide ``a mechanism by which 
patent applicants may comply with the duty of disclosure provided in 
Sec.  1.56.'' See Manual of Patent Examining Procedure Sec.  609 (8th 
ed. 2001) (Rev. 3, August 2005) (MPEP).
    Although Sec.  1.56 clearly imposes a duty to disclose material 
information, that rule neither authorizes nor requires anyone to file 
unreviewed or irrelevant documents with the Office. Such documents add 
little to the effectiveness of the examination process and, most 
likely, negatively impact the quality of the resulting Office 
determinations.
    One goal of the changes proposed in this notice is to enable an 
examiner to identify the most relevant prior art in an efficient and 
expeditious manner, even when an IDS containing a large number of 
documents is submitted. The changes proposed in this notice accomplish 
this by requiring in certain circumstances additional disclosure about 
documents cited in an IDS. Applicants and their representatives are 
reminded that the presentation of an IDS, like any other paper filed in 
the Office, is subject to the provisions of Sec.  10.18. The reasonable 
inquiry mandated by Sec. Sec.  10.18(b)(2) and 10.18(b)(2)(i) requires 
that information in an IDS be reviewed to assure its submission does 
not cause unnecessary delay or needlessly increase the cost of 
examination. Failure to review can also implicate obligations of 
registered practitioners under Sec. Sec.  10.23(b) and (c), and Sec.  
10.77(b). Likewise, when an IDS includes several documents of marginal 
relevance, combined with other evidence suggesting that the marginally 
relevant information was submitted with the intent to obscure material 
information, this may run afoul of the duty of candor and good faith 
set forth in Sec.  1.56(a). In such circumstance, an inference that the 
applicant or their representative attempted to cover up or conceal a 
material reference could be drawn. See Sec.  10.18(b); and see Molins 
PLC v. Textron, Inc., 48 F.3d 1172, 1184, 33 USPQ2nd 1823, 1831 (Fed. 
Cir. 1995) (``burying a particularly material reference in a prior art 
statement containing a multiplicity of other references can be 
probative of bad faith'').
    Current IDS requirements are ineffective: Current Sec. Sec.  1.97 
and 1.98 do not encourage applicants to bring the most relevant 
information to the attention of the examiner early in the examination 
process, at least, in part, because applicants and practitioners 
mistakenly believe that people associated with a patent application 
must submit questionably or marginally relevant documents in order to 
ensure compliance with the Sec.  1.56 duty of disclosure. A limited 
amount of time is available for an examiner's initial examination of 
the application, which includes at least a mandatory cursory review of 
each document cited. Thus, when large IDSs are submitted without any 
identification of relevant portions of documents, some of the 
examiner's limited time is diverted to consider the cited documents, 
and efforts to perform a quality examination may be adversely affected. 
This is especially true when the submission includes irrelevant or 
marginally relevant documents, and the situation is worsened when a 
large number of the documents are irrelevant, marginally relevant, or 
cumulative. It appears that applicants sometimes file large collections 
of information for the examiner's review without having first reviewed 
the information themselves for relevance in the mistaken belief that 
such action is permitted under the current rules. If irrelevant 
information is filtered out before an IDS is filed, the examiner will 
be able to focus upon the more relevant information, and perform a more 
efficient, effective examination.
    The effectiveness and quality of the examination process, as well 
as the resulting patentability determinations, stand to improve if the 
most pertinent information about the invention is before the examiner 
during examination, and especially before the first Office action. 
Early submission of pertinent information by the applicant goes hand in 
hand with an examiner's prior art search in making sure that the goals 
of improving the effectiveness and quality of the examination process, 
and the resulting patentability determinations, are achieved. The 
Office recognizes, however, that sometimes not all pertinent 
information is available for submission prior to the first Office 
action on the merits. Therefore, to allow for such circumstances while 
still achieving these goals, the later a document is submitted during 
the prosecution process, the greater the amount of additional 
disclosure that the applicant will be required to provide. The Office 
is proposing a structure for filing IDSs that will enable applicants to 
provide meaningful information to the examiner in the most effective 
and efficient manner.
    Elimination of fee requirements (Sec.  1.17(p)): The fee 
requirement under Sec.  1.17(p) for submitting an IDS is proposed to be 
eliminated. Under current Sec.  1.97, an applicant can delay the 
examiner's receipt of relevant information until after the initial 
stage of examination by simply paying the fee under Sec.  1.17(p). 
Under the proposed rules, an applicant wishing to submit an IDS after a 
first Office action on the merits and before the mailing date of a 
notice of allowability or a notice of allowance under Sec.  1.311 could 
only do so if applicant meets the certification requirements under 
Sec.  1.97(e)(1) (that the information was discovered as a result of 
being cited by a foreign patent office in a counterpart application and 
is being submitted to the Office within three months of its citation by 
the foreign patent office), or applicant complies with applicable 
additional disclosure requirements.
    The current requirements under Sec. Sec.  1.97 and 1.98 for 
submitting an IDS after a notice of allowance are proposed to be 
revised by providing two windows, one before, or with, and one after, 
payment of the issue fee. Submission of an IDS during either of these 
two windows will require compliance with heightened additional 
disclosure requirements (compared to those required for submissions 
after a first Office action but prior to a notice of allowance or 
notice of allowability), which will depend upon whether a current claim 
is unpatentable in view of the information in the newly submitted IDS.
    Threshold number of cited information: Under the proposed rules, 
when an applicant submits an unusually large amount of information 
before a first Office action, the applicant must help to ease the 
burden on the Office associated with the examiner's consideration of 
the information. The Office has surveyed, across all technologies, 
3,084 small entity applications and 9,469 non-small entity 
applications, covering a six-week period of allowed applications to 
determine the

[[Page 38810]]

appropriate threshold number of cited information. In this survey, 
which includes all IDSs submitted at any time during the prosecution 
process of an application, approximately eighty-five percent of the 
sample included twenty or fewer submitted documents, while eighty-one 
percent of applications included fifteen or fewer submitted documents. 
Thus, the Office has determined that for IDSs submitted prior to a 
first Office action on the merits, a threshold of twenty documents best 
balances the interests of the Office and of the applicants. It should 
be noted that a threshold of twenty documents for IDSs submitted prior 
to a first Office action on the merits would not require a change in 
practice for most applications. The Office expects that more than 
eighty-five percent of IDSs filed prior to first Office action on the 
merits would not require any explanation because the threshold number 
only applies to IDSs filed prior to first Office action and has certain 
exceptions, while the above-mentioned survey included all IDSs filed 
throughout the entire prosecution of the application with no 
exceptions. The threshold of twenty cited pieces of information is 
deemed adequate, particularly in view of the fact that documents 
resulting from a foreign search or examination report when accompanied 
by a copy of the foreign search or examination report, would be 
excepted (not counted toward the threshold number). In addition, 
documents submitted in reply to a requirement for information under 
Sec.  1.105 would also be excepted.
    Additional Disclosure Requirements: The Office is proposing 
additional disclosure requirements for some IDS submissions to promote 
effective and efficient examination. First, for applications in which 
twenty or fewer documents have been cited in one, or more IDS prior to 
a first Office action on the merits, an explanation is required only 
for English-language documents over twenty-five pages, and for non-
English-language documents of any length. Second, for applications in 
which more than twenty total documents have been cited in one, or more, 
IDS prior to a first Office action on the merits, an explanation is 
also required for each cited document. The required explanation must 
identify information in each document that is relevant to the claimed 
invention or supporting specification. These required explanations are 
intended to provide meaningful information to the examiner when a large 
IDS, considering all IDSs cumulatively which are filed within this 
window of time, is presented before a first Office action on the merits 
has been given.
    More extensive disclosure requirements would apply to IDS 
submissions after a first Office action on the merits. Thus, applicant 
would be required to provide a non-cumulative description as well as an 
explanation, or a copy of a recently issued foreign search or 
examination report, for each document submitted after a first Office 
action on the merits. Where an IDS is filed after the mailing date of a 
notice of allowability or a notice of allowance under Sec.  1.311, 
applicant would be required to provide an appropriate patentability 
justification, which includes the explanation and non-cumulative 
description required after a first Office action, and reasons why the 
claims are patentable over the cited document(s).
    If an applicant presents unusually long documents, foreign-language 
documents, or a large number of documents, more than a brief review by 
the examiner is likely to be needed to reveal the most pertinent 
portions of the documents. In such situations, the applicant's help is 
needed so that the examiner may provide the best and most efficient 
examination possible. Therefore, the proposed amended rules require 
that in appropriate cases applicants must provide additional 
disclosure, such as an identification of a portion of a document that 
caused it to be cited, and an explanation of how the specific feature, 
showing, or teaching of the document correlates with language in one or 
more claims. In those rare instances, where the specific feature, 
showing, or teaching cannot be correlated to a claim limitation, 
correlation to a specific portion of the supporting specification would 
be required.
    If an applicant presents cumulative information, review of such 
information would waste examiner resources. Accordingly, an IDS must 
not cite documents that are merely cumulative of other cited 
information or supply information merely cumulative of what is already 
present in the record. To aid in compliance with this prohibition, 
applicants are required to submit a non-cumulative description for IDSs 
submitted after a first Office action and after allowance. A non-
cumulative description is one that describes a disclosure in the cited 
document that is not present in any other document of record.
    Thus, while there may be substantial overlap between a currently 
cited document and a document previously of record, the currently cited 
document must include a teaching, showing, or feature not provided in 
other documents of record, and the non-cumulative description must 
point this out.
    Examiner's consideration of information: Documents submitted in an 
IDS are reviewed in the same manner as items of information obtained by 
the examiner from other sources. That is, a document is given an 
initial brief review in order to determine whether it warrants a more 
in-depth study. Two indicators of the need for a more thorough review 
are: (1) That the document has been applied in a rejection, or 
specifically commented on by an examiner, in a case drawn to the same 
or similar subject matter; or (2) that the document has been 
particularly described by the applicant and its relevance to the 
claimed invention and/or supporting specification clarified. This 
practice reflects the practical reality of patent examination which 
affords the examiner a limited amount of time to conclude all aspects 
of the examination process.
    Unsolicited information supplied to applicants by third parties: 
Some applicants receive large amounts of unsolicited information from 
third parties, sometimes accompanied by an allegation that the 
information is relevant to particular technologies or applications. 
Currently, many applicants simply submit such information to the Office 
via an IDS. The Office is proposing to avoid the burdens to both the 
Office and applicants occasioned by this practice by clarifying that 
applicant may opt to provide written consent to the filing of a protest 
by the third party based on such information, thus shifting the 
explanation burden back to the third party.
    Conclusion: The Office believes that the proposed changes will 
enhance the examination process for both examiners and applicants. 
Ensuring a focused and thorough examination is a joint responsibility 
of the examiner and the applicant, particularly as examination is not 
seen by the Office as an adversarial process. The proposed changes 
provide an incentive to the applicant to cite only the most relevant 
documents, and are designed to provide the examiner with useful and 
relevant information early in the examination process. All parties 
involved with, or affected by, the patent system want the patent 
examination system to ``get it right'' the first time. Concentrating 
the patent examiner's review on the information most pertinent to 
patentability prior to a first Office action on the merits will 
significantly help in achieving this goal.

[[Page 38811]]

Discussion of the Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:
    Section 1.17: Section 1.17(h) is proposed to be amended to provide 
a petition fee for a petition to withdraw a reexamination proceeding 
from the publication process under Sec.  1.98(a)(3)(iii)(B). This 
proposed amendment reflects that there is no withdrawal of a 
reexamination proceeding from issue available under Sec.  1.313; thus, 
a petition to withdraw a reexamination proceeding from the publication 
process would be filed under Sec.  1.98(a)(3)(iii)(B), not under Sec.  
1.313.
    Section 1.17(p) is proposed to be revised to delete the IDS fee 
requirements in Sec. Sec.  1.97(c) and (d), as a conforming change.
    Section 1.48: Section 1.48 is proposed to be amended in the title, 
paragraph (h), and by the addition of paragraph (k), including (k)(1) 
through (k)(3), to address a change in the order of inventors' names, 
and a change in the spelling, or updating of an inventor's name in 
pending or abandoned applications.
    Section 1.48(h) would be revised to clarify the exclusion of 
correction of inventorship via reexamination or reissue under Sec.  
1.48. This exclusion of reexamination is analogous to the exclusion of 
correction of inventorship in patents under Sec.  1.48 clarified by 
Sec.  1.48(i).
    Section 1.48(k) would require that the requests pursuant to Sec.  
1.48(k) be accompanied by a processing fee of $130.00 pursuant to Sec.  
1.17(i) for non-provisional applications, or $50.00 pursuant to Sec.  
1.17(q) for a provisional application (where applicable). Additionally, 
each request pursuant to Sec.  1.48(k) should also be accompanied by a 
supplemental application data sheet, pursuant to Sec.  1.76, for 
changes in a nonprovisional application. The concomitant submission of 
a supplemental application data sheet pursuant to Sec.  1.76 with a 
request pursuant to Sec.  1.48(k) is strongly advised as the best means 
to ensure that the Office will recognize such requested change, 
particularly after the mailing of a notice of allowance, when such 
information is needed for printing inventorship information on the face 
of any patent to issue. The requests permitted under Sec.  1.48(k) are 
limited to non-reissue applications and do not cover issued patents, 
which would require that a certificate of correction procedure be used. 
Thus, Sec.  1.48(k) is not applicable to reissue applications or 
reexamination proceedings. A newly executed Sec.  1.63 oath or 
declaration is not required. The submission of a newly executed Sec.  
1.63 declaration would not be effective; rather, applicant must proceed 
via Sec.  1.48(k) to effectuate the changes permitted by this 
provision.
    Section 1.48(k)(1) would provide that the order of the inventors' 
names may be changed to another specified order, except in provisional 
or reissue applications. Currently, such requests would generally be 
done by petition under Sec.  1.182 with a petition fee of $400. MPEP 
Sec.  605.04(f).
    Section 1.48(k)(2) would provide a means to change the spelling of 
an inventor's name in either a provisional or nonprovisional 
application. Currently, such requests, other than typographical or 
transliteration errors, would be done in nonprovisional applications by 
petition under Sec.  1.182 and a petition fee of $400.00. See MPEP 
Sec.  605.04(b). Section 1.48(k)(2) would cover all requests for a 
spelling change, including typographical errors (made by applicant) and 
transliteration errors. This would eliminate the time consuming back 
and forth correspondence as to whether a change in spelling was in fact 
a typographical or transliteration error, or whether a petition has to 
be filed, particularly as many requests for change in spelling are 
attempted to be submitted under the umbrella of typographical or 
transliteration errors when clearly they are not.
    Section 1.48(k)(3) would provide a means to update an inventor's 
name (e.g., changed due to marriage) when it has changed after the 
filing of an application (excluding reissue applications). A request 
for updating an inventor's name must be accompanied by: (i) An 
affidavit signed with both names and setting forth the procedure 
whereby the change of names was effected; or (ii) a certified copy of a 
court order for name change. Such change in name is currently 
accomplished by the filing of a petition under Sec.  1.182 and a 
petition fee of $400. MPEP Sec.  605.04(c). Where an inventor's name 
was changed prior to the filing of an application, yet the old name was 
utilized in an executed Sec.  1.63 declaration, a petition under Sec.  
1.48(a) would be required.
    Section 1.55: Section 1.55(a)(2) is proposed to be amended to be 
consistent with the proposed changes to Sec.  1.312, which provides an 
expanded opportunity for applicants to have entered certain technical 
amendments after the close of prosecution in an allowed application 
without withdrawal of the application from issue. Specifically, under 
the proposed changes to Sec.  1.312(a)(2), a foreign priority claim 
made after the payment of the issue fee may be included in the patent 
if submitted in sufficient time to allow the patent to be printed with 
the priority claim and a petition to accept an unintentionally delayed 
priority claim pursuant to Sec.  1.55(c) has been filed (if required) 
and granted. In addition, Sec.  1.312(b) is proposed to be amended to 
provide that if the patent does not include the amendment filed after 
payment of the issue fee, the amendment would not be effective unless 
the patent is corrected by a certificate of correction under 35 U.S.C. 
255 and Sec.  1.323. See the proposed changes to Sec. Sec.  1.312(a)(2) 
and (b).
    Accordingly, the last sentence of Sec.  1.55(a)(2) is proposed to 
be amended to delete the phrase ``but the patent will not include the 
priority claim unless corrected by a certificate of correction under 35 
U.S.C. 255 and Sec.  1.323'' and to insert a new last sentence, ``If 
the patent did not publish with the priority claim, the amendment 
adding the priority claim will not be effective unless corrected by a 
certificate of correction under 35 U.S.C. 255 and Sec.  1.323.'' The 
change in language in Sec.  1.55 is for conformance with the changes 
proposed to Sec.  1.312. The current language being replaced in Sec.  
1.55 presumes that a priority claim filed after the date the issue fee 
is paid will not be entered and will not, therefore, be effective and 
the addition of a priority claim must therefore be treated as a 
certificate of correction after the patent has issued. The proposed 
amendment to Sec.  1.312 would permit the entry of a priority claim 
after the issue fee has been paid, provided it is submitted in 
sufficient time to allow the priority claim to be printed on the face 
of the patent and a grantable petition under Sec.  1.55(c) to accept an 
unintentionally delayed priority claim is filed, if required. 
Accordingly, the new language to Sec.  1.55 addresses the situation 
where sufficient time was not present to allow printing of the priority 
claim on the face of the patent and the amendment adding the priority 
claim must be corrected by certificate of correction.
    Section 1.56: Section 1.56 is proposed to be amended by the 
addition of paragraph (f) that would provide a ``safe harbor'' for a 
Sec.  1.56(c) individual who, in good faith and to the best of the 
person's knowledge, information and belief, formed after a reasonable 
inquiry under the circumstances, took reasonable steps to comply with 
the additional disclosure requirements of Sec.  1.98(a)(3). While the 
proposed amendment to Sec.  1.56 may not act as a

[[Page 38812]]

complete defense in all situations, particularly as the court is not 
bound by any one duty of disclosure standard established by the Office, 
the Office is hopeful that a court in deciding a duty of disclosure 
issue will take the proposed safe harbor into account.
    Section 1.97: Section 1.97(a) is proposed to be amended to reflect 
the applicability of Sec.  1.97 to reexamination proceedings and to add 
other clarifying language.
    Sections 1.97(b), (c), (d)(1), and (d)(2) would identify four time 
periods for submission of information disclosure statements (IDSs). 
Section 1.98(a)(3) would set forth ``Additional disclosure 
requirements'' specific to each time period that must be met for 
submission of IDSs during each of these time periods.
    Section 1.97(b) would identify a ``First time period'' for 
submitting IDSs, with paragraphs (b)(1) through (b)(3) reciting the 
current periods for submitting an IDS within three months from the 
filing date of a national application or entry of the national stage, 
or before the mailing of a first Office action, or within three months 
of the filing of a reexamination. The expression ``filing date'' means 
the actual filing date of the application and does not include filing 
dates for which a benefit is claimed under 35 U.S.C. 119, 120, 121, or 
365. Thus, an IDS may be submitted within three months of the actual 
filing date of a continuation, divisional, or continuation-in-part 
application pursuant to Sec.  1.97(b)(1).
    Section 1.97(b)(1) is also proposed to be amended to add ``35 
U.S.C. 111(a),'' the statutory basis for the recited national 
application.
    Section 1.97(b)(4) is proposed to be deleted. Any IDS filed with a 
request for continued examination under Sec.  1.114 (RCE), or after an 
RCE is filed but before a first Office action is mailed in the RCE, 
would need to comply with the time requirements of Sec. Sec.  1.97(c) 
or (d), whichever is applicable.
    Section 1.97(c) would identify a ``Second time period'' for 
submitting IDSs and would apply to IDSs filed after the period 
specified in paragraph (b) of this section, and before the earlier of 
the mailing of a notice of allowability or a notice of allowance under 
Sec.  1.311 for an application, or the mailing of a Notice of Intent to 
Issue Reexamination Certificate (NIRC) for a reexamination proceeding.
    Currently, a second time period for submission of IDSs pursuant to 
Sec.  1.97(c) permits submission of an IDS in an application simply by 
payment of a fee or by compliance with the statements provided by Sec.  
1.97(e), relating to discovery of the information within three months 
of its submission to the Office. The proposed ``Second time period,'' 
Sec.  1.97(c), would eliminate the fee payment option, while retaining 
a Sec.  1.97(e)(1) option. Applicants/patent owners, in proposed Sec.  
1.98(a)(3)(ii), would be offered an additional option, other than 
compliance with Sec.  1.97(e)(1), provided the applicant/patent owner 
is willing to comply with additional disclosure requirements referenced 
in Sec. Sec.  1.98(a)(3)(iv) and (a)(3)(v).
    The references, in current Sec.  1.97(c), to a final action under 
Sec.  1.113 or actions that otherwise close prosecution, are 
unnecessary and thus deleted. IDSs that are submitted after close of 
prosecution, such as after a final rejection, are inherently included 
in the expression ``submitted prior to the mailing of a notice of 
allowance.'' The Sec.  1.97 practice of treating an IDS submitted after 
a final Office action under Sec.  1.113, such as a final rejection, 
would not change other than removal of the fee requirement and would 
still continue to be considered by the examiner in the next Office 
action, as appropriate. If there is no next Office action (e.g., the 
application goes abandoned), the IDS will be placed in the file but not 
considered, as in current practice.
    Section 1.97(c) would also be amended to provide for its 
applicability to reexamination proceedings in regard to the issuance of 
a Notice of Intent to Issue a Reexamination Certificate (``NIRC'').
    Section 1.97(d)(1) is proposed to be amended to be labeled a 
``Third time period,'' and would permit consideration of an IDS filed 
in an application after the period set forth in Sec.  1.97(c) (after 
the earlier of a notice of allowability or notice of allowance), and 
before or with payment of the issue fee. Submission under the ``Third 
time period'' would be under more limited conditions than the 
conditions for submitting an IDS during the ``Second time period''; 
however, the fee under Sec.  1.17(p) would be eliminated. Because 
reexamination proceedings are not required to pay an issue fee, this 
``Third time period'' is not applicable to reexamination proceedings. 
All IDSs filed in reexamination proceedings after the NIRC will be in 
the ``Fourth time period'' defined in proposed Sec.  1.97(d)(2).
    Proposed Sec.  1.97(d)(2) would be labeled a ``Fourth time 
period,'' and would permit consideration in an application of an IDS 
filed after payment of the issue fee and in sufficient time to be 
considered by the examiner before issue of the application, under more 
limited conditions than under the ``Third time period'' pursuant to 
Sec.  1.97(d)(1). In a reexamination proceeding, this time period would 
begin when the NIRC is issued and end at issue of a Reexamination 
Certificate under Sec.  1.570 or Sec.  1.997.
    Section 1.97(e) would be amended by changing ``statement'' to 
``certification'' and ``state'' to ``certify,'' to clarify this 
requirement in light of the requirements of proposed Sec.  1.98(a)(3).
    Section 1.97(f) would be amended to contain a reference to Sec.  
1.550 and Sec.  1.956 (for reexamination proceedings).
    Section 1.97(g) would be amended to replace ``section'' with 
``Sec.  1.98.''
    Section 1.97(h) is provided merely for context and no amendments 
are proposed therein.
    Section 1.97(i) would be amended by reformatting the current 
material as paragraph (i)(1), and adding paragraph (i)(2). In addition, 
Sec.  1.97(i)(1) would contain a reference to Sec.  1.98(a)(3)(vii)(C), 
requiring meaningful compliance with the requirements for explanations, 
non-cumulative descriptions, and reasons supporting a patentability 
justification or the Office may decline to consider the information 
disclosure statement.
    Section 1.97(i)(2) would permit applicant to obtain additional time 
to complete the required information to accompany the IDS where a 
portion of the information was inadvertently omitted. The grant of 
additional time would be solely at the discretion of the Office.
    New Sec.  1.97(j) would be added to make clear that IDSs filed 
during the ``Fourth time period'' (after the issue fee is paid or the 
NIRC) would not be effective to withdraw the application from issue, 
hence the requirement in Sec.  1.98(a)(3)(iii)(B), or to withdraw a 
reexamination proceeding from the publication procedure for a 
reexamination certificate.
    Sections 1.97(a), (b)(1), (c), and (d)(2) would be amended to 
explicitly set forth the required time frames for filing an IDS in a 
reexamination proceeding. Pursuant to current Sec.  1.555(a), an IDS in 
a reexamination proceeding ``must be filed with the items listed in 
Sec.  1.98(a) as applied to individuals associated with the patent 
owner in a reexamination proceeding.'' Section 1.555(a) then sets forth 
a recommended time for filing an IDS, stating that the IDS ``should be 
filed within two months of the date of the order for reexamination, or 
as soon thereafter as possible.'' The need to obtain the best art in 
the proceeding as soon as possible is even greater in a reexamination 
proceeding than in an application, since by statute (35 U.S.C. 305, and 
314(c)) reexamination

[[Page 38813]]

proceedings are to be ``conducted with special dispatch within the 
Office.'' Accordingly, it is proposed to revise the regulatory 
statement of the time frames for IDS submissions in reexaminations by 
revising Sec. Sec.  1.97(a), (b)(1), (c), and (d)(2), thus making the 
time frames for reexaminations track the time frames for IDS 
submissions in applications. It is also proposed that Sec.  1.555(a) be 
amended to delete the optional time frame appearing therein, and to 
require the time frames set forth in Sec.  1.97, as it is proposed to 
be revised.
    Section 1.98: Section 1.98 is proposed to be substantially amended, 
including Sec.  1.98(a)(3) defining ``Additional disclosure 
requirements'' composed of: (1) Paragraphs (a)(3)(i) through 
(a)(3)(iii), which define the type of additional disclosure 
requirements to be met based on the time period of submission of the 
IDS, including the particular documents requiring the additional 
disclosure; (2) paragraph (a)(3)(iv), which defines a two-part 
explanation requirement (identification of at least a portion of a 
cited document, and correlation of the portion(s) identified to 
specific claim language or to a specific portion of the specification 
when the document is cited for that purpose); (3) paragraph (a)(3)(v), 
which defines a non-cumulative description requirement; and (4) 
paragraph (a)(3)(vi), which defines two alternative types of 
patentability justification.
    Section 1.98(a), (a)(1) and (2), and (a)(1)(i) are proposed to be 
amended for technical corrections or conforming amendments.
    Section 1.98(a)(2)(iii) is proposed to be amended to no longer 
require submission of a legible copy of each cited pending or abandoned 
U.S. application's specification, including the claims, and drawing(s) 
when the cited pending or abandoned U.S. application is stored at the 
Office in the electronic form currently referred to as the image file 
wrapper (IFW). If the cited pending or abandoned U.S. application is 
not stored in the Office's IFW, a legible copy of the application or 
the portion of the application which caused it to be cited is still 
required. In addition, even if the cited pending or abandoned U.S. 
application is stored in the Office's IFW, consideration of any portion 
of the application file outside of the specification, including the 
claims, and drawings requires that a legible copy of that portion be 
included in the IDS. This proposed amendment implements a previous 
limited waiver of the requirement in Sec.  1.98(a)(2)(iii), and also 
expands on the previous waiver by including abandoned applications in 
addition to pending applications. See Waiver of the Copy Requirement in 
37 CFR 1.98 for Cited Pending U.S. Patent Applications, 1287 Off. Gaz. 
Pat. Office 162 (Oct. 19, 2004).
    Sections 1.98(a)(3)(i) and (a)(3)(ii) are proposed to be 
significantly amended and incorporated into newly proposed Sec.  
1.98(a)(3).
    Section 1.98(a)(3) is proposed to set forth ``Additional disclosure 
requirements'' specific to each time period identified in Sec. Sec.  
1.97(b), (c), (d)(1), and (d)(2) that must be met for submission of 
IDSs during each of these time periods.
    Section 1.98(a)(3)(i) would provide that IDSs submitted within the 
``First time period'' of Sec.  1.97(b) (e.g., prior to a first Office 
action) that contain: (1) Foreign language documents (Sec.  
1.98(a)(3)(i)(A)); (2) any document over twenty-five pages excluding 
sequence listings or computer program listings (Sec.  
1.98(a)(3)(i)(B)); or (3) more than twenty documents, calculated 
cumulatively (Sec.  1.98(a)(3)(i)(C)), would be required to provide 
additional disclosure in accordance with proposed Sec.  1.98(a)(3)(iv) 
of an explanation (an identification of at least one portion causing 
the document to be cited, including a specific feature, showing, or 
teaching, and correlation to specific claim language, or where 
correlation to claim language is not possible, correlation may be made 
to a specific portion of the supporting specification), with exceptions 
set forth in Sec. Sec.  1.98(a)(3)(viii)(A) and (a)(3)(viii)(C). In 
addition, where a foreign language document is being submitted, any 
existing translation would also be required, Sec.  1.98(a)(3)(xi).
    Foreign language documents of any length would trigger the 
explanation and translation requirements. English language documents 
(non-foreign language) include: English language nonpatent literature, 
U.S. patent documents (patents and patent application publications), 
and English language foreign patent documents. Use of foreign language 
terminology or expressions such as for Latin proper names for plants 
and animals would not make an otherwise English language document a 
non-English language document. Similarly, the presence of an English 
language abstract would not make a foreign language document an English 
language document for the purpose of Sec.  1.98(a)(3)(i)(A).
    The threshold for document size is over twenty-five pages. In 
calculating documents over twenty-five pages, sequence listings, or 
computer program listings, pursuant to Sec.  1.52(e)(1) would be 
excluded (Sec.  1.98(a)(3)(i)(B)). In determining the number of pages 
of a document, all sheets of the document being submitted are counted, 
including drawing sheets and cover sheets (but not sequence listings or 
computer program listings). Applicant is permitted to submit only a 
portion of a document and is encouraged to do so where that portion can 
be considered without further context and is the only portion that is 
relevant to the claimed invention. When applicant elects to submit 
selected pages of a document, those pages will be counted to determine 
the length of the cited (partial) document and whether an explanation 
is required for that document.
    The threshold number of documents for one or more IDSs filed before 
a first Office action is twenty calculated cumulatively in a single 
application or proceeding. The threshold number of documents can be 
reached either in multiple (sequential) IDSs each containing fewer than 
the twenty trigger value, or all at once in a single IDS. Documents 
that do not comply with the timeliness requirements of Sec.  1.97, or 
the technical requirements of Sec.  1.98, (and thus may not be 
considered) would not count toward the cumulative total pursuant to 
Sec.  1.98(a)(3)(i)(C). Additionally, a document that is not compliant 
with the requirements of Sec.  1.98 would not be double counted toward 
the threshold number if it was resubmitted to cure the non-compliance. 
Accordingly, for example, an applicant who realizes that a twenty-
three-document IDS submission made prior to the mailing of a first 
Office action on the merits did not contain the required additional 
disclosure may either submit the additional disclosure for the twenty-
three documents, or withdraw three of the documents, provided such 
action is taken within the time frame of Sec.  1.97(b)(3).
    Documents that are not included in an IDS but are mentioned in the 
specification as background information would not count toward the 
threshold number. The examiner is under no obligation to review 
documents cited in the specification. See MPEP Sec.  609 III C (1), 
Noncomplying Information Disclosure Statements. Where applicant desires 
review of a particular document, that document must be cited in a 
compliant IDS.
    For continuing applications, documents of a compliant IDS in the 
prior application, which were required to be reviewed by the examiner 
therein (see MPEP Sec.  609 I, IDS IN CONTINUED EXAMINATIONS OR 
CONTINUING APPLICATIONS), would not be considered as part of the 
cumulative total in a continuing application unless they are 
resubmitted in the continuing

[[Page 38814]]

application (so that they will appear on the face of the patent that 
issues from the continuing application). In addition, all other 
documents (e.g., previous documents that were noncompliant with 
Sec. Sec.  1.97 and 1.98 and never considered by the examiner in the 
prior application) in prior applications would not be counted toward 
the threshold number in a continuing application, unless they are 
resubmitted in the continuing application.
    Section 1.98(a)(3)(i) would provide for exceptions to the 
additional disclosure requirements by reference to Sec. Sec.  
1.98(a)(3)(viii)(A) and (a)(3)(viii)(C). For IDSs submitted in the 
first time period, applicant may submit documents resulting from a 
foreign search or examination report where a copy of the report is 
submitted (Sec.  1.98(a)(3)(viii)(A)), and documents submitted in reply 
to a requirement for information pursuant to Sec.  1.105 (Sec.  
1.98(a)(3)(viii)(C)), without triggering any additional disclosure 
requirements.
    Section 1.98(a)(3)(ii) would provide that all information in IDSs 
submitted within the ``Second time period'' of Sec.  1.97(c) (e.g., 
after a first Office action and prior to the earlier of a notice of 
allowability or a notice of allowance), must be accompanied by 
additional disclosure in accordance with Sec.  1.98(a)(3)(iv) 
(explanation) and Sec.  1.98(a)(3)(v) (non-cumulative description), 
with exceptions set forth in Sec. Sec.  1.98(a)(3)(viii)(B) and 
(a)(3)(viii)(C). Additionally, when a foreign language document is 
being submitted, any existing translation would also be required, Sec.  
1.98(a)(3)(xi).
    Section 1.98(a)(3)(ii) would provide for exceptions to the 
additional disclosure requirements by reference to Sec. Sec.  
1.98(a)(3)(viii)(B) and (C). For IDSs submitted in the second time 
period, applicant may, without triggering any additional disclosure 
requirements, submit documents accompanied by a certification pursuant 
to Sec.  1.97(e)(1) and a copy of the foreign search or examination 
report (Sec.  1.98(a)(3)(viii)(B)), and documents submitted in reply to 
a requirement for information pursuant to Sec.  1.105 (Sec.  
1.98(a)(3)(viii)(C)).
    Section 1.98(a)(3)(iii) would provide that all documents submitted 
within the ``Third time period'' (e.g., after the earlier of a notice 
of allowability or a notice of allowance and prior to payment of the 
issue fee), and the ``Fourth time period'' (e.g., after payment of the 
issue fee and in sufficient time to be considered) must be accompanied 
by a certification under either Sec. Sec.  1.97(e)(1) or (2).
    Section 1.98(a)(3)(iii)(A) would provide that information submitted 
within the ``Third time period'' of Sec.  1.97(d)(1) must be 
accompanied by either of two patentability justifications pursuant to 
Sec.  1.98(a)(3)(vi)(A) (explanation, non-cumulative description and 
reasons supporting the patentability of the independent claims) or (B) 
(explanation, noncumulative description, an amendment, and reasons 
supporting the patentability of the amended claims).
    Section 1.98(a)(3)(iii)(B) would provide that information submitted 
within the ``Fourth time period'' of Sec.  1.97(d)(2) must be 
accompanied by a petition to withdraw from issue pursuant to Sec.  
1.313(c)(1), or to withdraw a reexamination proceeding from the 
publication process, and the patentability justification under Sec.  
1.98(a)(3)(vi)(B).
    Section 1.98(a)(3)(iv) would provide a definition of the 
explanation that must be submitted to meet the additional disclosure 
requirements of Sec.  1.98(a)(3). The explanation requirement consists 
of three parts, two in regard to an identification (Sec.  
1.98(a)(3)(iv)(A)) and one in regard to a correlation, Sec.  
1.98(a)(3)(iv)(B).
    Section 1.98(a)(3)(iv)(A) would provide for the identification 
portion of the explanation requirement. Section 1.98(a)(3)(iv)(A) would 
require an identification of specific feature(s), showing(s), or 
teaching(s) that caused a document to be cited. Where applicant is 
unaware of any specific relevant portion(s) of a document, that 
document should not be submitted to the Office. The bare recitation 
that a document was provided to applicant by a third party or was 
discovered during a pre-examination search is an insufficient 
identification.
    Section 1.98(a)(3)(iv)(A) would provide for the identification of a 
portion(s) of a document where the specific feature(s), showing(s), or 
teaching(s) may be found. For example, a proper identification would 
indicate, by page and line number(s), or figure and element number(s), 
where to look in the document for the portion.
    The identification requirements require applicant to identify at 
least one appearance in the document (a representative portion) of a 
specific feature, showing, or teaching for which the document is being 
cited. Where applicant is aware that such feature, showing, or teaching 
appears in more than one portion of the document, applicant would not 
need to specifically point out more than one occurrence, although 
applicant may wish to, particularly where the additional appearance may 
not be apparent to the examiner and may have some additional 
significance over its first identified appearance. Where applicant 
recognizes that a document is relevant for more than one feature, 
showing, or teaching, and is being cited for more than one feature, 
showing, or teaching, applicant would need to specifically identify 
each additional feature, showing, or teaching (and the portion where 
the feature, showing, or teaching appears in the document).
    A mere statement indicating that the entire document, or 
substantially the entire document, is relevant, would not comply, and 
may result in the examiner electing not to consider the document. Where 
applicant believes that an entire document or most portions thereof are 
relevant and caused the document to be cited, applicant may make such 
statement so long as applicant establishes such fact by sufficient 
recitation of examples from the document. Sufficiency of recitation of 
examples will vary on a case-by-case basis. Applicant should, 
therefore, be wary of not identifying at least one specific portion of 
a document since noncompliance may, if not corrected in a timely and 
proper manner, result in the document not being considered.
    Documents merely representing background information may be 
identified and discussed in the specification. There is generally 
little utility in submitting a background document as part of an IDS, 
particularly after a first Office action. In the isolated situation 
where applicant wishes to identify a purely background document after a 
first Office action on the merits, the document can be discussed as 
part of the Remarks/Arguments section of a reply to the Office action. 
Clearly, background documents can be supplied prior to a first Office 
action on the merits in an IDS without discussion where twenty or fewer 
documents are being submitted, provided that the background document is 
less than twenty-five pages, and the document is not in a foreign 
language.
    Section 1.98(a)(3)(iv)(B) would additionally require a correlation 
of the specific feature(s), showing(s), or teaching(s) identified 
pursuant to Sec.  1.98(a)(3)(iv)(A) to specific corresponding claim 
language, or to a specific portion(s) of the specification that 
provides support for the claimed invention, where the document is cited 
for that purpose. Optionally, applicant may indicate any differences 
between the specific claim language and what is shown, or taught, in 
the document. The specific claim language may be in either an 
independent claim or a dependent claim.

[[Page 38815]]

    The alternative of correlation to a specific portion of the 
specification, rather than to a specific claim, is available in the 
limited circumstances where correlation cannot be made to specific 
claim language, as the document is not cited for that purpose. The 
alternative correlation is intended to include aspects of the 
supporting specification that define claim scope or support compliance 
with requirements of the patent statutes. For example, where a document 
is submitted to identify a particular scope of a claim, such as where 
there is a means-plus-function claim limitation pursuant to 35 U.S.C. 
112, ] 6, the correlation explanation would be satisfied when drawn to 
this aspect. Additionally, where a document is being submitted that 
relates to utility of the claimed invention, compliance with the 
written description requirement, or enablement, the correlation 
explanation would be satisfied when drawn to these aspects rather than 
being drawn directly to specific claim language.
    A particular correlation between a specific feature, showing, or 
teaching of a document and an element of a claim may not be 
representative of variations of the same specific feature, showing, or 
teaching as recited in another claim. For example, a specific feature, 
showing, or teaching may be recited by certain language in one claim, 
while that specific feature, showing, or teaching may be recited by 
entirely different claim language in another claim. In such 
circumstances, in order to comply with the correlation requirement, 
applicant would need to identify one instance of each different 
recitation of the specific feature, showing, or teaching in the 
different claims.
    The correlation explanation, whether to specific claim language or 
the supporting specification, must make clear why a specific feature, 
showing, or teaching in a document that is being correlated to the 
claimed invention, actually correlates thereto.
    The Office does not contemplate that complying with the 
identification and correlation of additional requirements will require 
an extensive submission. The Office believes that, in most cases, a 
compliant submission would include several sentences that: identify a 
specific feature, showing, or teaching causing submission of a document 
(e.g., rotary pump, element 32), identify the portion of the document 
where the feature, showing, or teaching may be found (e.g., Figure 3 in 
Patent A), and correlate the specific feature, showing, or teaching to 
specific claim language (e.g., the rotary pump in Figure 3, element 32 
of Patent A correlates to the rotary pump in claim 1 of the 
application).
    Applicant's attempted correlation of a specific feature, showing, 
or teaching in a document may not, for example, be readily recognizable 
as actually correlating to identified claim language, particularly 
where such claim language may be a more generic or alternative way of 
reciting the feature, showing, or teaching. In such instances, 
applicant would need to add some explanatory material, particularly to 
avoid a possible finding of noncompliance by the examiner with the 
correlation requirement.
    Section 1.98(a)(3)(v) would define a non-cumulative description 
requirement that must accompany an IDS submission when the IDS is 
submitted in the second, third, or fourth time periods, as citation of 
merely cumulative information must be avoided, Sec.  1.98(c). The non-
cumulative description would require a description of how each document 
being submitted is not merely cumulative of any other IDS-cited 
document previously submitted, any document previously cited by the 
examiner, or any document cited under Sec. Sec.  1.99 and 1.291. The 
description may be of a specific feature, showing, or teaching in a 
document that is not found in any other document of record. The non-
cumulative description requirement for the second time period (Sec.  
1.97(c)) is subject to the exceptions set forth in Sec. Sec.  
1.98(a)(3)(viii)(B) and (a)(3)(viii)(C), while the non-cumulative 
description requirement for the third time period (Sec.  1.97(d)(1)) is 
subject to the exception set forth in Sec.  1.98(a)(3)(viii)(B).
    Section 1.98(a)(3)(vi) would define alternative patentability 
justifications (Sec. Sec.  1.98(a)(3)(vi)(A) and (a)(3)(vi)(B)), which 
would be applicable for IDSs submitted during the third time period 
(e.g., after allowance), with the Sec.  1.98(a)(3)(vi)(B) justification 
required during the fourth time period (e.g., after payment of the 
issue fee). Section 1.98(a)(3)(vi)(A) would require an explanation 
pursuant to Sec.  1.98(a)(3)(iv), a non-cumulative description pursuant 
to Sec.  1.98(a)(3)(v), and reasons why (each of) the independent 
claims are patentable over the information in the IDS being submitted 
considered together, and in view of any information already of record, 
but particularly in view of information previously used to reject the 
independent claim(s).
    The expression ``information previously used to reject'' includes 
applied prior art used in a rejection which was subsequently withdrawn 
and is no longer utilized in a pending rejection.
    A foreign search or examination report may be acceptable as the 
required explanation of patentability or the statement of 
unpatentability under either of the above requirements, respectively, 
if the report provides sufficient details to comply with Sec.  
1.98(a)(3)(vi).
    Section 1.98(a)(3)(vi)(B) is the only procedure for IDSs submitted 
in the fourth time period (after payment of the issue fee or NIRC). In 
this time period, information may be submitted only if a claim is 
unpatentable over the information being submitted either considered 
alone or in combination with information already of record. This 
patentability justification would require an explanation pursuant to 
Sec.  1.98(a)(3)(iv) of this section, a non-cumulative description 
pursuant to Sec.  1.98(a)(3)(v) of this section, and reasons why an 
amendment causes claims, admitted to be unpatentable over the 
information submitted in an IDS, to now be patentable over such 
information when considered together, and in view of any information 
already of record, but particularly in view of information previously 
used to reject such claims.
    While the alternative patentability justifications require 
consideration of certain documents, the ``reasons why'' supplied need 
only address the most relevant documents and need not discuss all the 
documents required to be considered.
    Section 1.98(a)(3)(vii) would recognize that applicant must 
meaningfully comply with the additional disclosure requirements.
    Section 1.98(a)(3)(vii)(A) would require that the explanations 
pursuant to Sec.  1.98(a)(3)(iv) must include a level of specificity 
commensurate with specifics of the feature(s), showing(s), or 
teaching(s) which caused the document to be cited. These explanations 
must not be pro forma explanations. Additionally, it would be required 
that the non-cumulative descriptions pursuant to Sec.  1.98(a)(3)(v) 
must be significantly different so as to point out why the cited 
document is not merely cumulative of any other information currently 
being filed, or previously of record.
    Section 1.98(a)(3)(vii)(B) would require that the reasons for 
patentability justification, pursuant to Sec.  1.98(a)(3)(vi), must 
address specific claim language relative to the specific feature(s), 
showing(s), or teaching(s) of the cited documents, or those already of 
record. Section 1.98(a)(3)(vii)(C) would provide that where the 
explanations or non-cumulative descriptions do not comply with Sec.  
1.98(a)(3)(vii)(A), or the reasons

[[Page 38816]]

for patentability justification do not comply with Sec.  
1.98(a)(3)(vii)(B), the Office may decline to consider the information 
disclosure statement. See also Sec.  1.97(i)(1). The examiner may 
optionally, however, choose to cite a reference contained in a non-
compliant IDS.
    Section 1.98(a)(3)(viii) would provide for three possible 
exceptions to the additional description requirements of Sec.  
1.98(a)(3).
    Section 1.98(a)(3)(viii)(A) would provide an exception pursuant to 
Sec.  1.98(a)(3)(iv) for documents submitted within the first time 
period (i.e., prior to first Office action) that result from a foreign 
search or examination report where a copy of the report is submitted 
with the IDS. A specific certification pursuant to Sec.  1.97(e) is not 
required nor must the three-month time frame be met.
    Section 1.98(a)(3)(viii)(B) would provide an exception to the 
explanation and non-cumulative description requirements when an IDS is 
submitted in the second time period (Sec.  1.97(c)) and is accompanied 
by a certification pursuant to Sec.  1.97(e)(1) and a copy of the 
foreign search or examination report.
    Section 1.98(a)(3)(viii)(C) would provide an exception to the 
explanation and non-cumulative description requirements when an IDS is 
submitted in the first (Sec.  1.97(b)) and second (Sec.  1.97(c)) time 
periods for documents submitted in reply to a requirement for 
information pursuant to Sec.  1.105.
    Section 1.98(a)(3)(ix) would provide a requirement for updating 
previous IDSs for amendments affecting the scope of the claims, other 
than examiner's amendments, submitted after an IDS. Section 
1.98(a)(3)(ix)(A) would provide that any previously provided 
explanation pursuant to Sec.  1.98(a)(3)(iv) must be reviewed and 
updated where necessary in view of subsequently filed amendments. If, 
however, no update is warranted because all previous explanations are 
still relevant and accurate, Sec.  1.98(a)(3)(ix)(B) would provide that 
a statement must be supplied to the effect that updating of the 
previous IDS is unnecessary. Failure to comply with the update 
requirements, including the need for a statement that an update is 
needed, may result in a reply containing the amendment being treated as 
not fully responsive, pursuant to MPEP Sec.  714.03, with a correction 
required.
    Section 1.98(b)(3) would be amended to replace ``inventor'' with 
``applicant'' as a technical amendment to conform to the language of 
Sec.  1.98(b)(2).
    Section 1.98(c) would be amended to require that the submission of 
merely cumulative documents be avoided, and that the Office may decline 
to consider an information disclosure statement citing documents that 
are merely cumulative. The submission of cumulative information may 
obscure other more relevant information from the examiner. MPEP Sec.  
2004, item 13. Where review of an IDS reveals the presence of a pattern 
of merely cumulative documents to such extent that the utility of 
further review of the IDS is called into question, the IDS may be 
presumed to be non-compliant, and the Office may terminate further 
review of the IDS. In such instance, on the listing of the documents, 
the examiner will initial all citations that have been considered up to 
that point, including the cumulative documents, and line through all 
other documents not yet considered. In the next Office action, the 
examiner will identify to applicant the merely cumulative documents, 
and the non-compliant status of the IDS. Applicant could choose to 
resubmit the IDS in reply to the Office action provided applicant 
complies with any additional disclosure requirements, including the 
non-cumulative description, which will aid applicant in avoiding the 
submission of merely cumulative information.
    Documents could be merely cumulative, notwithstanding the presence 
of different explanations (e.g., two documents both containing only the 
same features A and B of the claimed invention, the explanation for the 
first document is to feature A, and the explanation for the second 
document is to feature B).
    Section 1.98(d) would be amended: By replacing the reference to 
paragraph (a) with a reference to paragraph (a)(2), clarifying the 
recitations to earlier and later submitted information disclosure 
statements in paragraphs (d) and (d)(1), correcting the tense of 
``complies'' to ``complied'' in paragraph (d)(2), and making a 
conforming change by removing the reference to paragraph (c) of Sec.  
1.98, and limiting the effect of paragraph (d)(2) to paragraphs (a)(1), 
(2), and (b) of Sec.  1.98.
    Section 1.99: Section 1.99 is proposed to be amended to change the 
time period for a submission under Sec.  1.99 to within six months from 
the date of publication of the application (Sec.  1.215(a)), or prior 
to the mailing of a notice of allowance (Sec.  1.311), whichever is 
earlier. Section 1.99 currently requires that any submission Sec.  1.99 
be filed within two months from the date of publication of the 
application (Sec.  1.215(a)), or prior to the mailing of a notice of 
allowance (Sec.  1.311), whichever is earlier. Section Sec.  1.99 is 
also proposed to be amended to eliminate the provision for filing a 
belated submission under Sec.  1.99. The time period for a submission 
under Sec.  1.99 (or the time period for a protest under Sec.  1.291) 
is to limit any right of third parties to have information entered and 
considered in a pending application for administrative convenience. 
This time period for a submission under Sec.  1.99 (or the time period 
for a protest under Sec.  1.291) does not vest the applicant with any 
right to prevent the Office from sua sponte making such information of 
record in the application or relying upon such information in 
subsequent proceedings in the application (i.e., the time period does 
not limit the authority of the Office to re-open the prosecution of an 
application to consider any information deemed relevant to the 
patentability of any claim).
    It is to be noted that a Sec.  1.99(a) submission by a third party 
is not a means for applicant to circumvent the requirements of Sec.  
1.97 and Sec.  1.98. Rather, the treatment of the information in a 
Sec.  1.99(a) submission is dependent upon the linchpin concept that it 
is being submitted by a (true) third party, and that there has been no 
solicitation of the third party by the applicant, or anyone acting on 
applicant's behalf. Section 1.99(a), and Sec.  1.99 in general, are 
directed to a third party that is not in privity with the applicant, 
and is not any Sec.  1.56(c) individual. Section 1.99(e) is proposed to 
be amended to state only that a submission by a member of the public to 
a pending published application that does not comply with the 
requirements of Sec.  1.99 will not be entered.
    Section 1.291: Sections 1.291(b), (b)(1) and (b)(2) would have 
their provisions rearranged and revised, and Sec. Sec.  1.291(b)(3) 
through (b)(5) would be added. Section 1.291(c)(2) would be revised to 
set forth the degree of consideration given to items of information 
submitted in a compliant protest.
    Section 1.291(b) as proposed would contain the descriptive label 
``Treatment of a protest.''
    Sections 1.291(b)(1)(i) through (b)(1)(iii) would set forth the 
conditions to be met for entry of protests into the record that are 
currently set forth in Sec.  1.291(b). Section 1.291(b)(1)(iii) would 
contain the consent provision for entry of a protest which is currently 
set forth in Sec.  1.291(b)(1), and Sec.  1.291(b)(2) would provide 
consent specifics.
    Pursuant to Sec.  1.291(b)(1)(ii), the protest must be served on 
the applicant in accordance with Sec.  1.248, or filed with

[[Page 38817]]

the Office in duplicate if service is not possible. In the usual case 
where the protest has been served on the applicant in accordance with 
Sec.  1.248, the applicant will have one month from the date of service 
to file any objection that the protest has not in fact been consented 
to, or that the protest is not within the scope/terms of the consent. 
It should be rare that service of a protest is not possible since the 
applicant has consented to the filing of a protest and should therefore 
be available to be served. Where such a situation arises, however, the 
protest is submitted to the Office in duplicate with a statement that 
service is not possible. The Office will serve a copy of the protest on 
the applicant and the applicant will have one month from the date of 
Office service to file any objection that the protest has not in fact 
been consented to, or that the protest is not within the scope/terms of 
the consent.
    Section 1.291(b)(2) would contain the introductory label 
``Applicant consent and protestor statement.'' Section 1.291(b)(2) 
(together with Sec.  1.291(b)(1)(iii)) would retain the current 
provision permitting consideration of a protest that is filed on or 
after the date an application is published if, and only if, the protest 
is filed based on the written consent of the applicant, and in time to 
match the protest with the application to permit review of the protest 
during examination of the application. The written consent of the 
applicant may be filed together with the protest, or it may already be 
of record in the application.
    Section 1.291(b)(2)(ii) would provide that a consent to a protest 
may be limited by express terms only to: (1) The length of time for 
which the consent is in effect, at least thirty days (to give 
sufficient time for its submission), and (2) a specific party who can 
file the protest (if the identity of such a party is known to the 
applicant). The consent, however, must not be otherwise limited.
    Section 1.291(b)(2)(iii) would provide that a protest filed based 
upon a consent under paragraph (b)(2) of this section must contain a 
statement that the submitted protest is based on the written consent of 
the applicant and falls within the terms of the consent. The statement 
would identify the consent, for example, as ``the written consent 
accompanying the instant protest'' or ``the written consent filed in 
the record of the application on [Provide date consent filed].'' The 
statement would inform the Office that the protester is a party 
permitted by the consent to file the protest, and that the protest is 
timely filed. A certificate of mailing or transmission under Sec.  1.8 
may be used to comply with any timeliness requirement imposed by 
applicant in the consent. Likewise, the protest may be filed in the 
Office by ``Express Mail'' pursuant to Sec.  1.10.
    Section 1.291(b)(3) would highlight the options that an applicant 
currently has in treating unsolicited information received from a party 
other than a Sec.  1.56(c) individual, i.e., a third party. This would 
not be a change in practice.
    Section 1.291(b)(3)(i) recognizes that upon receiving unsolicited 
information (directed to an application) from a third party, applicant 
may submit the unsolicited information as an IDS, provided that 
applicant complies with the IDS requirements of Sec. Sec.  1.97 and 
1.98.
    Section 1.291(b)(3)(ii) recognizes that applicant can provide a 
written consent pursuant to Sec.  1.291(b)(2) to the third party (if 
known) for that third party to file unsolicited information with the 
Office as (part of) a protest. The section also provides for the 
alternative that if the third party is unknown, the written consent to 
the submission of a protest may be filed in the application. Given this 
alternative, an applicant need not feel compelled to submit such 
unsolicited information to the Office via an IDS.
    Section 1.291(b)(3)(iii) recognizes that an applicant could submit 
the unsolicited information to the Office as a protest on behalf of the 
third party, even where the third party is yet unknown. In keeping with 
Sec.  1.291(b)(2), applicant would not need to submit an explicit 
written consent to the protest along with the information, since 
applicant has made the submission. Applicant would, however, need to 
comply with Sec.  1.291(c), including the requirement for a concise 
explanation, drafting the explanation itself if need be. Where the 
third party has provided an explanation that amounts to the concise 
explanation required by Sec.  1.291(c)(2), applicant may rely on such 
explanation. Applicant would, however, need to review the explanation 
provided by the third party to determine whether it complies with the 
concise explanation standard and whether the concise explanation is 
accurate.
    It is to be noted that a Sec.  1.291(b)(3)(iii) protest submission 
on behalf of the third party is not a means for applicant to circumvent 
the requirements of Sec.  1.97 and Sec.  1.98. Rather, the treatment of 
unsolicited information in Sec.  1.291(b)(3), and Sec.  1.291 protests 
in general, is dependent upon the linchpin concepts of a (true) third 
party, and (actually) unsolicited information. Section 
1.291(b)(3)(iii), and Sec.  1.291 in general, are directed to a third 
party that is not in privity with the applicant, and is not any Sec.  
1.56(c) individual.
    Applicant's knowledge of prior art gained during litigation or 
through license negotiations, for example, may qualify under Sec.  
1.291(b)(3)(iii) as receiving unsolicited information for the filing of 
a protest on behalf of a third party.
    While Sec. Sec.  1.291(b)(3)(i) through (b)(3)(iii) recognize 
several options that an applicant has in treating unsolicited 
information supplied by a third party, applicant may have other options 
depending on the facts of each situation. One option may be not to 
submit any of the information, such as where the information has been 
reviewed and there is no information that is material.
    Third parties should recognize that, rather than send unsolicited 
information to an applicant, third parties may have the opportunity to 
submit such information directly to the Office pursuant to Sec.  1.99.
    Section 1.291(b)(4) would provide a recognition that nothing in 
Sec.  1.291 is intended to relieve a person subject to Sec.  1.56(c) 
from submitting to the Office information that is subject to the duty 
of disclosure under Sec.  1.56. Newly proposed Sec.  1.291(b)(3) 
attempts to help an applicant deal with unsolicited information 
supplied by a third party, particularly in view of the proposed 
amendment of Sec.  1.98 requiring different explanation requirements.
    Section 1.291(b)(5) would be created to contain the current 
provision of Sec.  1.291(b)(2). Other than for the first protest filed 
in an application, a statement must accompany a protest that it is the 
first protest submitted in the application by the real party in 
interest who is submitting the protest; or the protest must comply with 
paragraph (c)(5) of this section.
    Section 1.291(c)(2) would be revised to set forth the degree of 
consideration given to items of information submitted in a compliant 
protest. As to the ``concise explanation of the relevance of each item 
listed pursuant to paragraph (c)(1)'' provided by the protester, items 
in a compliant protest will be considered by the examiner at least to 
the extent of the provided explanations. See also the above discussion 
of the degree of consideration for Sec. Sec.  1.97 and 1.98 
submissions.
    Section 1.312: Section 1.312 is proposed to be amended to create 
paragraphs (a) and (b) and to permit certain amendments filed after 
allowance to be entered without withdrawal of the application from 
issue.
    Section 1.312(a)(1)(i) through (a)(1)(vi) would provide that the

[[Page 38818]]

following amendments if filed before or with the payment of the issue 
fee may be entered: (1) Amendment of the bibliographic data to be 
indicated on the front page of the patent; (2) amendment of the 
specification to add a reference to a joint research agreement (Sec.  
1.71(g)); (3) addition of a benefit claim of a prior-filed provisional 
application under 35 U.S.C. 119(e), a prior-filed nonprovisional 
application under 35 U.S.C. 120, or a prior-filed international 
application that designated the United States under 35 U.S.C. 365(c) 
(Sec.  1.78); (4) addition of a priority claim of a prior foreign 
application under 35 U.S.C. 119(a)-(d) or (f) or 365(a) or (b) (Sec.  
1.55); (5) changing the order or spelling of the inventors' names; or 
(6) changing the inventorship pursuant to Sec.  1.48.
    Any request to add a benefit claim under Sec.  1.78, or foreign 
priority claim under Sec.  1.55 pursuant to Sec.  1.312 must comply 
with the requirements for timeliness, or be accompanied by a grantable 
petition to accept an unintentionally delayed claim for priority under 
Sec.  1.78(a)(3), Sec.  1.78(a)(6), or Sec.  1.55(c) if needed (e.g., 
such a petition would not be necessary for an application filed before 
November 29, 2000).
    Any request to change inventorship pursuant to Sec.  1.48 must 
comply with all the provisions of that rule. Consequently, a Sec.  1.48 
request accompanied by a petition under Sec.  1.183 requesting waiver 
of any of the requirements under Sec.  1.48 would not qualify for entry 
under Sec.  1.312.
    Section 1.312(a)(2) would provide that when such amendments are 
filed after the date the issue fee is paid, the amendments may also be 
entered if submitted in sufficient time to permit the patent to be 
printed with the amended information (Sec.  1.312(a)(2)(i)), and with a 
processing fee pursuant to Sec.  1.17(i) (Sec.  1.312(a)(2)(ii)).
    Section 1.312(b) would provide that if the patent does not include 
the amendment filed after payment of the issue fee, the amendment would 
not be effective unless the patent is corrected by a certificate of 
correction under 35 U.S.C. 255 and Sec.  1.323 or otherwise corrected 
in another post-issuance proceeding. The expression ``as appropriate'' 
has been used to recognize that the failure to include a benefit claim 
to a provisional application cannot be fixed by a certificate of 
correction after issue of the patent.
    Section 1.555: Section 1.555(a) is proposed to be amended to delete 
the optional time frames for IDS submissions in reexamination 
proceedings appearing therein, and instead require the Sec.  1.97 time 
frames. Currently, Sec.  1.555(a) sets forth an optional time for 
filing an IDS, stating that it ``should be filed within two months of 
the date of the order for reexamination, or as soon thereafter as 
possible.'' Obtaining the best art in the case as soon as possible is 
even more important for a reexamination proceeding than for an 
application, because the statute mandates (35 U.S.C. 305, 35 U.S.C. 
314(c)) that reexamination proceedings be ``conducted with special 
dispatch within the Office.'' Thus, Sec.  1.555(a) would be amended to 
track application time frames by incorporating the Sec.  1.97 time 
frames (and revising Sec.  1.97 to refer to reexamination proceedings, 
as above discussed). Currently, Sec.  1.555(a) requires filing of an 
IDS with the items listed in Sec.  1.98(a). Section 1.555(a) would 
likewise be amended to track applications and require compliance with 
all the requirements of Sec.  1.98, rather than only Sec.  1.98(a). 
Accordingly, it is proposed that the last sentence of Sec.  1.555(a) be 
amended to read: ``Any IDS must be filed with the items listed in, and 
pursuant to the requirements of, Sec.  1.98 as applied to individuals 
associated with the patent owner in a reexamination proceeding, and 
must be filed within the time frames set forth in Sec.  1.97.''
    Section 1.948: Section 1.948 is proposed to be amended to set forth 
that the provisions of Sec.  1.98 would apply to a third party 
requester of an inter partes reexamination in a manner analogous to the 
manner that Sec.  1.98 would apply to the patent owner. It is 
reasonable that the requirements of Sec.  1.98 be applied to the third 
party requester in a reexamination proceeding, since the considerations 
and burdens on the Office that exist with respect to an IDS submitted 
by a third party requester are the same as those for a patent owner. 
Additionally, the third party requester is in the best position to 
provide the explanations required in Sec.  1.98 for the information 
that it cites.
    It is to be noted that there is no need to apply Sec.  1.98 to a 
reexamination requester as to the request for ex parte reexamination 
pursuant to Sec.  1.510 or the request for inter partes reexamination 
pursuant to Sec.  1.915, since the requirements for explaining the art/
information cited vis-a-vis the claims in the request are already at 
least as comprehensive as the explanation requirements of Sec.  1.98. 
Also, the requirements for explaining the art/information cited in a 
reexamination request applies to all of the art/information cited, as 
opposed to the requirements in Sec.  1.98 that only apply to certain 
documents, or to all the art after a threshold number of documents has 
been cited.

Rulemaking Considerations

Administrative Procedure Act

    The changes in this notice relate solely to the procedures to be 
followed in submitting information for consideration by the Office 
during the examination of an application for patent or reexamination of 
a patent. Non-compliance with these rules results only in the Office 
possibly not considering information in an information disclosure 
statement. If an applicant (or patentee in a patent under 
reexamination) submits an information disclosure statement that does 
not comply with these rules, the Office will either notify the 
applicant and provide a time limit within which the information 
disclosure statement may be corrected (37 CFR 1.98(f)), or advise the 
applicant that the information disclosure statement has been placed in 
the application or reexamination file with the non-complying 
information not being considered (MPEP 609.05(a)). The failure to 
correct an information disclosure statement within such a time limit 
does not result in abandonment of the application, but only in the 
Office advising the applicant that the information disclosure statement 
has been placed in the application or reexamination file with the non-
complying information not being considered (MPEP 609.05(a)). Therefore, 
these proposed rule changes involve rules of agency practice and 
procedure under 5 U.S.C. 553(b)(A). See Bachow Communications Inc. v. 
FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an application 
process are ``rules of agency organization, procedure, or practice'' 
and are exempt from the Administrative Procedure Act's notice and 
comment requirement) and JEM Broadcasting Co. v. FCC, 22 F.3d 320, 327 
(D.C. Cir. 1994) (rule under which any flawed application is summarily 
dismissed without allowing the applicant to correct its error is merely 
procedural despite its sometimes harsh effects on applicants); see also 
Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d 1347, 
1351 (Fed. Cir. 1996) (the rules of practice promulgated under the 
authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are not 
substantive rules (to which the notice and comment requirements of the 
Administrative Procedure Act apply)), and Fressola v. Manbeck, 36 
USPQ2d 1211, 1215 (D.D.C. 1995) (``it is extremely doubtful whether any 
of the rules formulated to govern patent or trade-mark practice are

[[Page 38819]]

other than ``interpretive rules, general statements of policy, * * * 
procedure, or practice.' '') (quoting C.W. Ooms, The United States 
Patent Office and the Administrative Procedure Act, 38 Trademark Rep. 
149, 153 (1948)). Accordingly, prior notice and opportunity for public 
comment are not required pursuant to 5 U.S.C. 553(b) or (c) (or any 
other law). Nevertheless, the Office is providing this opportunity for 
public comment on the changes proposed in this notice because the 
Office desires the benefit of public comment on these proposed changes.

Regulatory Flexibility Act

    As prior notice and an opportunity for public comment are not 
required pursuant to 5 U.S.C. 553 (or any other law), neither an 
initial regulatory flexibility analysis nor a certification under the 
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) are required. See 5 
U.S.C. 603.

Executive Order 13132

    This rulemaking does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (Aug. 4, 1999).

Executive Order 12866

    This rulemaking has been determined to be not significant for 
purposes of Executive Order 12866 (Sept. 30, 1993).

Paperwork Reduction Act

    This notice involves information collection requirements which are 
subject to review by the Office of Management and Budget (OMB) under 
the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The 
collections of information involved in this notice have been reviewed 
and previously approved by OMB under OMB control numbers 0651-0031. 
This notice proposes changes to the rules of practice to change the 
provisions for information disclosure statements to require additional 
disclosure when citations exceed a set number, a citation exceeds a set 
number of pages, a citation is in a foreign language, or a citation is 
not timely submitted prior to the Office examining the application, and 
eliminate the fee requirements for submitting an IDS, as well as 
eliminating the applicant's ability to file an IDS prior to the close 
of prosecution just by paying a fee. The proposed changes will enable 
the examiner to focus on the relevant portions of submitted information 
at the very beginning of the examination process, give higher quality 
first actions, and minimize wasted steps. The United States Patent and 
Trademark Office is resubmitting an information collection package to 
OMB for its review and approval because the changes in this notice 
affect the information collection requirements associated with the 
information collection under OMB control number 0651-0031.
    The title, description and respondent description of these 
information collections are shown below with an estimate of the annual 
reporting burdens. Included in the estimate is the time for reviewing 
instructions, gathering and maintaining the data needed, and completing 
and reviewing the collections of information.
    OMB Number: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB/08, PTO/SB/17i, PTO/SB/17P, PTO/SB/21-27, PTO/
SB/24A, PTO/SB/24B, PTO/SB/30-32, PTO/SB/35-39, PTO/SB/42-43, PTO/SB/
61-64, PTO/SB/64a, PTO/SB/67-68, PTO/SB/91-92, PTO/SB/96-97, PTO-2053-
A/B, PTO-2054-A/B, PTO-2055-A/B, PTOL 413A.
    Type of Review: Approved through July of 2006.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms, Federal 
Government and State, Local and Tribal Governments.
    Estimated Number of Respondents: 2,317,539.
    Estimated Time Per Response: 1.8 minutes to 12 hours.
    Estimated Total Annual Burden Hours: 2,807,641 hours.
    Needs and Uses: During the processing of an application for a 
patent, the applicant/agent may be required or desire to submit 
additional information to the United States Patent and Trademark Office 
concerning the examination of a specific application. The specific 
information required or which may be submitted includes: Information 
Disclosures and documents, requests for extensions of time, the 
establishment of small entity status, abandonment and revival of 
abandoned applications, disclaimers, appeals, expedited examination of 
design applications, transmittal forms, requests to inspect, copy and 
access patent applications, publication requests, and certificates of 
mailing, transmittals, and submission of priority documents and 
amendments.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to: (1) The Office of Information and Regulatory Affairs, 
Office of Management and Budget, New Executive Office Building, Room 
10202, 725 17th Street, NW., Washington, DC 20503, Attention: Desk 
Officer for the Patent and Trademark Office; and (2) Robert J. Spar, 
Director, Office of Patent Legal Administration, Commissioner for 
Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
Information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

    For the reasons set forth in the preamble, 37 CFR Part 1 is 
proposed to be amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR Part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2).

    2. Section 1.17 is amended by revising paragraphs (h) and (p) to 
read as follows:


Sec.  1.17  Patent application and reexamination processing fees.

* * * * *
    (h) For filing a petition under one of the following sections which 
refers to this paragraph: $130.00
    Sec.  1.19(g)--to request documents in a form other than provided 
in this part.
    Sec.  1.84--for accepting color drawings or photographs.
    Sec.  1.91--for entry of a model or exhibit.
    Sec.  1.98(a)(3)(iii)(B)--for filing a petition to withdraw a 
reexamination proceeding from the publication process.
    Sec.  1.102(d)--to make an application special.
    Sec.  1.138(c)--to expressly abandon an application to avoid 
publication.
    Sec.  1.313--to withdraw an application from issue.
    Sec.  1.314--to defer issuance of a patent.
* * * * *
    (p) For a submission under Sec.  1.99(b): $180.00
* * * * *
    3. Section 1.48 is amended by revising its heading and paragraph 
(h), and by adding a new paragraph (k) to read as follows:

[[Page 38820]]

Sec.  1.48  Correction of inventorship in a patent application, other 
than a reissue application, pursuant to 35 U.S.C. 116, a change in the 
order of the inventors' names, or a change in the spelling, or an 
updating of an inventor's name.

* * * * *
    (h) Reissue applications and reexamination proceedings not covered. 
The provisions of this section do not apply to reissue applications or 
to reexamination proceedings. See Sec. Sec.  1.171 and 1.175 for 
correction of inventorship in a patent via a reissue application. See 
Sec.  1.530(l) for correction of inventorship in a patent via an ex 
parte or inter partes reexamination proceeding.
* * * * *
    (k) Certain changes of inventors' names (excluding reissue 
applications and patents). When accompanied by the appropriate 
processing fee pursuant to Sec.  1.17(i) or (q), a request, which 
should also be accompanied by a supplemental application data sheet 
pursuant to Sec.  1.76 for changes in a nonprovisional application, may 
be submitted to:
    (1) Change the order of the inventors' names to another specified 
order in a pending application, except in provisional applications;
    (2) Change the spelling of an inventor's name; or
    (3) Update an inventor's name when it has changed after the 
application has been filed, where this request is also accompanied by:
    (i) An affidavit signed with both names and setting forth the 
procedure whereby the change of name was effected; or
    (ii) A certified copy of a court order for name change.
    4. Section 1.55 is amended by revising paragraph (a)(2) to read as 
follows:


Sec.  1.55  Claim for foreign priority.

    (a) * * *
    (2) The claim for priority and the certified copy of the foreign 
application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any 
event be filed before the patent is granted. If the claim for priority 
or the certified copy of the foreign application is filed after the 
date the issue fee is paid, it must be accompanied by the processing 
fee set forth in Sec.  1.17(i). If the patent did not publish with the 
priority claim, the amendment adding the priority claim will not be 
effective unless corrected by a certificate of correction under 35 
U.S.C. 255 and Sec.  1.323.
* * * * *
    5. Section 1.56 is amended by adding new paragraph (f) to read as 
follows:


Sec.  1.56  Duty to disclose information material to patentability.

* * * * *
    (f) The additional disclosure requirements for documents in Sec.  
1.98(a)(3) would be deemed satisfied where a Sec.  1.56(c) individual 
has made reasonable inquiry of the relationship of the documents cited 
in an information disclosure statement to the claimed invention, 
including the supporting specification, and the individual has acted in 
good faith to comply with the disclosure requirements by having a 
reasonable basis for the statements made in such disclosure.
    6. Section 1.97 is revised to read as follows:


Sec.  1.97  Filing of information disclosure statements.

    (a) General. In order for an applicant for a patent, or for a 
reissue of a patent, or a patent owner in a reexamination proceeding, 
to have an information disclosure statement considered by the Office 
during the pendency of the application, or the reexamination 
proceeding, the information disclosure statement must satisfy the 
requirements of Sec.  1.98 specific to the time period of submission of 
the information disclosure statement as set forth in one of paragraphs 
(b) through (d) of this section.
    (b) First time period: Within one of the following time frames:
    (1) Three months from the filing date of a national application 
under 35 U.S.C. 111(a) other than a continued prosecution application 
under Sec.  1.53(d), or three months from the filing date of a request 
for reexamination under Sec.  1.510 or Sec.  1.915;
    (2) Three months from the date of entry of the national stage as 
set forth in Sec.  1.491 in an international application; or
    (3) Before the mailing of a first Office action on the merits.
    (c) Second time period: After the period specified in paragraph (b) 
of this section, and before the earlier of the mailing date of a notice 
of allowability or a notice of allowance under Sec.  1.311 for an 
application, or of a Notice of Intent to Issue a Reexamination 
Certificate (NIRC) for a reexamination proceeding.
    (d)(1) Third time period: After the period specified in paragraph 
(c) of this section, except for reexamination proceedings, and before 
or with payment of the issue fee for an application.
    (2) Fourth time period: After payment of the issue fee for an 
application and in sufficient time to be considered by the examiner 
before issuance of the application. For a reexamination proceeding, 
after the period specified in paragraph (c) of this section and in 
sufficient time to be considered by the examiner before issuance of a 
Reexamination Certificate under Sec.  1.570 or Sec.  1.997.
    (e) Certification. A certification under this section referenced in 
Sec. Sec.  1.98(a)(3)(iii) and 1.98(a)(3)(viii)(B) must certify either:
    (1) That each item of information contained in the information 
disclosure statement was first cited in any communication from a 
foreign patent office in a counterpart foreign application not more 
than three months prior to the filing of the information disclosure 
statement; or
    (2) That no item of information contained in the information 
disclosure statement was cited in a communication from a foreign patent 
office in a counterpart foreign application, and, to the knowledge of 
the person signing the certification after making reasonable inquiry, 
no item of information contained in the information disclosure 
statement was known to any individual designated in Sec.  1.56(c) more 
than three months prior to the filing of the information disclosure 
statement.
    (f) Extensions. No extensions of time for filing an information 
disclosure statement are permitted under Sec.  1.136, Sec.  1.550 or 
Sec.  1.956.
    (g) Search. An information disclosure statement filed in accordance 
with Sec.  1.98 shall not be construed as a representation that a 
search has been made.
    (h) Admissions. The filing of an information disclosure statement 
shall not be construed to be an admission that the information cited in 
the statement is, or is considered to be, material to patentability as 
defined in Sec.  1.56(b).
    (i) Noncompliance. (1) If an information disclosure statement does 
not comply with this section and Sec.  1.98 (see also Sec.  
1.98(a)(3)(vii)(C)), it will be placed in the file but will not be 
considered by the Office.
    (2) If a bona fide attempt is made to comply with Sec.  1.98, but 
part of the required content is inadvertently omitted, additional time 
may be granted, within the sole discretion of the Office, to enable 
full compliance.
    (j) Withdrawal. An information disclosure statement submitted under 
paragraph (d)(2) of this section will not by itself be effective to 
withdraw an application from issue, or a reexamination proceeding from 
the publication procedure for a Reexamination Certificate.
    7. Section 1.98 is revised to read as follows:

[[Page 38821]]

Sec.  1.98  Content of information disclosure statements.

    (a) General. Any information disclosure statement filed under Sec.  
1.97 shall comply with the items listed in paragraphs (a)(1), (a)(2), 
and (a)(3) of this section.
    (1) Listing of items: A list is required of all patents, 
publications, applications, or other information submitted to the 
Office for consideration. U.S. patents and U.S. patent application 
publications must be listed in a section separately from citations of 
other documents. Each page of the list must include:
    (i) The application/proceeding number, if known, of the 
application/proceeding in which the information disclosure statement is 
being submitted;
    (ii) A column that provides a space, next to each document to be 
considered, for the examiner's initials, and
    (iii) A heading that clearly indicates that the list is an 
information disclosure statement.
    (2) Copies of items requirements: A legible copy must be submitted 
of:
    (i) Each foreign patent;
    (ii) Each publication or that portion which caused it to be listed, 
other than U.S. patents and U.S. patent application publications unless 
required by the Office;
    (iii) Each pending or abandoned U.S. application, or that portion 
which caused it to be listed including any amended claims directed to 
that portion, unless the cited pending or abandoned U.S. application is 
in the Office's image file wrapper system. If the cited pending or 
abandoned U.S. application is in the Office's image file wrapper 
system, a copy of the application's specification, including the 
claims, and drawings is not required; and
    (iv) All other information or that portion which caused it to be 
listed.
    (3) Additional disclosure requirements: (i) The following submitted 
during the time period defined in Sec.  1.97(b) require the explanation 
in compliance with paragraph (a)(3)(iv) of this section, except for 
documents meeting one of the exceptions of paragraphs (a)(3)(viii)(A) 
and (a)(3)(viii)(C) of this section:
    (A) Foreign language documents (see also paragraph (a)(3)(xi) of 
this section),
    (B) Any document over twenty-five pages, excluding sequence 
listings, or computer program listings, pursuant to Sec.  1.52(e)(1), 
and
    (C) All of the documents, if more than twenty documents are 
submitted, calculated cumulatively.
    (ii) All documents cited in an information disclosure statement 
submitted during the time period defined in Sec.  1.97(c) require the 
explanation in compliance with paragraph (a)(3)(iv) of this section and 
the non-cumulative description in compliance with paragraph (a)(3)(v) 
of this section, except for documents meeting one of the exceptions of 
paragraphs (a)(3)(viii)(B) and (a)(3)(viii)(C) of this section.
    (iii) All documents cited in an information disclosure statement 
submitted during the time periods defined in Sec. Sec.  1.97(d)(1) and 
(d)(2) require a certification pursuant to Sec.  1.97(e)(1) or (e)(2) 
and must meet one of the following:
    (A) When the information disclosure statement is submitted during 
the time period defined in Sec.  1.97(d)(1), compliance is required 
with either patentability justification pursuant to either paragraph 
(a)(3)(vi)(A) or (a)(3)(vi)(B) of this section; or
    (B) When submitted during the time period defined in Sec.  
1.97(d)(2), the information disclosure statement must be accompanied by 
a petition to withdraw an application from issue pursuant to Sec.  
1.313(c)(1), or a reexamination proceeding from publication pursuant to 
this paragraph and the fee set forth in Sec.  1.17(h), and the 
patentability justification pursuant to paragraph (a)(3)(vi)(B) of this 
section.
    (iv) Explanation: An explanation must include:
    (A) Identification: Identification of specific feature(s), 
showing(s), or teaching(s) that caused a document to be cited, and a 
representative portion(s) of the document where the specific 
feature(s), showing(s), or teaching(s) may be found; and
    (B) Correlation: A correlation of the specific feature(s), 
showing(s), or teaching(s) identified in paragraph (a)(3)(iv)(A) of 
this section to corresponding specific claim language, or to a specific 
portion(s) of the specification that provides support for the claimed 
invention, where the document is cited for that purpose.
    (v) Non-cumulative description: A non-cumulative description 
requires a description of how each document is not merely cumulative of 
any other information disclosure statement cited document, document 
cited by the examiner, or document cited under Sec. Sec.  1.99, or 
1.291, as citation of merely cumulative information must be avoided 
pursuant to paragraph (c) of this section. The description may be of a 
specific feature, showing, or teaching in a document that is not found 
in any other document of record. Note the exceptions set forth in 
paragraphs (a)(3)(viii)(B) and (a)(3)(viii)(C) of this section.
    (vi) Patentability justification: A patentability justification 
requires either:
    (A) An explanation pursuant to paragraph (a)(3)(iv) of this 
section, a non-cumulative description pursuant to paragraph (a)(3)(v) 
of this section, and reasons why the independent claims are patentable 
over the information in the information disclosure statement being 
submitted, considered together, and in view of any information already 
of record; or
    (B) An explanation pursuant to paragraph (a)(3)(iv) of this 
section, a non-cumulative description pursuant to paragraph (a)(3)(v) 
of this section, and reasons why an amendment causes claims, admitted 
to be unpatentable over the information in the submitted information 
disclosure statement, either alone or in combination with any 
information already of record, to now be patentable over such 
information when considered together, and in view of any information 
already of record.
    (vii) Meaningful compliance: (A) The explanations pursuant to 
paragraph (a)(3)(iv) of this section must include a level of 
specificity commensurate with specifics of the feature(s), showing(s), 
or teaching(s) which caused the document to be cited. These 
explanations must not be pro forma types of explanations. The non-
cumulative descriptions pursuant to paragraph (a)(3)(v) of this section 
must be significantly different so as to point out why the cited 
document is not merely cumulative of any other information currently 
being filed, or previously of record.
    (B) The reasons for patentability justification presented pursuant 
to paragraph (a)(3)(vi) of this section must discuss specific claim 
language relative to the specific feature(s), showing(s), or 
teaching(s) of specific documents that are being cited, or already of 
record.
    (C) If the explanations or non-cumulative descriptions do not 
comply with (a)(3)(vii)(A) of this section, or the reasons for 
patentability justification do not comply with (a)(3)(vii)(B) of this 
section, the Office may decline to consider the information disclosure 
statement. See also Sec.  1.97(i)(1).
    (viii) Exceptions: (A) Compliance with paragraph (a)(3)(iv) of this 
section is not required for documents cited within a time frame set 
forth in Sec.  1.97(b) that result from a foreign search or examination 
report where a copy of the report is submitted with the information 
disclosure statement.
    (B) Compliance with paragraphs (a)(3)(iv) and (a)(3)(v) of this 
section is not required for documents cited within

[[Page 38822]]

the time frame set forth in Sec.  1.97(c) when submitted with a 
certification pursuant to Sec.  1.97(e)(1) and a copy of the foreign 
search or examination report.
    (C) Compliance with paragraphs (a)(3)(iv) and (a)(3)(v) of this 
section is not required for documents submitted in reply to a 
requirement for information pursuant to Sec.  1.105.
    (ix) Updating: With each amendment to the claims or the 
specification affecting the scope of the claims, other than an 
examiner's amendment, filed after an information disclosure statement:
    (A) The required explanation under paragraph (a)(3)(iv) of this 
section for all previous information disclosure statements must be 
reviewed and updated where necessary in view of the amendment(s); or
    (B) A statement must be supplied to the effect that updating of the 
previous explanation(s) submitted with information disclosure 
statement(s) is not needed.
    (x) Format of additional disclosure: The additional disclosure 
requirements pursuant to paragraph (a)(3) of this section, may be 
supplied as an attachment to the list in paragraph (a)(1) of this 
section, or included in the application specification with the page(s) 
and lines of specification where it is incorporated being noted in the 
list (similar to the treatment of non-English documents) or partially 
provided in each.
    (xi) Translations: For Non-English language documents of any 
length, a copy of a translation in English thereof must be submitted 
along with the document where a translation is within the possession, 
custody, or control of, or is readily available to, any individual 
listed in Sec.  1.56(c). A translation does not count towards the 
cumulative total of paragraph (a)(3)(i)(C) of this section, but is 
subject to the over twenty-five page threshold value of paragraph 
(a)(3)(i)(B) of this section.
    (b) Content of Listing: (1) Each U.S. patent listed in an 
information disclosure statement must be identified by the inventor(s), 
patent number, and issue date.
    (2) Each U.S. patent application publication listed in an 
information disclosure statement must be identified by the 
applicant(s), patent application publication number, and publication 
date.
    (3) Each U.S. patent application listed in an information 
disclosure statement must be identified by the applicant(s), 
application number, and filing date.
    (4) Each foreign patent or published foreign patent application 
listed in an information disclosure statement must be identified by the 
country or patent office which issued the patent or published the 
application, an appropriate document number, and the publication date 
indicated on the patent or published application.
    (5) Each publication listed in an information disclosure statement 
must be identified by publisher, author (if any), title, relevant pages 
of the publication, date, and place of publication.
    (c) Avoid cumulative information: Citing documents that are merely 
cumulative of other documents cited must be avoided. The Office may 
decline to consider an information disclosure statement citing 
documents that are merely cumulative.
    (d) Information cited in prior application: A copy of any foreign 
patent, publication, pending or abandoned U.S. application or other 
information, as specified in paragraph (a)(2) of this section, listed 
in an information disclosure statement is required to be provided, even 
if the patent, publication, pending or abandoned U.S. application or 
other information was previously submitted to, or cited by, the Office 
in an earlier application (containing an earlier information disclosure 
statement), unless:
    (1) The earlier application is properly identified in the (later 
submitted) information disclosure statement and the earlier application 
(containing the earlier submitted or cited information) is relied on in 
the application in which the information disclosure statement is 
submitted for an earlier effective filing date under 35 U.S.C. 120; and
    (2) The information disclosure statement submitted in the earlier 
application complied with paragraphs (a)(1), (a)(2) and (b) of this 
section.
    8. Section 1.99 is amended by revising paragraphs (a) and (e) to 
read as follows:


Sec.  1.99  Third-party submission in published application.

    (a) A submission by a member of the public other than a Sec.  
1.56(c) individual (i.e., a submission from a third party) of patents 
or publications relevant to a pending published application may be 
entered in the application file if the submission complies with the 
requirements of this section and the application is still pending when 
the submission and application file are brought before the examiner. A 
submission under this section must be filed within six months from the 
date of publication of the application (Sec.  1.215(a)), or prior to 
the mailing of a notice of allowance (Sec.  1.311), whichever is 
earlier.
* * * * *
    (e) A submission by a member of the public to a pending published 
application that does not comply with the requirements of this section 
will not be entered.
* * * * *
    9. Section 1.291 is amended by revising paragraphs (b) and (c)(2) 
to read as follows:


Sec.  1.291  Protests by the public against pending applications.

* * * * *
    (b)(1) Entry: The protest will be entered into the record of the 
application if:
    (i) It complies with paragraph (c) of this section;
    (ii) The protest has been served upon the applicant in accordance 
with Sec.  1.248, or filed with the Office in duplicate in the event 
such service is not possible; and
    (iii) The protest was filed prior to the date the application was 
published under Sec.  1.211, or a notice of allowance under Sec.  1.311 
was mailed, whichever occurs first, or alternatively, the applicant has 
provided written consent to the protest pursuant to paragraph (b)(2) of 
this section.
    (2) Applicant consent and protester statement: (i) If a protest is 
accompanied by the written consent of the applicant, or such written 
consent is of record in the application, the protest will be considered 
if the protest is matched with the application in time to permit review 
during prosecution of the application.
    (ii) A consent may be limited only insofar as it may expressly 
designate the length of time for which the consent is in effect, at 
least thirty days, and a specific party who can file a protest. Any 
other limitation will not be given effect.
    (iii) Any protest filed based upon a consent under paragraph (b)(2) 
of this section must contain a statement that the submitted protest is 
based on the written consent of the applicant and falls within the 
terms of the consent.
    (3) Unsolicited information: Upon receiving unsolicited information 
from a party other than a Sec.  1.56(c) individual (i.e., from a third 
party), an applicant may exercise one of the following options:
    (i) Submit as an information disclosure statement: Submit the 
unsolicited information as an information disclosure statement, 
provided there is compliance with Sec. Sec.  1.97 and 1.98.

[[Page 38823]]

    (ii) Provide consent: Provide a written consent pursuant to 
paragraph (b)(2) of this section to the third party, if known, for that 
third party to file the unsolicited information with the Office as 
(part of) a protest. If the third party is unknown, the written consent 
to the submission of a protest may be filed in the application.
    (iii) Submit as a protest: Submit the unsolicited information to 
the Office as a protest on behalf of the third party, provided there is 
compliance with this section (other than paragraph (b)(1)(ii) of this 
section), including the requirements of paragraph (c) of this section. 
A submission by applicant of the unsolicited information under this 
paragraph, as a protest on behalf of the third party, shall be deemed a 
consent to the protest pursuant to paragraph (b)(2) of this section.
    (4) Material information: Nothing in this section is intended to 
relieve a person subject to Sec.  1.56(c) from submitting to the Office 
information that is subject to the duty of disclosure under Sec.  1.56.
    (5) First protest statement: A statement must accompany a protest 
that it is the first protest submitted in the application by the real 
party in interest who is submitting the protest; or the protest must 
comply with paragraph (c)(5) of this section. This paragraph does not 
apply to the first protest filed in an application.
    (c) * * *
    (2) A concise explanation of the relevance of each item listed 
pursuant to paragraph (c)(1) of this section. Items in a compliant 
protest will be considered by the examiner at least to the extent of 
the provided explanations;
* * * * *
    10. Section 1.312 is revised to read as follows:


Sec.  1.312  Amendments after allowance.

    (a) No amendment may be made as a matter of right in an application 
after the mailing of the notice of allowance, except as provided in 
paragraphs (a)(1) and (a)(2) of this section. Any amendment in addition 
to those provided in paragraphs (a)(1) and (a)(2) of this section may 
be entered on the recommendation of the primary examiner, approved by 
the Director. Any amendment entered pursuant to this section may be 
made without withdrawing the application from issue.
    (1) Amendments filed before or with the payment of the issue fee: 
The following amendments may be entered when filed after allowance but 
before or with payment of the issue fee:
    (i) Amendment of the bibliographic data to be indicated on the 
front page of the patent;
    (ii) Amendment of the specification to add a reference to a joint 
research agreement (Sec.  1.71(g));
    (iii) Addition of a benefit claim of a prior-filed provisional 
application under 35 U.S.C. 119(e), a prior-filed nonprovisional 
application under 35 U.S.C. 120, or a prior-filed international 
application that designated the United States under 35 U.S.C. 365(c) 
(Sec.  1.78), subject to any petition required pursuant to Sec.  1.78;
    (iv) Addition of a priority claim of a prior foreign application 
under 35 U.S.C. 119(a) through (d) or (f) or 365(a) or (b) (Sec.  
1.55), subject to any petition required pursuant to Sec.  1.55;
    (v) Changing the order of the inventors' names, the spelling of an 
inventor's name, or the name of an inventor, pursuant to Sec.  1.48(k); 
or
    (vi) Changing the inventorship pursuant to Sec.  1.48.
    (2) Amendments filed after the date the issue fee is paid: The 
amendments identified in paragraph (a)(1) of this section may be 
entered when filed after the date the issue fee is paid provided:
    (i) The amendments are submitted in sufficient time to permit the 
patent to be printed with the amended information, and
    (ii) The processing fee set forth in Sec.  1.17(i) is submitted.
    (b) If the patent does not include the amendment filed after 
payment of the issue fee, the amendment will not be effective unless 
the patent is corrected by a certificate of correction under 35 U.S.C. 
255 and Sec.  1.323 or otherwise corrected in another post-issuance 
proceeding, as appropriate.
    11. Section 1.555 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.555  Information material to patentability in ex parte 
reexamination and inter partes reexamination proceedings.

    (a) A patent by its very nature is affected with a public interest. 
The public interest is best served, and the most effective 
reexamination occurs when, at the time a reexamination proceeding is 
being conducted, the Office is aware of and evaluates the teachings of 
all information material to patentability in a reexamination 
proceeding. Each individual associated with the patent owner in a 
reexamination proceeding has a duty of candor and good faith in dealing 
with the Office, which includes a duty to disclose to the Office all 
information known to that individual to be material to patentability in 
a reexamination proceeding. The individuals who have a duty to disclose 
to the Office all information known to them to be material to 
patentability in a reexamination proceeding are the patent owner, each 
attorney or agent who represents the patent owner, and every other 
individual who is substantively involved on behalf of the patent owner 
in a reexamination proceeding. The duty to disclose the information 
exists with respect to each claim pending in the reexamination 
proceeding until the claim is cancelled.
    Information material to the patentability of a cancelled claim need 
not be submitted if the information is not material to patentability of 
any claim remaining under consideration in the reexamination 
proceeding. The duty to disclose all information known to be material 
to patentability in a reexamination proceeding is deemed to be 
satisfied if all information known to be material to patentability of 
any claim in the patent after issuance of the reexamination certificate 
was cited by the Office or submitted to the Office in an information 
disclosure statement in compliance with Sec. Sec.  1.97 and 1.98. 
However, the duties of candor, good faith, and disclosure have not been 
complied with if any fraud on the Office was practiced or attempted or 
the duty of disclosure was violated through bad faith or intentional 
misconduct by, or on behalf of, the patent owner in the reexamination 
proceeding. Any information disclosure statement must be filed with the 
items listed in, and pursuant to the requirements of, Sec.  1.98 as 
applied to individuals associated with the patent owner in a 
reexamination proceeding, and must be filed within the time frames set 
forth in Sec.  1.97.
* * * * *
    12. Section 1.948 is amended by adding paragraph (b) to read as 
follows:


Sec.  1.948  Limitations on submission of prior art by third party 
requester following the order for inter partes reexamination.

* * * * *
    (b) Notwithstanding any provision of these rules, any submission of 
prior art or other information as set forth in Sec.  1.98 by a third 
party requester must comply with the requirements of Sec.  1.98.

    Dated: June 28, 2006.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 06-6027 Filed 7-7-06; 8:45 am]
BILLING CODE 3510-16-P