[Federal Register Volume 74, Number 197 (Wednesday, October 14, 2009)]
[Rules and Regulations]
[Pages 52686-52691]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-24667]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2009-0049]
RIN 0651-AC36


Changes to Practice for Continued Examination Filings, Patent 
Applications Containing Patentably Indistinct Claims, and Examination 
of Claims in Patent Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) 
published a final rule in the Federal Register in August of 2007 to 
revise the rules of practice for patent cases pertaining to continuing 
applications and requests for continued examination practices, and for 
the examination of claims in patent applications (Claims and 
Continuations Final Rule). The Office is revising the rules of practice 
in this final rule to remove the changes in the Claims and 
Continuations Final Rule from the Code of Federal Regulations.

DATES: Effective Date: October 14, 2009.

FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent Counsel, 
Office of the Deputy Commissioner for Patent Examination Policy, by 
telephone at (571) 272-8800; or by mail addressed to: Mail Stop 
Comments Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, 
VA 22313-1450.

SUPPLEMENTARY INFORMATION: The Office published the Claims and 
Continuations Final Rule in the Federal Register in August of 2007, 
which revised the rules of practice in title 37 of the Code of Federal 
Regulations for patent cases pertaining to continuing applications and 
requests for continued examination practices, and for the examination 
of claims in patent applications. See Changes to Practice for Continued 
Examination Filings, Patent Applications Containing Patentably 
Indistinct Claims, and Examination of Claims in Patent Applications, 72 
FR 46716 (Aug. 21, 2007), 1322 Off. Gaz. Pat. Office 76 (Sept. 11, 
2007). The United States District Court for the Eastern District of 
Virginia (District Court) issued an injunction, enjoining the Office 
from implementing the changes in the Claims and Continuations Final 
Rule. See Tafas v. Dudas, 541 F. Supp. 2d 805, 86 U.S.P.Q.2d 1623 (E.D. 
Va. 2008) (permanent injunction), and Tafas v. Dudas, 511 F. Supp. 2d 
652, 86 U.S.P.Q.2d 1548 (E.D. Va. 2007) (preliminary injunction). The 
Office appealed this decision to the United States Court of Appeals for 
the Federal Circuit (Federal Circuit). The Federal Circuit issued a 
panel decision holding that all of the changes in the Claims and 
Continuations Final Rule fall within the Office's rule making authority 
to govern the conduct of proceedings before the Office, but that the 
provisions pertaining to continuing applications were inconsistent with 
35 U.S.C. 120. See Tafas v. Doll, 559 F.3d 1345, 90 U.S.P.Q.2d 1129 
(Fed. Cir. 2009). The Federal Circuit en banc then issued an order 
granting a petition for rehearing en banc and vacating the panel 
decision. See Tafas v. Doll, 2009 U.S. App. LEXIS 14611, 91 U.S.P.Q. 2d 
1153 (Fed. Cir., July 6, 2009).
    The changes in the Claims and Continuations Final Rule were added 
to the Code of Federal Regulations, but have been the subject of 
litigation since August of 2007 and have never taken effect. See 
Clarification of Patent

[[Page 52687]]

Regulations Currently in Effect, and Revision in Applicability Date of 
Provisions Relating to Patent Applications Containing Patentably 
Indistinct Claims, 73 FR 45999 (Aug. 7, 2008) (notice). The changes in 
the Claims and Continuations Final Rule addressed the Office's patent 
application pendency and quality issues, but did so with provisions 
that were objectionable to a large segment of the patent user 
community. In addition, the circumstances have changed since the Office 
published the Claims and Continuations Final Rule in August of 2007, 
and the Office is now considering other initiatives that would garner 
more of a consensus with the patent user community to address the 
challenges it currently faces. Thus, the Office has decided that it is 
no longer interested in pursuing the changes in the Claims and 
Continuations Final Rule that were the subject of the District Court's 
decision in Tafas. Therefore, the Office is revising the rules of 
practice in title 37 of the Code of Federal Regulations for patent 
cases to remove the changes in the Claims and Continuations Final Rule 
from the Code of Federal Regulations.

Discussion of Specific Rules

    This final rule amends title 37, part 1, of the Code of Federal 
Regulations, as follows:
    Sections 1.17(f), 1.26(a) and (b), 1.52(d)(2), 1.53(b) and (c)(4), 
1.75(b) and (c), 1.76(b)(5), 1.78, 1.104(a)(1) and (b), 1.110, 1.114(a) 
and (d), 1.136(a)(1), 1.142(a), 1.145, and 1.495(g) are amended to 
remove the changes in these provisions in the Claims and Continuations 
Final Rule.
    Sections 1.105(a)(1)(ix), 1.114(f), (g), and (h), 1.117, 1.142(c), 
and 1.265, and 1.704(c)(11) are removed. These provisions were added in 
the Claims and Continuations Final Rule.
    Section 1.704(c)(12) is redesignated as Sec.  1.704(c)(11).

Rule Making Considerations

    A. Administrative Procedure Act: The Under Secretary of Commerce 
for Intellectual Property and Director of the United States Patent and 
Trademark Office finds good cause under 5 U.S.C. 553(b)(B) to waive any 
requirement to provide prior notice and opportunity for public comment 
as such procedures are unnecessary. The changes in this final rule 
revise the rules of practice as published in title 37 of the Code of 
Federal Regulations to reflect the rules of practice that are currently 
in effect. The changes in this final rule will not result in any 
changes in the requirements with which applicants, patentees, or other 
members of the public must comply during proceedings before the Office. 
Therefore, prior notice and an opportunity for public comment are not 
required pursuant to 5 U.S.C. 553(b)(A) or (B) or any other law. In 
addition, thirty-day advance publication is not required under 5 U.S.C. 
553(d) for this final rule as it merely relieves restrictions contained 
in the rules of practice as published in title 37 of the Code of 
Federal Regulations.
    B. 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 a regulatory flexibility analysis nor a 
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et 
seq.) is required. See 5 U.S.C. 603.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rule making has been determined to be significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    D. Executive Order 13132 (Federalism): This rule making does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    E. Executive Order 13175 (Tribal Consultation): This rule making 
will not: (1) Have substantial direct effects on one or more Indian 
Tribes; (2) impose substantial direct compliance costs on Indian Tribal 
governments; or (3) preempt Tribal law. Therefore, a Tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    F. Executive Order 13211 (Energy Effects): This rule making is not 
a significant energy action under Executive Order 13211 because this 
rule making is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    G. Executive Order 12988 (Civil Justice Reform): This rule making 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    H. Executive Order 13045 (Protection of Children): This rule making 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr, 
21, 1997).
    I. Executive Order 12630 (Taking of Private Property): This rule 
making will not effect a taking of private property or otherwise have 
taking implications under Executive Order 12630 (Mar. 15, 1988).
    J. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), the United States Patent and Trademark 
Office will submit a report containing this final rule and other 
required information to the U.S. Senate, the U.S. House of 
Representatives and the Comptroller General of the Government 
Accountability Office. The changes in this final rule will not result 
in an annual effect on the economy of 100 million dollars or more, a 
major increase in costs or prices, or significant adverse effects on 
competition, employment, investment, productivity, innovation, or the 
ability of United States-based enterprises to compete with foreign-
based enterprises in domestic and export markets. Therefore, this final 
rule is not a ``major rule'' as defined in 5 U.S.C. 804(2).
    K. Unfunded Mandates Reform Act of 1995: The changes proposed in 
this notice do not involve a Federal intergovernmental mandate that 
will result in the expenditure by State, local, and Tribal governments, 
in the aggregate, of 100 million dollars (as adjusted) or more in any 
one year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of 100 million dollars (as adjusted) 
or more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    L. National Environmental Policy Act: This rule making will not 
have any effect on the quality of environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    M. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are inapplicable because 
this rule making does not contain provisions which involve the use of 
technical standards.
    N. Paperwork Reduction Act: This final rule 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 collection of information involved in 
this final rule has been reviewed and approved by OMB under OMB control 
number 0651-

[[Page 52688]]

0031. The United States Patent and Trademark Office is not submitting 
an information collection package to OMB for its review and approval 
because the changes in this notice do not affect the information 
collection requirements associated with the information collection 
under OMB control number 0651-0031.
    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.

0
For the reasons set forth in the preamble, 37 CFR part 1 is amended as 
follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

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


0
2. Section 1.17 is amended by revising paragraph (f) to read as 
follows:


Sec.  1.17  Patent application and reexamination processing fees.

* * * * *
    (f) For filing a petition under one of the following sections which 
refers to this paragraph: $400.00.
    Sec.  1.36(a)--for revocation of a power of attorney by fewer than 
all of the applicants.
    Sec.  1.53(e)--to accord a filing date.
    Sec.  1.57(a)--to accord a filing date.
    Sec.  1.182--for decision on a question not specifically provided 
for.
    Sec.  1.183--to suspend the rules.
    Sec.  1.378(e)--for reconsideration of decision on petition 
refusing to accept delayed payment of maintenance fee in an expired 
patent.
    Sec.  1.741(b)--to accord a filing date to an application under 
Sec.  1.740 for extension of a patent term.
* * * * *

0
3. Section 1.26 is amended by revising paragraphs (a) and (b) to read 
as follows:


Sec.  1.26  Refunds.

    (a) The Director may refund any fee paid by mistake or in excess of 
that required. A change of purpose after the payment of a fee, such as 
when a party desires to withdraw a patent filing for which the fee was 
paid, including an application, an appeal, or a request for an oral 
hearing, will not entitle a party to a refund of such fee. The Office 
will not refund amounts of twenty-five dollars or less unless a refund 
is specifically requested, and will not notify the payor of such 
amounts. If a party paying a fee or requesting a refund does not 
provide the banking information necessary for making refunds by 
electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or 
instruct the Office that refunds are to be credited to a deposit 
account, the Director may require such information, or use the banking 
information on the payment instrument to make a refund. Any refund of a 
fee paid by credit card will be by a credit to the credit card account 
to which the fee was charged.
    (b) Any request for refund must be filed within two years from the 
date the fee was paid, except as otherwise provided in this paragraph 
or in Sec.  1.28(a). If the Office charges a deposit account by an 
amount other than an amount specifically indicated in an authorization 
(Sec.  1.25(b)), any request for refund based upon such charge must be 
filed within two years from the date of the deposit account statement 
indicating such charge, and include a copy of that deposit account 
statement. The time periods set forth in this paragraph are not 
extendable.
* * * * *

0
4. Section 1.52 is amended by revising paragraph (d)(2) to read as 
follows:


Sec.  1.52  Language, paper, writing, margins, compact disc 
specifications.

* * * * *
    (d) * * *
    (2) Provisional application. If a provisional application is filed 
in a language other than English, an English language translation of 
the non-English language provisional application will not be required 
in the provisional application. See Sec.  1.78(a) for the requirements 
for claiming the benefit of such provisional application in a 
nonprovisional application.
* * * * *

0
5. Section 1.53 is amended by revising paragraphs (b) and (c)(4) to 
read as follows:


Sec.  1.53  Application number, filing date, and completion of 
application.

* * * * *
    (b) Application filing requirements--Nonprovisional application. 
The filing date of an application for patent filed under this section, 
except for a provisional application under paragraph (c) of this 
section or a continued prosecution application under paragraph (d) of 
this section, is the date on which a specification as prescribed by 35 
U.S.C. 112 containing a description pursuant to Sec.  1.71 and at least 
one claim pursuant to Sec.  1.75, and any drawing required by Sec.  
1.81(a) are filed in the Patent and Trademark Office. No new matter may 
be introduced into an application after its filing date. A continuing 
application, which may be a continuation, divisional, or continuation-
in-part application, may be filed under the conditions specified in 35 
U.S.C. 120, 121 or 365(c) and Sec.  1.78(a).
    (1) A continuation or divisional application that names as 
inventors the same or fewer than all of the inventors named in the 
prior application may be filed under this paragraph or paragraph (d) of 
this section.
    (2) A continuation-in-part application (which may disclose and 
claim subject matter not disclosed in the prior application) or a 
continuation or divisional application naming an inventor not named in 
the prior application must be filed under this paragraph.
    (c) * * *
    (4) A provisional application is not entitled to the right of 
priority under 35 U.S.C. 119 or 365(a) or Sec.  1.55, or to the benefit 
of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or Sec.  
1.78 of any other application. No claim for priority under 35 U.S.C. 
119(e) or Sec.  1.78(a)(4) may be made in a design application based on 
a provisional application. No request under Sec.  1.293 for a statutory 
invention registration may be filed in a provisional application. The 
requirements of Sec. Sec.  1.821 through 1.825 regarding application 
disclosures containing nucleotide and/or amino acid sequences are not 
mandatory for provisional applications.
* * * * *

0
6. Section 1.75 is amended by revising paragraphs (b) and (c) to read 
as follows:


Sec.  1.75  Claim(s).

* * * * *
    (b) More than one claim may be presented provided they differ 
substantially from each other and are not unduly multiplied.
    (c) One or more claims may be presented in dependent form, 
referring back to and further limiting another claim or claims in the 
same application. Any dependent claim which refers to more than one 
other claim (``multiple dependent claim'') shall refer to such other 
claims in the alternative only. A multiple dependent claim shall not

[[Page 52689]]

serve as a basis for any other multiple dependent claim. For fee 
calculation purposes under Sec.  1.16, a multiple dependent claim will 
be considered to be that number of claims to which direct reference is 
made therein. For fee calculation purposes also, any claim depending 
from a multiple dependent claim will be considered to be that number of 
claims to which direct reference is made in that multiple dependent 
claim. In addition to the other filing fees, any original application 
which is filed with, or is amended to include, multiple dependent 
claims must have paid therein the fee set forth in Sec.  1.16(j). 
Claims in dependent form shall be construed to include all the 
limitations of the claim incorporated by reference into the dependent 
claim. A multiple dependent claim shall be construed to incorporate by 
reference all the limitations of each of the particular claims in 
relation to which it is being considered.
* * * * *

0
7. Section 1.76 is amended by revising paragraph (b)(5) to read as 
follows:


Sec.  1.76  Application data sheet.

* * * * *
    (b) * * *
    (5) Domestic priority information. This information includes the 
application number, the filing date, the status (including patent 
number if available), and relationship of each application for which a 
benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). 
Providing this information in the application data sheet constitutes 
the specific reference required by 35 U.S.C. 119(e) or 120, and Sec.  
1.78(a)(2) or Sec.  1.78(a)(5), and need not otherwise be made part of 
the specification.
* * * * *

0
8. Section 1.78 is revised to read as follows:


Sec.  1.78  Claiming benefit of earlier filing date and cross-
references to other applications.

    (a)(1) A nonprovisional application or international application 
designating the United States of America may claim an invention 
disclosed in one or more prior-filed copending nonprovisional 
applications or international applications designating the United 
States of America. In order for an application to claim the benefit of 
a prior-filed copending nonprovisional application or international 
application designating the United States of America, each prior-filed 
application must name as an inventor at least one inventor named in the 
later-filed application and disclose the named inventor's invention 
claimed in at least one claim of the later-filed application in the 
manner provided by the first paragraph of 35 U.S.C. 112. In addition, 
each prior-filed application must be:
    (i) An international application entitled to a filing date in 
accordance with PCT Article 11 and designating the United States of 
America; or
    (ii) Entitled to a filing date as set forth in Sec.  1.53(b) or 
Sec.  1.53(d) and have paid therein the basic filing fee set forth in 
Sec.  1.16 within the pendency of the application.
    (2)(i) Except for a continued prosecution application filed under 
Sec.  1.53(d), any nonprovisional application or international 
application designating the United States of America claiming the 
benefit of one or more prior-filed copending nonprovisional 
applications or international applications designating the United 
States of America must contain or be amended to contain a reference to 
each such prior-filed application, identifying it by application number 
(consisting of the series code and serial number) or international 
application number and international filing date and indicating the 
relationship of the applications. Cross references to other related 
applications may be made when appropriate (see Sec.  1.14).
    (ii) This reference must be submitted during the pendency of the 
later-filed application. If the later-filed application is an 
application filed under 35 U.S.C. 111(a), this reference must also be 
submitted within the later of four months from the actual filing date 
of the later-filed application or sixteen months from the filing date 
of the prior-filed application. If the later-filed application is a 
nonprovisional application which entered the national stage from an 
international application after compliance with 35 U.S.C. 371, this 
reference must also be submitted within the later of four months from 
the date on which the national stage commenced under 35 U.S.C. 371(b) 
or (f) in the later-filed international application or sixteen months 
from the filing date of the prior-filed application. These time periods 
are not extendable. Except as provided in paragraph (a)(3) of this 
section, the failure to timely submit the reference required by 35 
U.S.C. 120 and paragraph (a)(2)(i) of this section is considered a 
waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such 
prior-filed application. The time periods in this paragraph do not 
apply if the later-filed application is:
    (A) An application for a design patent;
    (B) An application filed under 35 U.S.C. 111(a) before November 29, 
2000; or
    (C) A nonprovisional application which entered the national stage 
after compliance with 35 U.S.C. 371 from an international application 
filed under 35 U.S.C. 363 before November 29, 2000.
    (iii) If the later-filed application is a nonprovisional 
application, the reference required by this paragraph must be included 
in an application data sheet (Sec.  1.76), or the specification must 
contain or be amended to contain such reference in the first 
sentence(s) following the title.
    (iv) The request for a continued prosecution application under 
Sec.  1.53(d) is the specific reference required by 35 U.S.C. 120 to 
the prior-filed application. The identification of an application by 
application number under this section is the identification of every 
application assigned that application number necessary for a specific 
reference required by 35 U.S.C. 120 to every such application assigned 
that application number.
    (3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2) 
of this section is presented after the time period provided by 
paragraph (a)(2)(ii) of this section, the claim under 35 U.S.C. 120, 
121, or 365(c) for the benefit of a prior-filed copending 
nonprovisional application or international application designating the 
United States of America may be accepted if the reference identifying 
the prior-filed application by application number or international 
application number and international filing date was unintentionally 
delayed. A petition to accept an unintentionally delayed claim under 35 
U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed application 
must be accompanied by:
    (i) The reference required by 35 U.S.C. 120 and paragraph (a)(2) of 
this section to the prior-filed application, unless previously 
submitted;
    (ii) The surcharge set forth in Sec.  1.17(t); and
    (iii) A statement that the entire delay between the date the claim 
was due under paragraph (a)(2)(ii) of this section and the date the 
claim was filed was unintentional. The Director may require additional 
information where there is a question whether the delay was 
unintentional.
    (4) A nonprovisional application, other than for a design patent, 
or an international application designating the United States of 
America may claim an invention disclosed in one or more prior-filed 
provisional applications. In order for an application to claim the 
benefit of one or more prior-filed

[[Page 52690]]

provisional applications, each prior-filed provisional application must 
name as an inventor at least one inventor named in the later-filed 
application and disclose the named inventor's invention claimed in at 
least one claim of the later-filed application in the manner provided 
by the first paragraph of 35 U.S.C. 112. In addition, each prior-filed 
provisional application must be entitled to a filing date as set forth 
in Sec.  1.53(c), and the basic filing fee set forth in Sec.  1.16(d) 
must be paid within the time period set forth in Sec.  1.53(g).
    (5)(i) Any nonprovisional application or international application 
designating the United States of America claiming the benefit of one or 
more prior-filed provisional applications must contain or be amended to 
contain a reference to each such prior-filed provisional application, 
identifying it by the provisional application number (consisting of 
series code and serial number).
    (ii) This reference must be submitted during the pendency of the 
later-filed application. If the later-filed application is an 
application filed under 35 U.S.C. 111(a), this reference must also be 
submitted within the later of four months from the actual filing date 
of the later-filed application or sixteen months from the filing date 
of the prior-filed provisional application. If the later-filed 
application is a nonprovisional application which entered the national 
stage from an international application after compliance with 35 U.S.C. 
371, this reference must also be submitted within the later of four 
months from the date on which the national stage commenced under 35 
U.S.C. 371(b) or (f) in the later-filed international application or 
sixteen months from the filing date of the prior-filed provisional 
application. These time periods are not extendable. Except as provided 
in paragraph (a)(6) of this section, the failure to timely submit the 
reference is considered a waiver of any benefit under 35 U.S.C. 119(e) 
to such prior-filed provisional application. The time periods in this 
paragraph do not apply if the later-filed application is:
    (A) An application filed under 35 U.S.C. 111(a) before November 29, 
2000; or
    (B) A nonprovisional application which entered the national stage 
after compliance with 35 U.S.C. 371 from an international application 
filed under 35 U.S.C. 363 before November 29, 2000.
    (iii) If the later-filed application is a nonprovisional 
application, the reference required by this paragraph must be included 
in an application data sheet (Sec.  1.76), or the specification must 
contain or be amended to contain such reference in the first 
sentence(s) following the title.
    (iv) If the prior-filed provisional application was filed in a 
language other than English and both an English-language translation of 
the prior-filed provisional application and a statement that the 
translation is accurate were not previously filed in the prior-filed 
provisional application, applicant will be notified and given a period 
of time within which to file, in the prior-filed provisional 
application, the translation and the statement. If the notice is mailed 
in a pending nonprovisional application, a timely reply to such a 
notice must include the filing in the nonprovisional application of 
either a confirmation that the translation and statement were filed in 
the provisional application, or an amendment or Supplemental 
Application Data Sheet withdrawing the benefit claim, or the 
nonprovisional application will be abandoned. The translation and 
statement may be filed in the provisional application, even if the 
provisional application has become abandoned.
    (6) If the reference required by 35 U.S.C. 119(e) and paragraph 
(a)(5) of this section is presented in a nonprovisional application 
after the time period provided by paragraph (a)(5)(ii) of this section, 
the claim under 35 U.S.C. 119(e) for the benefit of a prior filed 
provisional application may be accepted during the pendency of the 
later-filed application if the reference identifying the prior-filed 
application by provisional application number was unintentionally 
delayed. A petition to accept an unintentionally delayed claim under 35 
U.S.C. 119(e) for the benefit of a prior-filed provisional application 
must be accompanied by:
    (i) The reference required by 35 U.S.C. 119(e) and paragraph (a)(5) 
of this section to the prior-filed provisional application, unless 
previously submitted;
    (ii) The surcharge set forth in Sec.  1.17(t); and
    (iii) A statement that the entire delay between the date the claim 
was due under paragraph (a)(5)(ii) of this section and the date the 
claim was filed was unintentional. The Director may require additional 
information where there is a question whether the delay was 
unintentional.
    (b) Where two or more applications filed by the same applicant 
contain conflicting claims, elimination of such claims from all but one 
application may be required in the absence of good and sufficient 
reason for their retention during pendency in more than one 
application.
    (c) If an application or a patent under reexamination and at least 
one other application naming different inventors are owned by the same 
person and contain conflicting claims, and there is no statement of 
record indicating that the claimed inventions were commonly owned or 
subject to an obligation of assignment to the same person at the time 
the later invention was made, the Office may require the assignee to 
state whether the claimed inventions were commonly owned or subject to 
an obligation of assignment to the same person at the time the later 
invention was made, and if not, indicate which named inventor is the 
prior inventor. Even if the claimed inventions were commonly owned, or 
subject to an obligation of assignment to the same person, at the time 
the later invention was made, the conflicting claims may be rejected 
under the doctrine of double patenting in view of such commonly owned 
or assigned applications or patents under reexamination.

0
9. Section 1.104 is amended by revising paragraphs (a)(1) and (b) to 
read as follows:


Sec.  1.104  Nature of examination.

    (a) Examiner's action. (1) On taking up an application for 
examination or a patent in a reexamination proceeding, the examiner 
shall make a thorough study thereof and shall make a thorough 
investigation of the available prior art relating to the subject matter 
of the claimed invention. The examination shall be complete with 
respect both to compliance of the application or patent under 
reexamination with the applicable statutes and rules and to the 
patentability of the invention as claimed, as well as with respect to 
matters of form, unless otherwise indicated.
* * * * *
    (b) Completeness of examiner's action. The examiner's action will 
be complete as to all matters, except that in appropriate 
circumstances, such as misjoinder of invention, fundamental defects in 
the application, and the like, the action of the examiner may be 
limited to such matters before further action is made. However, matters 
of form need not be raised by the examiner until a claim is found 
allowable.
* * * * *


Sec.  1.105  [Amended]

0
10. Section 1.105 is amended by removing paragraph (a)(1)(ix).

0
11. Section 1.110 is revised to read as follows:

[[Page 52691]]

Sec.  1.110  Inventorship and date of invention of the subject matter 
of individual claims.

    When more than one inventor is named in an application or patent, 
the Patent and Trademark Office, when necessary for purposes of an 
Office proceeding, may require an applicant, patentee, or owner to 
identify the inventive entity of the subject matter of each claim in 
the application or patent. Where appropriate, the invention dates of 
the subject matter of each claim and the ownership of the subject 
matter on the date of invention may be required of the applicant, 
patentee or owner. See also Sec. Sec.  1.78(c) and 1.130.

0
12. Section 1.114 is amended by removing paragraphs (f), (g), and (h) 
and by revising paragraphs (a) and (d) to read as follows:


Sec.  1.114  Request for continued examination.

    (a) If prosecution in an application is closed, an applicant may 
request continued examination of the application by filing a submission 
and the fee set forth in Sec.  1.17(e) prior to the earliest of:
    (1) Payment of the issue fee, unless a petition under Sec.  1.313 
is granted;
    (2) Abandonment of the application; or
    (3) The filing of a notice of appeal to the U.S. Court of Appeals 
for the Federal Circuit under 35 U.S.C. 141, or the commencement of a 
civil action under 35 U.S.C. 145 or 146, unless the appeal or civil 
action is terminated.
* * * * *
    (d) If an applicant timely files a submission and fee set forth in 
Sec.  1.17(e), the Office will withdraw the finality of any Office 
action and the submission will be entered and considered. If an 
applicant files a request for continued examination under this section 
after appeal, but prior to a decision on the appeal, it will be treated 
as a request to withdraw the appeal and to reopen prosecution of the 
application before the examiner. An appeal brief (Sec.  41.37 of this 
title) or a reply brief (Sec.  41.41 of this title), or related papers, 
will not be considered a submission under this section.
* * * * *


Sec.  1.117  [Removed and Reserved]

0
13. Section 1.117 is removed and reserved.

0
14. Section 1.136 is amended by revising paragraph (a)(1) to read as 
follows:


Sec.  1.136  Extensions of time.

    (a)(1) If an applicant is required to reply within a nonstatutory 
or shortened statutory time period, applicant may extend the time 
period for reply up to the earlier of the expiration of any maximum 
period set by statute or five months after the time period set for 
reply, if a petition for an extension of time and the fee set in Sec.  
1.17(a) are filed, unless:
    (i) Applicant is notified otherwise in an Office action;
    (ii) The reply is a reply brief submitted pursuant to Sec.  41.41 
of this title;
    (iii) The reply is a request for an oral hearing submitted pursuant 
to Sec.  41.47(a) of this title;
    (iv) The reply is to a decision by the Board of Patent Appeals and 
Interferences pursuant to Sec.  1.304 or to Sec.  41.50 or Sec.  41.52 
of this title; or
    (v) The application is involved in a contested case (Sec.  
41.101(a) of this title).
* * * * *

0
15. Section 1.142 is amended by removing paragraph (c) and by revising 
paragraph (a) to read as follows:


Sec.  1.142  Requirement for restriction.

    (a) If two or more independent and distinct inventions are claimed 
in a single application, the examiner in an Office action will require 
the applicant in the reply to that action to elect an invention to 
which the claims will be restricted, this official action being called 
a requirement for restriction (also known as a requirement for 
division). Such requirement will normally be made before any action on 
the merits; however, it may be made at any time before final action.
* * * * *

0
16. Section 1.145 is revised to read as follows:


Sec.  1.145  Subsequent presentation of claims for different invention.

    If, after an Office action on an application, the applicant 
presents claims directed to an invention distinct from and independent 
of the invention previously claimed, the applicant will be required to 
restrict the claims to the invention previously claimed if the 
amendment is entered, subject to reconsideration and review as provided 
in Sec. Sec.  1.143 and 1.144.


Sec.  1.265  [Removed]

0
17. Section 1.265 is removed.

0
18. Section 1.495 is amended by revising paragraph (g) to read as 
follows:


Sec.  1.495  Entering the national stage in the United States of 
America.

* * * * *
    (g) The documents and fees submitted under paragraphs (b) and (c) 
of this section must be clearly identified as a submission to enter the 
national stage under 35 U.S.C. 371. Otherwise, the submission will be 
considered as being made under 35 U.S.C. 111(a).
* * * * *


Sec.  1.704  [Amended]

0
19. Section 1.704 is amended by removing existing paragraph (c)(11) and 
redesignating paragraph (c)(12) as paragraph (c)(11).

    Dated: October 7, 2009.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E9-24667 Filed 10-13-09; 8:45 am]
BILLING CODE 3510-16-P