[Federal Register Volume 77, Number 144 (Thursday, July 26, 2012)]
[Proposed Rules]
[Pages 43742-43759]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-18121]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2012-0015]
RIN 0651-AC77


Changes To Implement the First Inventor To File Provisions of the 
Leahy-Smith America Invents Act

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The Leahy-Smith America Invents Act (AIA) amends the patent 
laws pertaining to the conditions of patentability to convert the 
United States patent system from a ``first to invent'' system to a 
``first inventor to file'' system; treats United States patents and 
United States patent application publications as prior art as of their 
earliest effective United States, foreign, or international filing 
date; eliminates the requirement that a prior public use or sale be 
``in this country'' to be a prior art activity; and treats commonly 
owned or joint research agreement patents and patent application 
publications as being by the same inventive entity for purposes of 
novelty, as well as nonobviousness. The AIA also repeals the provisions 
pertaining to statutory invention registrations. The current rules of 
practice in patent cases have a number of provisions based on the 
conditions of patentability of a ``first to invent'' patent system. The 
United States Patent and Trademark Office (Office) is proposing to 
amend the rules of practice in patent cases to implement the changes to 
the conditions of patentability in the AIA, and to eliminate the 
provisions pertaining to statutory invention registrations.

DATES: Comment Deadline Date: Written comments must be received on or 
before October 5, 2012.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: [email protected]. Comments may also be 
submitted by postal mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, 
marked to the attention of Susy Tsang-Foster, Legal Advisor, Office of 
Patent Legal Administration.
    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.
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by electronic mail message over the 
Internet because sharing comments with the public is more easily 
accomplished. Electronic comments are preferred to be submitted in 
plain text, but also may be submitted in ADOBE[supreg] portable 
document format or MICROSOFT WORD[supreg] format. Comments not 
submitted electronically should be submitted on paper in a format that 
facilitates convenient digital scanning into ADOBE[supreg] portable 
document format.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, currently located in Madison East, 
Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also 
will be available for viewing via the Office's Internet Web site 
(http://www.uspto.gov). Because comments will be made available for 
public inspection, information that the submitter does not desire to 
make public, such as an address or phone number, should not be included 
in the comments.

FOR FURTHER INFORMATION CONTACT: Susy Tsang-Foster, Legal Advisor 
((571) 272-7711), Pinchus M. Laufer, Senior Legal Advisor ((571) 272-
7726), or Eugenia A. Jones, Senior Legal Advisor ((571) 272-7727), 
Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy.

SUPPLEMENTARY INFORMATION: 
    Executive Summary: Purpose: Section 3 of the AIA, inter alia, 
amends the patent laws to: (1) Convert the United States patent system 
from a ``first to

[[Page 43743]]

invent'' system to a ``first inventor to file'' system; (2) treat U.S. 
patents and U.S. patent application publications as prior art as of 
their earliest effective filing date, regardless of whether the 
earliest effective filing date is based upon an application filed in 
the U.S. or in another country; (3) eliminate the requirement that a 
prior public use or sale be ``in this country'' to be a prior art 
activity; and (4) treat commonly owned or joint research agreement 
patents and patent application publications as being by the same 
inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C. 
103. These changes in section 3 of the AIA are effective on March 16, 
2013, but apply only to certain applications filed on or after March 
16, 2013. The Office sets out the conditions of patentability in 35 
U.S.C. 102 and 103 as interpreted by the case law in the Manual of 
Patent Examining Procedure (MPEP). See MPEP Sec. Sec.  2121 through 
2143 (8th ed. 2001) (Rev. 8, July 2010). The Office plans to issue 
guidelines and train the Patent Examining Corps on how the changes to 
35 U.S.C. 102 and 103 in section 3 of the AIA impact the provisions of 
the MPEP pertaining to 35 U.S.C. 102 and 103.
    The rules of practice for patent cases in title 37 of the Code of 
Federal Regulations (CFR) are currently drafted for examination under 
the ``first to invent'' system in effect prior to March 16, 2013. Thus, 
this notice proposes changes to the rules of practice in title 37, CFR, 
for consistency with, and to address the examination issues raised by, 
the changes in section 3 of the AIA.
    Summary of Major Provisions: The Office is specifically proposing 
to provide the following changes:
    The Office is proposing to add the definitions provided in the AIA 
to the rules of practice for the terms commonly used in the rules of 
practice.
    The Office is providing for the submission of affidavits or 
declarations showing that: (1) A disclosure upon which a claim 
rejection is based was by the inventor or joint inventor or by a party 
who obtained the subject matter disclosed directly or indirectly from 
the inventor or a joint inventor; or (2) there was a prior public 
disclosure by the inventor or a joint inventor or another who obtained 
the subject matter disclosed directly or indirectly from the inventor 
or a joint inventor.
    The Office is proposing to provide for the situation in which a 
U.S. patent or U.S. patent application publication has a prior art 
effect as of the filing date of a foreign priority application by 
requiring that the certified copy of the foreign application be filed 
within the later of four months from the actual filing date of the 
application or sixteen months from the filing date of the prior foreign 
application.
    The Office is eliminating the provisions directed to statutory 
invention registrations.
    Finally, the Office is proposing additional requirements for 
nonprovisional applications filed on or after March 16, 2013, that 
claim the benefit of the filing date of a foreign, provisional, or 
nonprovisional application filed prior to March 16, 2013. If such a 
nonprovisional application contains at any time a claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
the applicant must provide a statement to that effect within the later 
of four months from the actual filing date of the later-filed 
application, four months from the date of entry into the national stage 
in an international application, sixteen months from the filing date of 
the prior-filed application, or the date that a first claim to a 
claimed invention that has an effective filing date on or after March 
16, 2013, is presented in the application. In addition, if such a 
nonprovisional application does not contain a claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
but discloses subject matter not also disclosed in the foreign, 
provisional, or nonprovisional application, the applicant must provide 
a statement that the application includes subject matter not disclosed 
in the foreign, provisional, or nonprovisional application within the 
later of four months from the actual filing date of the later-filed 
application, four months from the date of entry into the national stage 
in an international application, or sixteen months from the filing date 
of the prior-filed application. This will permit the Office to readily 
determine whether the nonprovisional application is subject to the 
changes to 35 U.S.C. 102 and 103 in the AIA.
    Costs and Benefits: This rulemaking is not economically significant 
as that term is defined in Executive Order 12866 (Sept. 30, 1993).
    Specific Changes to title 35, United States Code: The AIA was 
enacted into law on September 16, 2011. See Public Law 112-29, 125 
Stat. 284 (2011). Section 3 of the AIA specifically amends 35 U.S.C. 
102 to provide in 35 U.S.C. 102(a) that a person shall be entitled to a 
patent unless: (1) The claimed invention was patented, described in a 
printed publication, or in public use, on sale, or otherwise available 
to the public before the effective filing date of the claimed 
invention; or (2) the claimed invention was described in a patent 
issued under 35 U.S.C. 151, or in an application for patent published 
or deemed published under 35 U.S.C. 122(b), in which the patent or 
application, as the case may be, names another inventor and was 
effectively filed before the effective filing date of the claimed 
invention. See 125 Stat. at 285-86. The publication of an international 
application designating the United States by the World Intellectual 
Property Organization (WIPO) is deemed a publication under 35 U.S.C. 
122(b) (except as provided in 35 U.S.C. 154(d)). See 35 U.S.C. 374.
    35 U.S.C. 102(b) as amended by section 3 of the AIA provides for 
exceptions to the provisions of 35 U.S.C. 102(a). The exceptions in 35 
U.S.C. 102(b)(1) provide that a disclosure made one year or less before 
the effective filing date of a claimed invention shall not be prior art 
to the claimed invention under 35 U.S.C. 102(a)(1) if: (1) The 
disclosure was made by the inventor or joint inventor or by another who 
obtained the subject matter disclosed directly or indirectly from the 
inventor or a joint inventor; or (2) the subject matter disclosed had, 
before such disclosure, been publicly disclosed by the inventor or a 
joint inventor or another who obtained the subject matter disclosed 
directly or indirectly from the inventor or a joint inventor. See 125 
Stat. at 286. The exceptions in 35 U.S.C. 102(b)(2) provide that a 
disclosure shall not be prior art to a claimed invention under 35 
U.S.C. 102(a)(2) if: (1) The subject matter disclosed was obtained 
directly or indirectly from the inventor or a joint inventor; (2) the 
subject matter disclosed had, before such subject matter was 
effectively filed under 35 U.S.C. 102(a)(2), been publicly disclosed by 
the inventor or a joint inventor or another who obtained the subject 
matter disclosed directly or indirectly from the inventor or a joint 
inventor; or (3) the subject matter disclosed and the claimed 
invention, not later than the effective filing date of the claimed 
invention, were owned by the same person or subject to an obligation of 
assignment to the same person. See id.
    35 U.S.C. 102(c) as amended by section 3 of the AIA provides for 
common ownership under joint research agreements. 35 U.S.C. 102(c) 
specifically provides that subject matter disclosed and a claimed 
invention shall be deemed to have been owned by the same person or 
subject to an obligation of assignment to the same person in applying 
the provisions of 35 U.S.C. 102(b)(2)(C) if: (1) The subject matter 
disclosed was developed and the claimed invention was made by, or on 
behalf of, one or more parties to a joint

[[Page 43744]]

research agreement that was in effect on or before the effective filing 
date of the claimed invention; (2) the claimed invention was made as a 
result of activities undertaken within the scope of the joint research 
agreement; and (3) the application for patent for the claimed invention 
discloses or is amended to disclose the names of the parties to the 
joint research agreement. See id. The AIA also provides that the 
enactment of 35 U.S.C. 102(c) is done with the same intent to promote 
joint research activities that was expressed, including in the 
legislative history, through the enactment of the Cooperative Research 
and Technology Enhancement Act of 2004 (the ``CREATE Act''; Pub. L. 
108-453, 118 Stat. 3596 (2004)), and that the Office shall administer 
35 U.S.C. 102(c) in a manner consistent with the legislative history of 
the CREATE Act that was relevant to its administration. See 125 Stat. 
at 287.
    35 U.S.C. 102(d) as amended by section 3 of the AIA provides a 
definition for ``effectively filed'' for purposes of determining 
whether a patent or application for patent is prior art to a claimed 
invention. 35 U.S.C. 102(d) provides that for purposes of determining 
whether a patent or application for patent is prior art to a claimed 
invention under 35 U.S.C. 102(a)(2), such patent or application shall 
be considered to have been effectively filed, with respect to any 
subject matter described in the patent or application on the earliest 
of: (1) The actual filing date of the patent or the application for 
patent; or (2) if the patent or application for patent is entitled to 
claim a right of priority or the benefit of an earlier filing date 
under 35 U.S.C. 119, 120, 121, or 365 based upon one or more prior 
filed applications for patent, the filing date of the earliest such 
application that describes the subject matter. See 125 Stat. at 286-87.
    The AIA provides a number of definitions for terms used in title 35 
of the United States Code. See 125 Stat. at 285. The term ``inventor'' 
means the individual or, if a joint invention, the individuals 
collectively who invented or discovered the subject matter of the 
invention, and the terms ``joint inventor'' and ``coinventor'' mean any 
one of the individuals who invented or discovered the subject matter of 
a joint invention. 35 U.S.C. 100(f) and (g). The term ``joint research 
agreement'' means a written contract, grant, or cooperative agreement 
entered into by two or more persons or entities for the performance of 
experimental, developmental, or research work in the field of the 
claimed invention. 35 U.S.C. 100(h). The term ``effective filing date'' 
for a claimed invention in a patent or application for patent (other 
than a reissue application or a reissued patent) means the earliest of: 
(1) The actual filing date of the patent or the application for the 
patent containing a claim to the invention; or (2) the filing date of 
the earliest application for which the patent or application is 
entitled, as to such invention, to a right of priority or the benefit 
of an earlier filing date under 35 U.S.C. 119, 120, 121, or 365. 35 
U.S.C. 100(i)(1). The ``effective filing date'' for a claimed invention 
in a reissued patent or an application for reissue shall be determined 
by deeming the claim to the invention to have been contained in the 
patent for which reissue was sought. 35 U.S.C. 100(i)(2). The term 
``claimed invention'' means the subject matter defined by a claim in a 
patent or an application for a patent. 35 U.S.C. 100(j).
    The AIA amends 35 U.S.C. 103 to provide that a patent for a claimed 
invention may not be obtained, notwithstanding that the claimed 
invention is not identically disclosed as set forth in 35 U.S.C. 102, 
if the differences between the claimed invention and the prior art are 
such that the claimed invention as a whole would have been obvious 
before the effective filing date of the claimed invention to a person 
having ordinary skill in the art to which the claimed invention 
pertains. See 125 Stat. at 287. 35 U.S.C. 103 also provides that 
patentability shall not be negated by the manner in which the invention 
was made. See id.
    The AIA eliminates the provisions in 35 U.S.C. 135 for patent 
interference proceedings and replaces them with patent derivation 
proceedings. See 125 Stat. at 289-90. The Office is implementing the 
patent derivation proceedings provided for in the AIA in a separate 
rulemaking (RIN 0651-AC74). The AIA also replaces the interference 
provisions of 35 U.S.C. 291 with derivation provisions. See 125 Stat. 
at 288-89.
    The AIA repeals the provisions of 35 U.S.C. 104 (special provisions 
for inventions made abroad) and 157 (statutory invention 
registrations). See 125 Stat. at 287. The AIA also makes conforming 
changes to 35 U.S.C. 111, 119, 120, 134, 145, 146, 154, 172, 202(c), 
282, 287, 305, 363, 374, and 375(a). See 125 Stat. at 287-88, and 90-
91.
    The AIA provides that the changes (other than the repeal of 35 
U.S.C. 157) in section 3 which are being implemented in this rulemaking 
take effect on March 16, 2013, and apply to any application for patent, 
and to any patent issuing thereon, that contains, or contained at any 
time: (1) A claim to a claimed invention that has an effective filing 
date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013; 
or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any 
patent or application that contains, or contained at any time, such a 
claim. See 125 Stat. at 293.
    The AIA also provides that the provisions of 35 U.S.C. 102(g), 135, 
and 291 in effect on March 15, 2013, shall apply to each claim of an 
application for patent, and any patent issued thereon, for which the 
amendments made by this section also apply, if such application or 
patent contains, or contained at any time: (1) A claim to an invention 
having an effective filing date as defined in 35 U.S.C. 100(i) that 
occurs before March 16, 2013; or (2) a specific reference under 35 
U.S.C. 120, 121, or 365(c) to any patent or application that contains, 
or contained at any time, such a claim. See id.
    Discussion of Specific Rules: The following is a discussion of the 
amendments to Title 37 of the Code of Federal Regulations, part 1, that 
are being proposed in this notice of proposed rulemaking.
    Section 1.9: Section 1.9 is proposed to be amended to add the 
definition of the terms used throughout the rules.
    Section 1.9(d)(1) as proposed provides that the term ``inventor'' 
or ``inventorship'' as used in this chapter means the individual or, if 
a joint invention, the individuals collectively who invented or 
discovered the subject matter of the invention. See 35 U.S.C. 100(f). 
While the term ``inventorship'' is not used in 35 U.S.C. 100(f), the 
term ``inventorship'' is currently used throughout the rules of 
practice to mean the individual or, if a joint invention, the 
individuals collectively who invented or discovered the subject matter 
of the invention. Section 1.9(d)(2) provides that the term ``joint 
inventor'' or ``coinventor'' as used in this chapter means any one of 
the individuals who invented or discovered the subject matter of a 
joint invention. See 35 U.S.C. 100(g).
    Section 1.9(e) as proposed provides that the term ``joint research 
agreement'' as used in this chapter means a written contract, grant, or 
cooperative agreement entered into by two or more persons or entities 
for the performance of experimental, developmental, or research work in 
the field of the claimed invention. See 35 U.S.C. 100(h).
    Section 1.9(f) as proposed provides that the term ``claimed 
invention'' as used in this chapter means the subject matter defined by 
a claim in a patent or

[[Page 43745]]

an application for a patent. See 35 U.S.C. 100(j).
    Section 1.53: Section 1.53(j) is proposed to be amended to delete 
the phrase ``except as provided in 35 U.S.C. 102(e)'' to be consistent 
with the changes to 35 U.S.C. 102 in the AIA.
    Section 1.55: Section 1.55(a)(1) is proposed to be amended to 
include the requirement in 35 U.S.C. 119(a) that the nonprovisional 
application must be filed not later than twelve months after the date 
on which the foreign application was filed, and that this twelve-month 
period is subject to 35 U.S.C. 21(b) and Sec.  1.7(a). 35 U.S.C. 21(b) 
and Sec.  1.7(a) provide that when the day, or the last day, for taking 
any action (e.g., filing a nonprovisional application within twelve 
months of the date on which the foreign priority application was filed) 
or paying any fee in the Office falls on Saturday, Sunday, or a Federal 
holiday within the District of Columbia, the action may be taken, or 
fee paid, on the next succeeding secular or business day.
    Section 1.55(a)(2) is proposed to be amended to include provisions 
in current Sec.  1.55(a)(1)(i) and to require that the claim for 
priority and a certified copy of the foreign application be filed in an 
application under 35 U.S.C. 111(a) (other than a design application) 
within the later of four months from the actual filing date of the 
application or sixteen months from the filing date of the prior foreign 
application. Section 1.55(a)(2) as proposed also requires the claim for 
priority to be presented in an application data sheet. See Changes To 
Implement the Inventor's Oath or Declaration Provisions of the Leahy-
Smith America Invents Act, 77 FR 982, 989-90 (Jan. 6, 2012).
    Section 1.55(a)(3) is proposed to be amended to include provisions 
in current Sec.  1.55(a)(1)(ii) and to require that the claim for 
priority be made and a certified copy of the foreign application filed 
within the time limit set forth in the Patent Cooperation Treaty (PCT) 
and the Regulations under the PCT in an application that entered the 
national stage from an international application after compliance with 
35 U.S.C. 371. Since patent application publications will have a prior 
art effect as of the earliest priority date (for subject matter 
disclosed in the priority application) with respect to applications 
subject to 35 U.S.C. 102, as amended by the AIA, the Office needs to 
ensure that it has a copy of the priority application by the time of 
publication. The proposed time period of four months from the actual 
filing date of the application or sixteen months from the filing date 
of the prior foreign application is consistent with the international 
norm for when the certified copy of the foreign application needs to be 
filed in an application. See PCT Rule 17.1(a).
    Section 1.55(a)(4) is proposed to be amended to require that if a 
nonprovisional application filed on or after March 16, 2013, claims the 
benefit of the filing date of a foreign application filed prior to 
March 16, 2013, and also contains, or contained at any time, a claim to 
a claimed invention that has an effective filing date on or after March 
16, 2013, the applicant must provide a statement to that effect within 
the later of four months from the actual filing date of the 
application, four months from the date of entry into the national stage 
as set forth in Sec.  1.491 in an international application, sixteen 
months from the filing date of the prior foreign application, or the 
date that a first claim to a claimed invention that has an effective 
filing date on or after March 16, 2013, is presented in the 
application. Section 1.55(a)(4) is also proposed to be amended to 
require that if a nonprovisional application filed on or after March 
16, 2013, claims the benefit of the filing date of a foreign 
application filed prior to March 16, 2013, does not contain a claim to 
a claimed invention that has an effective filing date on or after March 
16, 2013, but discloses subject matter not also disclosed in the 
foreign application, the applicant must provide a statement to that 
effect within the later of four months from the actual filing date of 
the later-filed application, four months from the date of entry into 
the national stage as set forth in Sec.  1.491 in an international 
application, or sixteen months from the filing date of the prior 
foreign application.
    Proposed Sec.  1.55(a)(4) would not require that the applicant 
identify how many or which claims in the nonprovisional application 
have an effective filing date on or after March 16, 2013, or that the 
applicant identify the subject matter in the nonprovisional application 
not also disclosed in the foreign application. Proposed Sec.  
1.55(a)(4) would require only that the applicant state that there is a 
claim in the nonprovisional application that has an effective filing 
date on or after March 16, 2013 (e.g., ``upon reasonable belief, this 
application contains at least one claim that has an effective filing 
date on or after March 16, 2013''), or the applicant state that there 
is subject matter in the nonprovisional application not also disclosed 
in the foreign application (e.g., ``upon reasonable belief, this 
application contains subject matter not also disclosed in the foreign 
application).
    If an applicant fails to timely provide such a statement and then 
later indicates that the nonprovisional application contains a claim 
having an effective filing date on or after March 16, 2013, or subject 
matter not also disclosed in the foreign application, the Office may 
issue a requirement for information under Sec.  1.105 requiring the 
applicant to identify where (by page and line or paragraph number) 
there is written description support under AIA 35 U.S.C. 112(a) in the 
foreign application for the remaining claims in the nonprovisional 
application. Likewise, if the applicant later seeks to retract a 
previous statement that the nonprovisional application contains a claim 
having an effective filing date on or after March 16, 2013, or subject 
matter not also disclosed in the foreign application, the Office may 
issue a requirement for information under Sec.  1.105 requiring the 
applicant to identify where (by page and line or paragraph number) 
there is written description support under AIA 35 U.S.C. 112(a) in the 
foreign application for each claim in the nonprovisional application.
    This information is needed to assist the Office in determining 
whether the application is subject to 35 U.S.C. 102 and 103 as amended 
by the AIA or 35 U.S.C. 102 and 103 in effect on March 15, 2013. If the 
Office must determine on its own the effective filing date of every 
claim ever presented in an application filed on or after March 16, 
2013, that claims priority to or the benefit of a foreign application 
filed prior to March 16, 2013, examination costs will significantly 
increase. This proposed provision is tailored to the transition to 35 
U.S.C. 102 and 103 under the AIA. Thus, for a nonprovisional 
application filed on or after March 16, 2013, that claims the benefit 
of the filing date of a foreign application, the applicant would not be 
required to provide any statement if: (1) The nonprovisional 
application discloses only subject matter also disclosed in a foreign 
application filed prior to March 16, 2013; or (2) the nonprovisional 
application claims only the benefit of the filing date of a foreign 
application filed on or after March 16, 2013.
    Section 1.55(c) as proposed contains the provisions regarding 
waiver of claims for priority and acceptance of unintentionally delayed 
claims. Section 1.55(c) is proposed to be amended to reference claims 
for priority under 35 U.S.C. 119(a) through (d) or (f), or 365(a) or 
365(b). Section 1.55(c) is proposed to

[[Page 43746]]

be amended to require a petition to accept a delayed claim to be 
accompanied by a certified copy of the foreign application, unless 
previously submitted. In view of the time period for submitting a 
certified copy in proposed Sec.  1.55(a), a petition to accept a 
delayed claim after this time period needs to be accompanied by a 
certified copy (unless previously submitted).
    Section 1.55(d) as proposed contains provisions for the priority 
document exchange program. See Changes to Implement Priority Document 
Exchange Between Intellectual Property Offices, 72 FR 1664 (Jan. 16, 
2007). Sections 1.55(d)(1)(i) and (d)(1)(ii) contain the provisions of 
current Sec. Sec.  1.55(d)(1)(i) and (d)(1)(ii), except to also require 
the claim for priority to be presented in an application data sheet and 
that the copy of the foreign application is received by the Office 
within the period set forth in Sec.  1.55(a) or by such later time as 
may be set by the Office. Section 1.55(d)(1)(iii) is proposed to be 
amended to remove the sentence that the request should be made within 
the later of four months from the filing date of the application or 
sixteen months from the filing date of the foreign application. This 
sentence is no longer needed since proposed Sec.  1.55(a) requires the 
certified copy to be filed within the later of four months from the 
actual filing date of the application or sixteen months from the filing 
date of the prior foreign application.
    Section 1.55(e) as proposed contains the provisions of current 
Sec.  1.55(a)(2)-(4). In view of the time period in proposed Sec.  
1.55(a), the provisions in current Sec.  1.55(a)(2) and (a)(3) are less 
relevant, but these provisions are still needed to cover situations 
where the Office is examining an application within four months from 
the filing date of the application such as an application examined 
under the Office's Track I prioritized examination program. See Changes 
to Implement the Prioritized Examination Track (Track I) of the 
Enhanced Examination Timing Control Procedures Under the Leahy-Smith 
America Invents Act, 76 FR 59050 (Sept. 23, 2011), and Changes to 
Implement the Prioritized Examination for Requests for Continued 
Examination, 76 FR 78566 (Dec. 19, 2011). Furthermore, even if a 
petition to accept a delayed claim for priority is filed under Sec.  
1.55(c), the claim for priority and the certified copy of the foreign 
application must still be filed within the pendency of the application 
and before the patent is granted. Thus, Sec.  1.55(e)(1) as proposed 
contains the provisions of current Sec.  1.55(a)(2). In addition, Sec.  
1.55(e)(2) as proposed continues to permit the Office to require the 
claim for priority and the certified copy to be submitted earlier than 
the time period provided in Sec.  1.55(a).
    Furthermore, Sec.  1.55(e)(3) as proposed continues to permit the 
Office to require an English language translation of a non-English 
language foreign application. Finally, Sec.  1.55(e)(2)(i) and 
(e)(3)(i) as proposed also reference a derivation proceeding (in 
addition to an interference) as a situation in which the Office may 
require the claim for priority and the certified copy, as well as an 
English language translation, of the foreign application to be 
submitted earlier.
    Section 1.55(f) is proposed to be added to provide that the time 
periods set forth in Sec.  1.55 are not extendable. The time periods 
set forth in Sec.  1.55 are currently not extendable. This provision 
simply avoids the need to separate that the time period is not 
extendable with respect to each time period set in in Sec.  1.55.
    Section 1.71: Section 1.71(g)(1) is proposed to be amended to 
change 35 U.S.C. 103(c)(2)(C) to 35 U.S.C. 102(c)(3) to be consistent 
with the changes to 35 U.S.C. 102 and 103 in the AIA, which are 
described previously in the summary of major changes.
    Section 1.77: Section 1.77(b) is proposed to be amended to provide 
for any statement regarding prior disclosures by the inventor or a 
joint inventor. Section 1.77(a) sets out a preferred arrangement for a 
patent application, and Sec.  1.77(b) sets out the preferred 
arrangement of the specification of a patent application. If the 
information provided by the applicant in this section of the 
specification is sufficient to comply with what is required in a Sec.  
1.130 affidavit or declaration regarding a prior disclosure (discussed 
below), then applicant would not need to provide anything further. If, 
however, the information provided by the applicant in this section of 
the specification is not sufficient to comply with what is required in 
such a Sec.  1.130 affidavit or declaration, then the applicant would 
need to submit the required information in an affidavit or declaration 
under Sec.  1.130. An applicant is not required to use the format 
specified in Sec.  1.77 or identify any prior disclosures by the 
inventor or a joint inventor (unless necessary to overcome a 
rejection), but identifying any prior disclosures by the inventor or a 
joint inventor may save applicants (and the Office) the costs related 
to an Office action and reply and expedite examination of the 
application.
    Section 1.78: Section 1.78 is proposed to be reorganized as 
follows: (1) Sec.  1.78(a) as proposed contains provisions relating to 
claims under 35 U.S.C. 119(e) for the benefit of a prior-filed 
provisional application; (2) Sec.  1.78(b) as proposed contains 
provisions relating to delayed claims under 35 U.S.C. 119(e) for the 
benefit of a prior-filed provisional application; (3) Sec.  1.78(c) as 
proposed contains provisions relating to claims under 35 U.S.C. 120, 
121, or 365(c) for the benefit of a prior-filed nonprovisional or 
international application; (4) Sec.  1.78(d) as proposed contains 
provisions relating to delayed claims under 35 U.S.C. 120, 121, or 
365(c) for the benefit of a prior-filed nonprovisional or international 
application; (5) Sec.  1.78(e) as proposed contains provisions relating 
to applications containing conflicting claims; (6) Sec.  1.78(f) as 
proposed contains provisions relating to applications or patents under 
reexamination naming different inventors and containing patentably 
indistinct claims; and (7) Sec.  1.78(g) as proposed provides that the 
time periods set forth in Sec.  1.78 are not extendable.
    Section 1.78(a) as proposed addresses claims under 35 U.S.C. 119(e) 
for the benefit of a prior-filed provisional application. Under 35 
U.S.C. 119(e)(1), a provisional application must disclose the invention 
claimed in at least one claim of the later-filed application in the 
manner provided by 35 U.S.C. 112(a) (except for the requirement to 
disclose the best mode) for the later-filed application to receive the 
benefit of the filing date of the provisional application. See New 
Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. 
Cir. 2002) (for a nonprovisional application to actually receive the 
benefit of the filing date of the provisional application, ``the 
specification of the provisional [application] must `contain a written 
description of the invention and the manner and process of making and 
using it, in such full, clear, concise, and exact terms,' 35 U.S.C. 112 
] 1, to enable an ordinarily skilled artisan to practice the invention 
claimed in the nonprovisional application''). Section 1.78(a), however, 
as proposed does not also state (as does current Sec.  1.78(a)(4)) that 
the provisional application must disclose the invention claimed in at 
least one claim of the later-filed application in the manner provided 
by 35 U.S.C. 112(a) (except for the requirement to disclose the best 
mode) because Sec.  1.78 pertains to claims to the benefit of a prior-
filed application and the AIA draws a distinction between being 
entitled to the benefit of a prior-filed application and being entitled 
to

[[Page 43747]]

claim the benefit of a prior-filed application. See 157 Cong. Rec. 
S1370 (2011) (explaining the distinction between being entitled to 
actual priority or benefit for purposes of 35 U.S.C. 100(i) and being 
entitled only to claim priority or benefit for purposes of 35 U.S.C. 
102(d)). Nevertheless, the prior-filed application must disclose an 
invention in the manner provided by 35 U.S.C. 112(a) (except for the 
requirement to disclose the best mode) for the later-filed application 
to receive the benefit of the filing date of the prior-filed 
application under 35 U.S.C. 119(e) (or 35 U.S.C. 120) as to such 
invention, and the prior-filed application must describe the subject 
matter for the later-filed application to be considered effectively 
filed under 35 U.S.C. 102(d) on the filing date of the prior-filed 
application with respect to that subject matter.
    Section 1.78(a)(1) as proposed provides that the nonprovisional 
application or international application designating the United States 
of America must be filed not later than twelve months after the date on 
which the provisional application was filed, and that this twelve-month 
period is subject to 35 U.S.C. 21(b) and 1.7(a). As discussed 
previously, 35 U.S.C. 21(b) and 1.7(a) provide that when the day, or 
the last day, for taking any action (e.g., filing a nonprovisional 
application within twelve months of the date on which the provisional 
application was filed) or paying any fee in the Office falls on 
Saturday, Sunday, or a Federal holiday within the District of Columbia, 
the action may be taken, or fee paid, on the next succeeding secular or 
business day.
    Section 1.78(a)(3) is proposed to be amended to require that if a 
nonprovisional application filed on or after March 16, 2013, claims the 
benefit of the filing date of a provisional application filed prior to 
March 16, 2013, and also contains, or contained at any time, a claim to 
a claimed invention that has an effective filing date on or after March 
16, 2013, the applicant must provide a statement to that effect within 
the later of four months from the actual filing date of the later-filed 
application, four months from the date of entry into the national stage 
as set forth in Sec.  1.491 in an international application, sixteen 
months from the filing date of the prior-filed provisional application, 
or the date that a first claim to a claimed invention that has an 
effective filing date on or after March 16, 2013, is presented in the 
application. Section 1.78(a)(3) is also proposed to be amended to 
require that if a nonprovisional application filed on or after March 
16, 2013, claims the benefit of the filing date of a provisional 
application filed prior to March 16, 2013, does not contain a claim to 
a claimed invention that has an effective filing date on or after March 
16, 2013, but discloses subject matter not also disclosed in the 
provisional application, the applicant must provide a statement to that 
effect within the later of four months from the actual filing date of 
the later-filed application, four months from the date of entry into 
the national stage as set forth in Sec.  1.491 in an international 
application, or sixteen months from the filing date of the prior-filed 
provisional application.
    Proposed Sec.  1.78(a)(3) would not require that the applicant 
identify how many or which claims in the nonprovisional application 
have an effective filing date on or after March 16, 2013, or that the 
applicant identify the subject matter in the nonprovisional application 
not also disclosed in the provisional application. Proposed Sec.  
1.78(a)(3) would require only that the applicant state that there is a 
claim in the nonprovisional application that has an effective filing 
date on or after March 16, 2013 (e.g., ``upon reasonable belief, this 
application contains at least one claim that has an effective filing 
date on or after March 16, 2013''), or the applicant state that there 
is subject matter in the nonprovisional application not also disclosed 
in the provisional application (e.g., ``upon reasonable belief, this 
application contains subject matter not also disclosed in provisional 
application No. XX/XXX,XXX'').
    If an applicant fails to timely provide such a statement and then 
later indicates that the nonprovisional application contains a claim 
having an effective filing date on or after March 16, 2013, or subject 
matter not also disclosed in the provisional application, the Office 
may issue a requirement for information under Sec.  1.105 requiring the 
applicant to identify where (by page and line or paragraph number) 
there is written description support under AIA 35 U.S.C. 112(a) in the 
provisional application for the remaining claims in the nonprovisional 
application. Likewise, if the applicant later seeks to retract a 
previous statement that the nonprovisional application contains a claim 
having an effective filing date on or after March 16, 2013, or subject 
matter not also disclosed in the provisional application, the Office 
may issue a requirement for information under Sec.  1.105 requiring the 
applicant to identify where (by page and line or paragraph number) 
there is written description support under AIA 35 U.S.C. 112(a) in the 
provisional application for each claim in the nonprovisional 
application.
    This information is needed to assist the Office in determining 
whether the application is subject to 35 U.S.C. 102 and 103 as amended 
by the AIA or 35 U.S.C. 102 and 103 in effect on March 15, 2013. As 
discussed previously, if the Office must determine on its own the 
effective filing date of every claim ever presented in an application 
filed on or after March 16, 2013, that claims priority to or the 
benefit of a provisional application filed prior to March 16, 2013, 
examination costs will significantly increase. This proposed provision 
is tailored to the transition to 35 U.S.C. 102 and 103 under the AIA. 
Thus, for a nonprovisional application filed on or after March 16, 
2013, that claims the benefit of the filing date of a provisional 
application, the applicant would not be required to provide any 
statement if: (1) The nonprovisional application discloses only subject 
matter also disclosed in a provisional application filed prior to March 
16, 2013; or (2) the nonprovisional application claims only the benefit 
of the filing date of a provisional application filed on or after March 
16, 2013.
    Sections 1.78(a) and (c) as proposed require the reference to each 
prior-filed application to be included in an application data sheet. 
See Changes To Implement the Inventor's Oath or Declaration Provisions 
of the Leahy-Smith America Invents Act, 77 FR 982, 993 (Jan. 6, 2012).
    Section 1.78(a) as proposed otherwise contains the provisions of 
current Sec.  1.78(a)(4) and (a)(5).
    Section 1.78(b) as proposed contains provisions relating to delayed 
claims under 35 U.S.C. 119(e) for the benefit of prior-filed 
provisional applications. Section 1.78(b) contains the provisions of 
current Sec.  1.78(a)(6).
    Section 1.78(c) as proposed contains provisions relating to claims 
under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed 
nonprovisional or international application. Section 1.78(c)(1) as 
proposed provides that each prior-filed application must name as the 
inventor or a joint inventor an inventor named in the later-filed 
application. In addition, each prior-filed application must either be: 
(1) An international application entitled to a filing date in 
accordance with PCT Article 11 and designating the United States of 
America; or (2) a nonprovisional application under 35 U.S.C. 111(a) 
that is entitled to a filing date as set forth in Sec.  1.53(b) or 
Sec.  1.53(d) for which the basic filing fee set forth in Sec.  1.16 
has been paid within the

[[Page 43748]]

pendency of the application (provisions from current Sec.  1.78(a)(1)).
    Section 1.78(c) as proposed does not contain a provision that the 
prior-filed application disclose the invention claimed in at least one 
claim of the later-filed application in the manner provided by 35 
U.S.C. 112(a). For a later-filed application to receive the benefit of 
the filing date of a prior-filed application, 35 U.S.C. 120 requires 
that the prior-filed application disclose the invention claimed in at 
least one claim of the later-filed application in the manner provided 
by 35 U.S.C. 112(a) (except for the requirement to disclose the best 
mode). As discussed previously, Sec.  1.78 as proposed pertains to 
claims to the benefit of a prior-filed application and the AIA draws a 
distinction between being entitled to the benefit of a prior-filed 
application and being entitled to claim the benefit of a prior-filed 
application.
    Section 1.78(c)(2) is proposed to be amended to clarify that 
identifying the relationship of the applications means identifying 
whether the later-filed application is a continuation, divisional, or 
continuation-in-part of the prior-filed nonprovisional application or 
international application. See MPEP Sec.  201.11.
    Section 1.78(c)(2) is also proposed to be amended to require that 
if a nonprovisional application filed on or after March 16, 2013, 
claims the benefit of the filing date of a nonprovisional application 
filed prior to March 16, 2013, and also contains, or contained at any 
time, a claim to a claimed invention that has an effective filing date 
on or after March 16, 2013, the applicant must provide a statement to 
that effect within the later of four months from the actual filing date 
of the later-filed application, four months from the date of entry into 
the national stage as set forth in Sec.  1.491 in an international 
application, sixteen months from the filing date of the prior-filed 
nonprovisional application, or the date that a first claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
is presented in the application. Section 1.78(c)(2) is also proposed to 
be amended to require that if a nonprovisional application filed on or 
after March 16, 2013, claims the benefit of the filing date of a 
nonprovisional application filed prior to March 16, 2013, does not 
contain a claim to a claimed invention that has an effective filing 
date on or after March 16, 2013, but discloses subject matter not also 
disclosed in the prior-filed nonprovisional application, the applicant 
must provide a statement to that effect within the later of four months 
from the actual filing date of the later-filed application, four months 
from the date of entry into the national stage as set forth in Sec.  
1.491 in an international application, or sixteen months from the 
filing date of the prior-filed nonprovisional application.
    Proposed Sec.  1.78(c)(2) would not require that the applicant 
identify how many or which claims in the later-filed nonprovisional 
application have an effective filing date on or after March 16, 2013, 
or that the applicant identify the subject matter in the later-filed 
nonprovisional application not also disclosed in the prior-filed 
nonprovisional application. Proposed Sec.  1.78(c)(2) would require 
only that the applicant state that there is a claim in the later-filed 
nonprovisional application that has an effective filing date on or 
after March 16, 2013 (e.g., ``upon reasonable belief, this application 
contains at least one claim that has an effective filing date on or 
after March 16, 2013''), or the applicant state that there is subject 
matter in the later-filed nonprovisional application not also disclosed 
in the prior-filed nonprovisional application (e.g., ``upon reasonable 
belief, this application contains subject matter not also disclosed in 
application No. XX/XXX,XXX'').
    If an applicant fails to timely provide such a statement and then 
later indicates that the later-filed nonprovisional application 
contains a claim having an effective filing date on or after March 16, 
2013, or subject matter not also disclosed in the prior-filed 
nonprovisional application, the Office may issue a requirement for 
information under Sec.  1.105 requiring the applicant to identify where 
(by page and line or paragraph number) there is written description 
support under AIA 35 U.S.C. 112(a) in the prior-filed nonprovisional 
application for the remaining claims in the later-filed nonprovisional 
application. Likewise, if the applicant later seeks to retract a 
previous statement that the later-filed nonprovisional application 
contains a claim having an effective filing date on or after March 16, 
2013, or subject matter not also disclosed in the prior-filed 
nonprovisional application, the Office may issue a requirement for 
information under Sec.  1.105 requiring the applicant to identify where 
(by page and line or paragraph number) there is written description 
support under AIA 35 U.S.C. 112(a) in the prior-filed nonprovisional 
application for each claim in the later-filed nonprovisional 
application.
    This information is needed to assist the Office in determining 
whether the application is subject to 35 U.S.C. 102 and 103 as amended 
by the AIA or 35 U.S.C. 102 and 103 in effect on March 15, 2013. As 
discussed previously, if the Office must determine on its own the 
effective filing date of every claim ever presented in an application 
filed on or after March 16, 2013, that claims priority to or the 
benefit of a nonprovisional application filed prior to March 16, 2013, 
examination costs will significantly increase. This proposed provision 
is tailored to the transition to 35 U.S.C. 102 and 103 under the AIA. 
Thus, for a nonprovisional application filed on or after March 16, 
2013, that claims the benefit of the filing date of a nonprovisional 
application, the applicant would not be required to provide any 
statement if: (1) The nonprovisional application discloses only subject 
matter also disclosed in a prior-filed nonprovisional application filed 
prior to March 16, 2013; or (2) the nonprovisional application claims 
only the benefit of the filing date of a nonprovisional application 
filed on or after March 16, 2013.
    Sections 1.78(c)(3) through (c)(5) as proposed contain the 
provisions of current Sec.  1.78(a)(2). Section 1.78(c)(5) as proposed 
also provides that cross-references to applications for which a benefit 
is not claimed must not be included in an application data sheet (Sec.  
1.76(b)(5)). Including cross-references to applications for which a 
benefit is not claimed in the application data sheet may lead the 
Office to inadvertently schedule the application for publication under 
35 U.S.C. 122(b) and Sec.  1.211 et seq. on the basis of the cross-
referenced applications having the earliest filing date.
    Section 1.78(d) as proposed contains provisions relating to delayed 
claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of prior-
filed nonprovisional or international applications. Section 1.78(d) as 
proposed contains the provisions of current Sec.  1.78(a)(3).
    Section 1.78(e) as proposed contains the provisions of current 
Sec.  1.78(b) pertaining to applications containing conflicting claims.
    Section 1.78(f) as proposed addresses applications or patents under 
reexamination that name different inventors and contain patentably 
indistinct claims. The provisions are similar to the provisions of 
current Sec.  1.78(c), but the language has been amended to refer to 
``the effective filing date of the later claimed invention'' in place 
of ``at the time the later invention was made'' in view of the change 
to a first inventor to file system.

[[Page 43749]]

    Section 1.78(g) as proposed provides that the time periods set 
forth in Sec.  1.78 are not extendable.
    Sections 1.53 and 1.76 would be amended for consistency with the 
reorganization of Sec.  1.78.
    Section 1.104: Section 1.104(c)(4) is proposed to be amended to 
include the provisions that pertain to commonly owned or joint research 
agreement subject matter for applications subject to 35 U.S.C. 102 and 
103 as amended by the AIA. Specifically, Sec.  1.104(c)(4) as proposed 
implements the provisions of 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 
102(c) in the AIA. Thus, Sec.  1.104(c)(4) as proposed is applicable to 
applications that are subject to 35 U.S.C. 102 and 103 as amended by 
the AIA.
    Section 1.104(c)(4)(i) as proposed provides that subject matter 
that qualifies as prior art under 35 U.S.C. 102(a)(2) and a claimed 
invention will be treated as commonly owned for purposes of 35 U.S.C. 
102(b)(2)(C) if the applicant provides a statement that the prior art 
and the claimed invention, not later than the effective filing date of 
the claimed invention, were owned by the same person or subject to an 
obligation of assignment to the same person.
    Section 1.104(c)(4)(ii) as proposed addresses joint research 
agreements and provides that subject matter that qualifies as prior art 
under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as 
commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a 
joint research agreement under 35 U.S.C. 102(c) if: (1) The applicant 
provides a statement that the prior art was developed and the claimed 
invention was made by or on behalf of one or more parties to a joint 
research agreement, within the meaning of 35 U.S.C. 100(h) and Sec.  
1.9(e), that was in effect on or before the effective filing date of 
the claimed invention, and the claimed invention was made as a result 
of activities undertaken within the scope of the joint research 
agreement; and (2) the application for patent for the claimed invention 
discloses or is amended to disclose the names of the parties to the 
joint research agreement.
    Section 1.104(c)(5) is proposed to be amended to include the 
provisions that pertain to commonly owned or joint research agreement 
subject matter for applications subject to 35 U.S.C. 102 and 103 in 
effect prior to the effective date of section 3 of the AIA. Thus, Sec.  
1.104(c)(5) as proposed is applicable to applications that are subject 
to 35 U.S.C. 102 and 103 in effect prior to March 16, 2013.
    Section 1.104(c)(5)(i) as proposed provides that subject matter 
which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in 
effect prior to March 16, 2013, and a claimed invention in an 
application or a patent granted on or after December 10, 2004, will be 
treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect 
prior to March 16, 2013, if the applicant provides a statement to the 
effect that the prior art and the claimed invention, at the time the 
claimed invention was made, were owned by the same person or subject to 
an obligation of assignment to the same person.
    Section 1.104(c)(5)(ii) as proposed addresses joint research 
agreements and provides that subject matter which qualifies as prior 
art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16, 
2013, and a claimed invention in an application or a patent granted on 
or after December 10, 2004, will be treated as commonly owned for 
purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, on the 
basis of a joint research agreement under 35 U.S.C. 103(c)(2) in effect 
prior to March 16, 2013 if: (1) the applicant provides a statement to 
the effect that the prior art and the claimed invention were made by or 
on behalf of the parties to a joint research agreement, within the 
meaning of 35 U.S.C. 100(h) and Sec.  1.9(e), that was in effect on or 
before the date the claimed invention was made, and that the claimed 
invention was made as a result of activities undertaken within the 
scope of the joint research agreement; and (2) the application for 
patent for the claimed invention discloses or is amended to disclose 
the names of the parties to the joint research agreement. Section 
1.104(c)(5)(ii) as proposed makes reference to the definition of joint 
research agreement contained in 35 U.S.C. 100(h) and Sec.  1.9(e). The 
AIA did not change the definition of a joint research agreement, but 
merely moved the definition from 35 U.S.C. 103(c)(3) to 35 U.S.C. 
100(h). Thus, the Office proposes to reference the definition of joint 
research agreement in 35 U.S.C. 100(h) in Sec.  1.104(c)(5)(ii) for 
simplicity.
    Section 1.104(c)(6) is proposed to be added to clarify that patents 
issued prior to December 10, 2004, from applications filed prior to 
November 29, 1999, are subject to 35 U.S.C. 103(c) in effect on 
November 28, 1999. See MPEP Sec.  706.02(l).
    The provisions of current Sec.  1.104(c)(5) pertain to statutory 
invention registrations and are thus proposed to be removed. See 
discussion of the provisions of Sec. Sec.  1.293 through 1.297.
    Section 1.109: Section 1.109 is proposed to be added to specify the 
effective filing date of a claimed invention. Section 1.109(a) as 
proposed provides that the effective filing date of a claimed invention 
in a patent or an application for patent, other than in a reissue 
application or reissued patent, is the earliest of: (1) The actual 
filing date of the patent or the application for the patent containing 
a claim to the invention; or (2) the filing date of the earliest 
application for which the patent or application is entitled, as to such 
invention, to priority to or the benefit of an earlier filing date 
under 35 U.S.C. 119, 120, 121, or 365. See 35 U.S.C. 100(i)(1). Section 
1.109(b) as proposed provides that the effective filing date for a 
claimed invention in a reissue application or a reissued patent is 
determined by deeming the claim to the invention to have been contained 
in the patent for which reissue was sought. See 35 U.S.C. 100(i)(2).
    Section 1.110: Section 1.110 as proposed provides that the Office 
may require information concerning the inventorship and ownership of 
the subject matter of each claim when necessary for an Office 
proceeding. Section 1.110 is proposed to be amended to: (1) Change the 
ownership inquiry to ownership on the effective filing date rather than 
ownership on the date of invention; and (2) eliminate the provision 
concerning inquiring into the date of invention of the subject matter 
of the claims. Section 1.110 as proposed to be amended provides that 
when more than one inventor is named in an application or patent, the 
Office may require an applicant or patentee to identify the inventor, 
and ownership on the effective filing date, of each claimed invention 
in the application or patent, when necessary for purposes of an Office 
proceeding.
    Section 1.130: Section 1.130 is proposed to be amended to replace 
its existing provisions (which are proposed to be moved to Sec.  1.131) 
with provisions for showing attribution of a disclosure to an inventor 
or joint inventor, prior disclosure, or derivation under 35 U.S.C. 
102(b) as amended by the AIA. Thus, Sec.  1.130 as proposed would apply 
to applications for patent (and patents issuing thereon) that are 
subject to 35 U.S.C. 102 as amended by the AIA, and Sec.  1.131 would 
apply to applications for patent (and patents issuing thereon) that are 
subject to 35 U.S.C. 102 in effect on March 15, 2013 (prior to the 
effective date of section 3 of the AIA).
    Section 1.130(a) as proposed provides a mechanism for filing an 
affidavit or declaration to establish that a disclosure is not prior 
art in accordance with 35 U.S.C. 102(b) as amended by the AIA. Proposed 
Sec.  1.130, like Sec. Sec.  1.131 and 1.132, provides a mechanism for 
the submission of evidence to disqualify a disclosure as prior art or 
otherwise

[[Page 43750]]

traverse a rejection. An applicant's or patent owner's compliance with 
Sec.  1.130 means that the applicant or patent owner is entitled to 
have the evidence considered in determining the patentability of the 
claim(s) at issue. It does not mean that the applicant or patent owner 
is entitled as a matter of right to have the rejection of or objection 
to the claim(s) withdrawn. See Changes to Implement the Patent Business 
Goals, 65 FR 54603, 54640 (Sept. 8, 2000) (discussing procedural nature 
of Sec. Sec.  1.131 and 1.132).
    Section 1.130(a)(1) as proposed provides for the situation in 
which: (1) The disclosure on which the rejection is based was by the 
inventor or joint inventor; or (2) there was a public disclosure of the 
subject matter on which the rejection is based by the inventor or a 
joint inventor prior to the disclosure of the subject matter on which 
the rejection is based or the date the patent or application on which 
the rejection is based was effectively filed.
    Section 1.130(a)(2) as proposed provides for the situation in 
which: (1) The disclosure on which the rejection is based was by a 
party who obtained the subject matter disclosed directly or indirectly 
from the inventor or a joint inventor; or (2) the subject matter 
disclosed had been publicly disclosed by a party who obtained the 
subject matter disclosed directly or indirectly from the inventor prior 
to the disclosure of the subject matter on which the rejection is based 
or the date the patent or application on which the rejection is based 
was effectively filed.
    Section 1.130(b) as proposed pertains to affidavits or declarations 
under Sec.  1.130(a)(1) in the situation in which the disclosure on 
which the rejection is based was by the inventor or joint inventor. 
Section 1.130(b) as proposed provides that if the disclosure on which 
the rejection is based is by the inventor or a joint inventor, the 
affidavit or declaration under Sec.  1.130(a)(1) must provide a 
satisfactory showing that the inventor or a joint inventor is in fact 
the inventor of the subject matter of the disclosure. The applicant or 
patent owner must provide a satisfactory showing that the inventor or a 
joint inventor is the actual inventor of the subject matter of the 
disclosure. See In re Katz, 687 F.2d 450, 455 (CCPA 1982). Where the 
authorship of the reference disclosure includes the inventor or a joint 
inventor named in the application, an ``unequivocal'' statement from 
the inventor or a joint inventor that he/she (or some specific 
combination of named inventors) invented the subject matter of the 
disclosure, accompanied by a reasonable explanation of the presence of 
additional authors, may be acceptable in the absence of evidence to the 
contrary. See In re DeBaun, 687 F.2d 459, 463 (CCPA 1982). However, a 
mere statement from the inventor or a joint inventor may not be 
sufficient where there is evidence to the contrary. See Ex parte 
Kroger, 218 USPQ 370 (Bd. App. 1982) (rejection affirmed 
notwithstanding declarations by the alleged actual inventors as to 
their inventorship in view of a nonapplicant author submitting a letter 
declaring the nonapplicant author's inventorship). This is similar to 
the current process for disqualifying a publication as not being by 
``others'' discussed in MPEP Sec.  2132.01, except that 35 U.S.C. 
102(b)(1) requires only that the disclosure be by the inventor or a 
joint inventor.
    Section 1.130(c) as proposed pertains to affidavits or declarations 
under Sec.  1.130(a)(1) in the situation in which the disclosure on 
which the rejection is based is not by the inventor or a joint 
inventor, and thus the applicant or patent owner is attempting to 
overcome the rejection by showing an earlier public disclosure of the 
subject matter on which the rejection is based by the inventor or a 
joint inventor. Section 1.130(c) as proposed provides that in this 
situation the affidavit or declaration must identify and provide the 
date of the earlier disclosure of the subject matter by the inventor or 
a joint inventor and provide a satisfactory showing that the inventor 
or a joint inventor is the inventor of the subject matter of the 
earlier disclosure. Section 1.130(c) as proposed also provides that if 
the earlier disclosure was a printed publication, the affidavit or 
declaration must be accompanied by a copy of the printed publication. 
Section 1.130(c) as proposed further provides that if the earlier 
disclosure was not a printed publication, the affidavit or declaration 
must describe the disclosure with sufficient detail and particularity 
to determine that the disclosure is a public disclosure of the subject 
matter on which the rejection is based. The Office needs these details 
to determine not only whether the inventor is entitled to disqualify 
the disclosure under 35 U.S.C. 102(b), but also because if the 
rejection is based upon a U.S. patent application publication or WIPO 
published application of another application and such other application 
is also pending before the Office, this prior disclosure may be prior 
art under 35 U.S.C. 102(a) to the other application and the Office may 
need this information to avoid granting two patents on the same 
invention.
    Section 1.130(d) as proposed pertains to affidavits or declarations 
under Sec.  1.130(a)(2) in the situation in which the disclosure on 
which the rejection is based was by a party who obtained the subject 
matter disclosed directly or indirectly from the inventor or a joint 
inventor. Section 1.130(d) as proposed provides that if the disclosure 
on which the rejection is based is by a party who obtained the subject 
matter disclosed directly or indirectly from the inventor, an affidavit 
or declaration under Sec.  1.130(a)(2) (alleging derivation) must 
provide a satisfactory showing that the inventor or a joint inventor is 
the inventor of the subject matter of the disclosure and directly or 
indirectly communicated the subject matter of the disclosure to the 
party. Specifically, the applicant or patent owner must show that a 
named inventor actually invented the subject matter of the disclosure. 
See In re Facius, 408 F.2d 1396, 1407 (CCPA 1969). The applicant or 
patent owner must also show a direct or indirect communication of the 
subject matter of the disclosure to the party sufficient to enable one 
of ordinary skill in the art to make the subject matter of the claimed 
invention. See Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 
1573, 1577 (Fed. Cir. 1997). This is similar to the current process for 
disqualifying a publication as being derived from the inventor 
discussed in MPEP Sec.  2137.
    Section 1.130(e) as proposed pertains to affidavits or declarations 
under Sec.  1.130(a)(2) in the situation in which the disclosure on 
which the rejection is based is not by a party who obtained the subject 
matter disclosed directly or indirectly from the inventor or a joint 
inventor, and thus the applicant or patent owner is attempting to 
overcome the rejection by showing an earlier public disclosure of the 
subject matter on which the rejection is based by a party who obtained 
the subject matter disclosed directly or indirectly from the inventor 
or a joint inventor. Section 1.130(e) as proposed provides that in this 
situation an affidavit or declaration under Sec.  1.130(a)(2) must 
identify and provide the date of the earlier disclosure of the subject 
matter by the party who obtained the subject matter disclosed directly 
or indirectly from the inventor or a joint inventor and must also 
provide a satisfactory showing that the inventor or a joint inventor is 
the inventor of the subject matter of the earlier disclosure and 
directly or indirectly communicated the subject matter of the 
disclosure to the party. Section 1.130(e) as proposed also provides 
that if the earlier disclosure was a printed publication, the affidavit

[[Page 43751]]

or declaration must be accompanied by a copy of the printed 
publication. Section 1.130(c) as proposed further provides that if the 
earlier disclosure was not a printed publication, the affidavit or 
declaration must describe the disclosure with sufficient detail and 
particularity to determine that the disclosure is a public disclosure 
of the subject matter on which the rejection is based. This is the same 
requirement as in Sec.  1.130(c).
    Section 1.130 as proposed does not contain a provision that 
``[o]riginal exhibits of drawings or records, or photocopies thereof, 
must accompany and form part of the affidavit or declaration or their 
absence must be satisfactorily explained'' (cf. Sec.  1.131(b)), 
because in some situations an affidavit or declaration under Sec.  
1.130 does not necessarily need to be accompanied by such exhibits 
(e.g., a statement by the inventor may be sufficient). However, in 
situations where evidence is required, such exhibits must accompany an 
affidavit or declaration under Sec.  1.130. In addition, an affidavit 
or declaration under Sec.  1.130 must be accompanied by any exhibits 
that the applicant or patent owner wishes to rely upon.
    Section 1.130(f) as proposed provides that the provisions of Sec.  
1.130 are not available if the rejection is based upon a disclosure 
made more than one year before the effective filing date of the claimed 
invention. This provision is because a disclosure made more than one 
year before the effective filing date of the claimed invention is prior 
art under 35 U.S.C. 102(a)(1), and may not be disqualified under 35 
U.S.C. 102(b)(1). Note that the provisions of Sec.  1.130 are available 
to establish that a rejection under 35 U.S.C. 102(a)(2) is based on an 
application or patent that was effectively filed more than one year 
before the effective filing date of the application under examination, 
but not publicly disclosed more than one year before such effective 
filing date, where the subject matter disclosed was obtained directly 
or indirectly from the inventor or a joint inventor. As stated 
previously, if the application or patent was published more than one 
year before the effective filing date of the application under 
examination, the applicant would not be able to remove the reference as 
prior art under 35 U.S.C. 102(a)(1).
    Section 1.130(f) as proposed also provides that the Office may 
require the applicant to file a petition for a derivation proceeding 
pursuant to Sec.  42.401 et seq. of this title if the rejection is 
based upon a U.S. patent or U.S. patent application publication of a 
patented or pending application naming another inventor and the patent 
or pending application claims an invention that is the same or 
substantially the same as the applicant's claimed invention. Thus, the 
Office would not require the applicant to file a petition for a 
derivation proceeding if the rejection is based upon a disclosure other 
than a U.S. patent or U.S. patent application publication (such as 
nonpatent literature or a foreign patent document), and would not 
require the applicant to file a petition for a derivation proceeding if 
the rejection is based upon a U.S. patent or U.S. patent application 
and the patent or pending application did not claim an invention that 
is the same or substantially the same as the applicant's claimed 
invention.
    Section 1.130(g) as proposed provides that the provisions of Sec.  
1.130 apply to applications for patent, and to any patent issuing 
thereon, that is subject to 35 U.S.C. 102 as amended by the AIA.
    Section 1.131: The title of Sec.  1.131 is proposed to be amended 
to also cover the provisions of current Sec.  1.130.
    Section 1.131(a) is proposed to be amended to refer to 35 U.S.C. 
102(e) as 35 U.S.C. 102(e) in effect on March 15, 2013.
    Section 1.131(b) is proposed to be amended to provide that the 
showing of facts provided for in Sec.  1.131(b) is applicable to an 
oath or declaration under Sec.  1.131(a).
    Section 1.131(c) is proposed to be added to include the current 
provisions of Sec.  1.130, but revised to refer to 35 U.S.C. 102(b) as 
35 U.S.C. 102(b) in effect on March 15, 2013, and to refer to 35 U.S.C. 
104 as 35 U.S.C. 104 in effect on March 15, 2013.
    Section 1.131(d) is proposed to be added to provide that the 
provisions of Sec.  1.131 apply to applications for patent, and to any 
patent issuing thereon, that contains, or contained at any time: (1) A 
claim to a claimed invention that has an effective filing date as 
defined in 35 U.S.C. 100(i) that is before March 16, 2013; or (2) a 
specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or 
application that contains, or contained at any time, a claim to a 
claimed invention that has an effective filing date as defined in 35 
U.S.C. 100(i) that is before March 16, 2013.
    Section 1.131(e) is proposed to be added to provide that, in an 
application for patent to which the provisions of Sec.  1.130 apply, 
and to any patent issuing thereon, the provisions of Sec.  1.131 are 
applicable only with respect to a rejection under 35 U.S.C. 102(g) in 
effect on March 15, 2013. Section 1.130(g) as proposed provides that 
the provisions of Sec.  1.130 apply to applications for patent, and to 
any patent issuing thereon, that is subject to 35 U.S.C. 102 as amended 
by the AIA. The date of invention is not relevant under the 35 U.S.C. 
102 as amended by the AIA. Thus, in an application for patent to which 
the provisions of Sec.  1.130 apply, and to any patent issuing thereon, 
a prior art disclosure under 35 U.S.C. 102 as amended by the AIA could 
not be disqualified or antedated under the provisions of Sec.  1.131 by 
showing that the inventor previously invented the claimed subject 
matter.
    Sections 1.293 through 1.297: The AIA repeals the provisions of 35 
U.S.C. 157 pertaining to statutory invention registrations. Thus, the 
statutory invention registration provisions of Sec. Sec.  1.293 through 
1.297 are proposed to be removed. The Office would also amend the rules 
of practice (e.g., Sec. Sec.  1.17, 1.53, 1.84, 1.103, and 1.104) to 
delete any reference to a statutory invention registration.
    Section 1.321: Section 1.321(d) is proposed to be amended to change 
35 U.S.C. 103(c) to 35 U.S.C. 102(c) to be consistent with the changes 
to 35 U.S.C. 102 and 103 as amended by the AIA.

Rulemaking Considerations

    A. Administrative Procedure Act: The changes being proposed in this 
notice do not change the substantive criteria of patentability. These 
proposed changes involve rules of agency practice and procedure and/or 
interpretive rules. See Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690 
(DC Cir. 2001) (rules governing an application process are procedural 
under the Administrative Procedure Act); Inova Alexandria Hosp. v. 
Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals 
were procedural where they did not change the substantive standard for 
reviewing claims); Nat'l Org. of Veterans' Advocates v. Sec'y of 
Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that 
clarifies interpretation of a statute is interpretive).
    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). See 
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) 
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not 
require notice and comment rulemaking for ``interpretative rules, 
general statements of policy, or rules of agency organization, 
procedure, or practice'') (quoting 5 U.S.C. 553(b)(A)). The Office, 
however, is publishing these proposed changes as it seeks the benefit 
of the public's views on the Office's proposed implementation of these 
provisions of the AIA.

[[Page 43752]]

    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.
    Nevertheless, for the reasons set forth herein, the Deputy General 
Counsel for General Law of the United States Patent and Trademark 
Office has certified to the Chief Counsel for Advocacy of the Small 
Business Administration that changes proposed in this notice will not 
have a significant economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(b). As discussed previously, the Office is 
proposing the following changes to address the examination issues 
raised by the changes in section 3 of the AIA.
    The Office is providing for the submission of affidavits or 
declarations showing that: (1) A disclosure upon which a claim 
rejection is based was by the inventor or joint inventor or by a party 
who obtained the subject matter disclosed directly or indirectly from 
the inventor or a joint inventor; or (2) there was a prior public 
disclosure by the inventor or a joint inventor or another who obtained 
the subject matter disclosed directly or indirectly from the inventor 
or a joint inventor of an application. The requirements of these 
proposed provisions are comparable to the current requirements for 
affidavits and declarations under 37 CFR 1.131 and 1.132 for an 
applicant to show that a prior art disclosure is the applicant's own 
work (see case law cited in MPEP Sec.  2132.01) or that a disclosure 
was derived from the applicant (see case law cited in MPEP Sec.  2137). 
In addition, the changes proposed in this notice would not result in 
additional small entities being subject to the need to submit such an 
affidavit or declaration.
    The Office is also proposing to require that the certified copy of 
the foreign application be filed within the later of four months from 
the actual filing date of the application or sixteen months from the 
filing date of the prior foreign application. An applicant is currently 
required to file the certified copy of the foreign application when 
deemed necessary by the examiner, but no later than the date the patent 
is granted (37 CFR 1.55(a)). The proposed time period of four months 
from the actual filing date of the application or sixteen months from 
the filing date of the prior foreign application should not have a 
significant economic impact as sixteen months from the filing date of 
the prior foreign application is the international norm for when the 
certified copy of the foreign application needs to be filed in an 
application (PCT Rule 17). Based upon the data in the Office's Patent 
Application Locating and Monitoring (PALM) system, 354,248 (98,902 
small entity) nonprovisional applications were filed in FY 2011. Of 
these, 69,733 (7,943 small entity) nonprovisional applications claimed 
the benefit of a foreign priority application, and 65,900 (15,031 small 
entity) nonprovisional applications resulted from the entry of an 
international application into the national stage.
    The Office is also proposing the following requirements for 
nonprovisional applications filed on or after March 16, 2013, that 
claim the benefit of the filing date of a foreign, provisional, or 
nonprovisional application filed prior to March 16, 2013: (1) If such a 
nonprovisional application contains at any time a claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
the applicant must provide a statement to that effect within the later 
of four months from the actual filing date of the later-filed 
application, four months from the date of entry into the national stage 
in an international application, sixteen months from the filing date of 
the prior-filed application, or the date that a first claim to a 
claimed invention that has an effective filing date on or after March 
16, 2013, is presented in the application; and (2) if such a 
nonprovisional application does not contain a claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
but discloses subject matter not also disclosed in the foreign, 
provisional, or nonprovisional application, the applicant must provide 
a statement to that effect within the later of four months from the 
actual filing date of the later-filed application, four months from the 
date of entry into the national stage in an international application, 
or sixteen months from the filing date of the prior-filed application.
    Based upon the data in the Office's PALM system, of the 354,248 
(98,902 small entity) nonprovisional applications filed in FY 2011, 
11,557 (6,833 small entity) nonprovisional applications were identified 
as continuation-in-part applications, 47,380 (12,444 small entity) 
nonprovisional applications were identified as continuation 
applications, 21,943 (4,934 small entity) nonprovisional applications 
were identified as divisional applications, and 55,492 (27,367 small 
entity) nonprovisional applications claimed the benefit of provisional 
application. As discussed above, 69,733 (7,943 small entity) 
nonprovisional applications claimed the benefit of a foreign priority 
application, and 65,900 (15,031 small entity) nonprovisional 
applications resulted from the entry of an international application 
into the national stage. The Office's experience is that the majority 
of nonprovisional applications that claim the benefit of the filing 
date of a foreign, provisional, or nonprovisional application do not 
disclose or claim subject matter not also disclosed in the foreign, 
provisional, or nonprovisional application, but the Office generally 
makes such determinations only when necessary to the examination of the 
nonprovisional application. See, e.g., MPEP Sec.  201.08 (``Unless the 
filing date of the earlier nonprovisional application is actually 
needed, for example, in the case of an interference or to overcome a 
reference, there is no need for the Office to make a determination as 
to whether the requirement of 35 U.S.C. 120, that the earlier 
nonprovisional application discloses the invention of the second 
application in the manner provided by the first paragraph of 35 U.S.C. 
112, is met and whether a substantial portion of all of the earlier 
nonprovisional application is repeated in the second application in a 
continuation-in-part situation''). In any event, Office staff with 
experience and expertise in a wide range of patent prosecution matters 
as patent practitioners estimate that this will require, on average, an 
additional two hours for a practitioner who drafted the later-filed 
application (including the claims) and is familiar with the prior 
foreign, provisional, or nonprovisional application.
    Accordingly, the changes proposed in this notice will not have a 
significant economic impact on a substantial number of small entities.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563. 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant

[[Page 43753]]

disciplines, affected stakeholders in the private sector, and the 
public as a whole, and provided on-line access to the rulemaking 
docket; (7) attempted to promote coordination, simplification, and 
harmonization across government agencies and identified goals designed 
to promote innovation; (8) considered approaches that reduce burdens 
and maintain flexibility and freedom of choice for the public; and (9) 
ensured the objectivity of scientific and technological information and 
processes.
    E. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    F. Executive Order 13175 (Tribal Consultation): This rulemaking 
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).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking 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).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
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).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not effect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    K. 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.), prior to issuing any final rule, the 
United States Patent and Trademark Office will submit a report 
containing the final rule and other required information to the United 
States Senate, the United States House of Representatives, and the 
Comptroller General of the Government Accountability Office. The 
changes in this notice are not expected to 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 notice is 
not expected to result in a ``major rule'' as defined in 5 U.S.C. 
804(2).
    L. Unfunded Mandates Reform Act of 1995: The changes set forth 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.
    M. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    N. 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 not applicable because 
this rulemaking does not contain provisions which involve the use of 
technical standards.
    O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq.) requires that the Office consider the impact of 
paperwork and other information collection burdens imposed on the 
public. This rulemaking 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. 3501-3549). 
The collection of information involved in this notice has been 
submitted to OMB under OMB control number 0651-00xx. The collection of 
information submitted to OMB under OMB control number 0651-00xx also 
includes information collections (e.g., affidavits and declarations 
under 37 CFR 1.130, 1.131, and 1.132) previously approved and currently 
being reviewed under OMB control number 0651-0031. The proposed 
collection will be available at OMB's Information Collection Review Web 
site (www.reginfo.gov/public/do/PRAMain).
    Title of Collection: Matters Related to First Inventor to File.
    OMB Control Number: 0651-00xx.
    Needs and Uses: This information collection is necessary so that 
patent applicants and/or patentees may: (1) Provide a statement if a 
nonprovisional application filed on or after March 16, 2013, claims the 
benefit of the filing date of a foreign, provisional, or nonprovisional 
application filed prior to March 16, 2013, and also contains, or 
contained at any time, a claim to a claimed invention that has an 
effective filing date on or after March 16, 2013; (2) provide a 
statement if a nonprovisional application filed on or after March 16, 
2013, claims the benefit of the filing date of a foreign, provisional, 
or nonprovisional application filed prior to March 16, 2013, does not 
contain a claim to a claimed invention that has an effective filing 
date on or after March 16, 2013, but discloses subject matter not also 
disclosed in the foreign, provisional, or nonprovisional application; 
(3) identify the inventor, and ownership on the effective filing date, 
of each claimed invention in an application or patent with more than 
one named inventor, when necessary for purposes of an Office 
proceeding; and (4) show that a disclosure was by the inventor or joint 
inventor, or was by a party who obtained the subject matter from the 
inventor or a joint inventor, or that there was a prior public 
disclosure by the inventor or a joint inventor, or by a party who 
obtained the subject matter from the inventor or a joint inventor.
    The Office will use the statement that a nonprovisional application 
filed on or after March 16, 2013, that claims the benefit of the filing 
date of a foreign, provisional, or nonprovisional application filed 
prior to March 16, 2013, contains, or contained at any time, a claim to 
a claimed invention that has an effective filing date on or after March 
16, 2013, to readily determine whether the nonprovisional application 
is subject to the changes to 35 U.S.C. 102 and 103 in the AIA. The 
Office will also use the statement that a nonprovisional application 
filed on or after March 16, 2013, that claims the benefit of the filing 
date of a foreign, provisional, or nonprovisional application filed 
prior to March 16, 2013, does not contain a claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
but discloses subject matter

[[Page 43754]]

not also disclosed in the foreign, provisional, or nonprovisional 
application (or lack of such a statement) to readily determine whether 
the nonprovisional application is subject to the changes to 35 U.S.C. 
102 and 103 in the AIA. The Office will use the identification of the 
inventor, and ownership on the effective filing date, when it is 
necessary to determine whether a U.S. patent or U.S. patent application 
publication resulting from another nonprovisional application qualifies 
as prior art under 35 U.S.C. 102(a)(2). The Office will use information 
concerning whether a disclosure was by the inventor or joint inventor, 
or was by a party who obtained the subject matter from the inventor or 
a joint inventor, or that there was a prior public disclosure by the 
inventor or a joint inventor, or by a party who obtained the subject 
matter from the inventor or a joint inventor, to determine whether the 
disclosure qualifies as prior art under 35 U.S.C. 102(a)(1) or (a)(2).
    Method of Collection: By mail, facsimile, hand delivery, or 
electronically to the Office.
    Affected Public: Individuals or households; businesses or other 
for-profits; and not-for-profit institutions.
    Estimated Number of Respondents: 189,150 responses per year.
    Estimated Time per Response: The Office estimates that the 
responses in this collection will take the public from 1 to 10 hours. 
Specifically, the Office estimates that: (1) Preparing an affidavit or 
declaration under 37 CFR 1.130, 1.131, or 1.132 will require, on 
average, 10 hours; (2) identifying under 37 CFR 1.55(a)(4), 1.78(a)(3), 
or 1.78(c)(2) whether there is any claim or subject matter not 
disclosed in the prior foreign, provisional, or nonprovisional 
application will require, on average, 2 hours; and (3) identifying 
under 37 CFR 1.110 inventorship and ownership of the subject matter of 
claims will require, on average, 2 hours.
    Estimated Total Annual Respondent Burden Hours: 778,300 hours per 
year.
    Estimated Total Annual Respondent Cost Burden: $288,749,300 per 
year.
    The Office is soliciting comments to: (1) Evaluate whether the 
proposed information requirement is necessary for the proper 
performance of the functions of the Office, including whether the 
information will have practical utility; (2) evaluate the accuracy of 
the Office's estimate of the burden; (3) enhance the quality, utility, 
and clarity of the information to be collected; and (4) minimize the 
burden of collecting the information on those who are to respond, 
including by using appropriate automated, electronic, mechanical, or 
other technological collection techniques or other forms of information 
technology.
    Please send comments on or before September 24, 2012 to Mail Stop 
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, 
VA, 22313-1450, marked to the attention of Raul Tamayo, Legal Advisor, 
Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy. Comments should also be 
submitted to 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.
    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 stated in the preamble, the USPTO proposes to amend 
1 CFR part 37 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 1.9 is amended by adding paragraphs (d), (e) and (f) to 
read as follows:


Sec.  1.9  Definitions.

* * * * *
    (d)(1) The term inventor or inventorship as used in this chapter 
means the individual or, if a joint invention, the individuals 
collectively who invented or discovered the subject matter of the 
invention.
    (2) The term joint inventor or coinventor as used in this chapter 
means any one of the individuals who invented or discovered the subject 
matter of a joint invention.
    (e) The term joint research agreement as used in this chapter means 
a written contract, grant, or cooperative agreement entered into by two 
or more persons or entities for the performance of experimental, 
developmental, or research work in the field of the claimed invention.
    (f) The term claimed invention as used in this chapter means the 
subject matter defined by a claim in a patent or an application for a 
patent.
* * * * *
    3. Section 1.53 is amended by revising paragraph (j) to read as 
follows:


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

* * * * *
    (j) Filing date of international application. The filing date of an 
international application designating the United States of America is 
treated as the filing date in the United States of America under PCT 
Article 11(3).
    4. Section 1.55 is amended by revising paragraphs (a), (c), and 
(d), and by adding paragraphs (e) and (f) to read as follows:


Sec.  1.55  Claim for foreign priority.

    (a) An applicant in a nonprovisional application may claim the 
benefit of the filing date of one or more prior foreign applications 
under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 
172, and 365(a) and (b).
    (1) The nonprovisional application must be filed not later than 
twelve months after the date on which the foreign application was 
filed. This twelve-month period is subject to 35 U.S.C. 21(b) and Sec.  
1.7(a).
    (2) In an original application filed under 35 U.S.C. 111(a), the 
claim for priority as well as a certified copy of the foreign 
application must both be filed within the later of four months from the 
actual filing date of the application or sixteen months from the filing 
date of the prior foreign application. The claim for priority must be 
presented in an application data sheet (Sec.  1.76(b)(6)). The claim 
must identify the foreign application for which priority is claimed, as 
well as any foreign application for the same subject matter having a 
filing date before that of the application for which priority is 
claimed, by specifying the application number, country (or intellectual 
property authority), day, month, and year of its filing. The time 
periods in this paragraph do not apply in an application under 35 
U.S.C. 111(a) if the application is:
    (i) A design application; or
    (ii) An application filed before November 29, 2000.
    (3) In an application that entered the national stage from an 
international application after compliance with 35 U.S.C. 371, the 
claim for priority must be made and a certified copy of the foreign 
application filed within the time

[[Page 43755]]

limit set forth in the PCT and the Regulations under the PCT.
    (4) If a nonprovisional application filed on or after March 16, 
2013, claims the benefit of the filing date of a foreign application 
filed prior to March 16, 2013, and also contains, or contained at any 
time, a claim to a claimed invention that has an effective filing date 
on or after March 16, 2013, the applicant must provide a statement to 
that effect within the later of four months from the actual filing date 
of the application, four months from the date of entry into the 
national stage as set forth in Sec.  1.491 in an international 
application, sixteen months from the filing date of the prior foreign 
application, or the date that a first claim to a claimed invention that 
has an effective filing date on or after March 16, 2013, is presented 
in the application. In addition, if a nonprovisional application filed 
on or after March 16, 2013, claims the benefit of the filing date of a 
foreign application filed prior to March 16, 2013, does not contain a 
claim to a claimed invention that has an effective filing date on or 
after March 16, 2013, but discloses subject matter not also disclosed 
in the foreign application, the applicant must provide a statement to 
that effect within the later of four months from the actual filing date 
of the later-filed application, four months from the date of entry into 
the national stage as set forth in Sec.  1.491 in an international 
application, or sixteen months from the filing date of the prior 
foreign application.
* * * * *
    (c) Unless such claim is accepted in accordance with the provisions 
of this paragraph, any claim for priority under 35 U.S.C. 119(a) 
through (d) or (f), or 365(a) or (b), not presented in an application 
data sheet (Sec.  1.76(b)(6)) within the time period provided by 
paragraph (a)(2) of this section is considered to have been waived. If 
a claim for priority under 35 U.S.C. 119(a) through (d) or (f), or 
365(a) or (b) is presented after the time period provided by paragraph 
(a)(2) of this section, the claim may be accepted if the claim 
identifying the prior foreign application by specifying its application 
number, country (or intellectual property authority), and the day, 
month, and year of its filing was unintentionally delayed. A petition 
to accept a delayed claim for priority under 35 U.S.C. 119(a) through 
(d) or (f), or 365(a) or (b), must be accompanied by:
    (1) The claim under 35 U.S.C. 119(a) through (d) or (f), or 365(a) 
or (b), and this section to the prior foreign application, unless 
previously submitted;
    (2) A certified copy of the foreign application, unless previously 
submitted;
    (3) The surcharge set forth in Sec.  1.17(t); and
    (4) A statement that the entire delay between the date the claim 
was due under paragraph (a) 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.
    (d)(1) The requirement in this section for the certified copy of 
the foreign application will be considered satisfied if:
    (i) The applicant files a request, in a separate document, that the 
Office obtain a copy of the foreign application from a foreign 
intellectual property office participating with the Office in a 
bilateral or multilateral priority document exchange agreement 
(participating foreign intellectual property office (see Sec.  1.14 
(h)(1));
    (ii) The foreign application is identified in an application data 
sheet (Sec.  1.76(a)(6)); and
    (iii) The copy of the foreign application is received by the Office 
within the period set forth in paragraph (a) of this section or by such 
later time as may be set by the Office.
    (2) If the foreign application was filed at a foreign intellectual 
property office that is not participating with the Office in a priority 
document exchange agreement, but a copy of the foreign application was 
filed in an application subsequently filed in a participating foreign 
intellectual property office, the request under paragraph (d)(1)(i) of 
this section must identify the participating foreign intellectual 
property office and the application number of the subsequent 
application in which a copy of the foreign application was filed.
    (e)(1) 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 within the pendency of the application and 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), 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.
    (2) The Office may require that the claim for priority and the 
certified copy of the foreign application be filed earlier than 
provided in paragraph (a) or (e)(1) of this section:
    (i) When the application is involved in an interference (see Sec.  
41.202 of this title) or derivation (see part 42 of this title) 
proceeding;
    (ii) When necessary to overcome the date of a reference relied upon 
by the examiner; or
    (iii) When deemed necessary by the examiner.
    (3) An English language translation of a non-English language 
foreign application is not required except:
    (i) When the application is involved in an interference (see Sec.  
41.202 of this title) or derivation (see part 42 of this title) 
proceeding;
    (ii) When necessary to overcome the date of a reference relied upon 
by the examiner; or
    (iii) When specifically required by the examiner.
    (4) If an English language translation of a non-English language 
foreign application is required, it must be filed together with a 
statement that the translation of the certified copy is accurate.
    (f) The time periods set forth in this section are not extendable.
    5. Section 1.71 is amended by revising paragraph (g)(1) to read as 
follows:


Sec.  1.71  Detailed description and specification of the invention.

* * * * *
    (g)(1) The specification may disclose or be amended to disclose the 
names of the parties to a joint research agreement (35 U.S.C. 
102(c)(3)).
* * * * *
    6. Section 1.77 is amended by redesignating paragraphs (b)(6) 
through (b)(12) as paragraphs (b)(7) through (b)(13) and adding a new 
paragraph (b)(6) to read as follows:


Sec.  1.77  Arrangement of application elements.

* * * * *
    (b) * * *
    (6) Statement regarding prior disclosures by the inventor or a 
joint inventor.
* * * * *
    7. 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) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed 
provisional application. A nonprovisional application, other than for a 
design patent, or an international application designating the United 
States of America may claim the benefit of one or more prior-filed 
provisional applications under the conditions set forth in 35 U.S.C. 
119(e) and paragraph (a) of this section.
    (1) The nonprovisional application or international application 
designating

[[Page 43756]]

the United States of America must be filed not later than twelve months 
after the date on which the provisional application was filed. This 
twelve-month period is subject to 35 U.S.C. 21(b) and Sec.  1.7(a).
    (2) Each prior-filed provisional application must name as the 
inventor or a joint inventor an inventor named in the later-filed 
application. 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 have been paid for 
such provisional application within the time period set forth in Sec.  
1.53(g).
    (3) Any nonprovisional application or international application 
designating the United States of America that claims 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). 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(b)(5)). If a nonprovisional application filed on or after March 
16, 2013, claims the benefit of the filing date of a provisional 
application filed prior to March 16, 2013, and also contains, or 
contained at any time, a claim to a claimed invention that has an 
effective filing date on or after March 16, 2013, the applicant must 
provide a statement to that effect within the later of four months from 
the actual filing date of the later-filed application, four months from 
the date of entry into the national stage as set forth in Sec.  1.491 
in an international application, sixteen months from the filing date of 
the prior-filed provisional application, or the date that a first claim 
to a claimed invention that has an effective filing date on or after 
March 16, 2013, is presented in the application. In addition, if a 
nonprovisional application filed on or after March 16, 2013, claims the 
benefit of the filing date of a provisional application filed prior to 
March 16, 2013, does not contain a claim to a claimed invention that 
has an effective filing date on or after March 16, 2013, but discloses 
subject matter not also disclosed in the provisional application, the 
applicant must provide a statement to that effect within the later of 
four months from the actual filing date of the later-filed application, 
four months from the date of entry into the national stage as set forth 
in Sec.  1.491 in an international application, or sixteen months from 
the filing date of the prior-filed provisional application.
    (4) The reference required by paragraph (a)(3) of this section 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 entering 
the national stage from an international application under 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. Except as provided in paragraph (b) of this section, 
failure to timely submit the reference is considered a waiver of any 
benefit under 35 U.S.C. 119(e) of the prior-filed provisional 
application. The time periods in this paragraph do not apply if the 
later-filed application is:
    (i) An application filed under 35 U.S.C. 111(a) before November 29, 
2000; or
    (ii) An international application filed under 35 U.S.C. 363 before 
November 29, 2000.
    (5) 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 the translation and the statement in the 
prior-filed provisional application. If the notice is mailed in a 
pending nonprovisional application, a timely reply to such a notice 
must include either a confirmation that the translation and statement 
were filed in the provisional application or an application data sheet 
withdrawing the benefit claim to avoid abandonment of the 
nonprovisional application. The translation and statement may be filed 
in the provisional application, even if the provisional application has 
become abandoned.
    (b) Delayed claims under 35 U.S.C. 119(e) for the benefit of a 
prior-filed provisional application. If the reference required by 35 
U.S.C. 119(e) and paragraph (a)(3) of this section is presented in a 
nonprovisional application after the time period provided by paragraph 
(a)(4) of this section, the claim under 35 U.S.C. 119(e) for the 
benefit of a prior-filed provisional application may be accepted if 
submitted during the pendency of the later-filed application and 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:
    (1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3) 
of this section to the prior-filed provisional application, unless 
previously submitted;
    (2) The surcharge set forth in Sec.  1.17(t); and
    (3) A statement that the entire delay between the date the claim 
was due under paragraph (a)(4) 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.
    (c) Claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a 
prior-filed nonprovisional or international application. A 
nonprovisional application (including an international application 
entering the national stage under 35 U.S.C. 371) may claim the benefit 
of one or more prior-filed copending nonprovisional applications or 
international applications designating the United States of America 
under the conditions set forth in 35 U.S.C. 120 and paragraph (c) of 
this section.
    (1) Each prior-filed application must name as the inventor or a 
joint inventor an inventor named in the later-filed application. In 
addition, each prior-filed application must either 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) A nonprovisional application under 35 U.S.C. 111(a) that is 
entitled to a filing date as set forth in Sec.  1.53(b) or Sec.  
1.53(d) for which the basic filing fee set forth in Sec.  1.16 has been 
paid within the pendency of the application.
    (2) Except for a continued prosecution application filed under 
Sec.  1.53(d), any nonprovisional application, or international 
application designating the United States of America, that claims the 
benefit of one or more prior-filed 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

[[Page 43757]]

and serial number) or international application number and 
international filing date. 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(b)(5)). The 
reference must also identify the relationship of the applications, 
namely, whether the later-filed application is a continuation, 
divisional, or continuation-in-part of the prior-filed nonprovisional 
application or international application. If a nonprovisional 
application filed on or after March 16, 2013, claims the benefit of the 
filing date of a nonprovisional application filed prior to March 16, 
2013, and also contains, or contained at any time, a claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
the applicant must provide a statement to that effect within the later 
of four months from the actual filing date of the later-filed 
application, four months from the date of entry into the national stage 
as set forth in Sec.  1.491 in an international application, sixteen 
months from the filing date of the prior-filed nonprovisional 
application, or the date that a first claim to a claimed invention that 
has an effective filing date on or after March 16, 2013, is presented 
in the application. In addition, if a nonprovisional application filed 
on or after March 16, 2013, claims the benefit of the filing date of a 
nonprovisional application filed prior to March 16, 2013, does not 
contain a claim to a claimed invention that has an effective filing 
date on or after March 16, 2013, but discloses subject matter not also 
disclosed in the prior-filed nonprovisional application, the applicant 
must provide a statement to that effect within the later of four months 
from the actual filing date of the later-filed application, four months 
from the date of entry into the national stage as set forth in Sec.  
1.491 in an international application, or sixteen months from the 
filing date of the prior-filed nonprovisional application.
    (3) The reference required by 35 U.S.C. 120 and paragraph (c)(2) of 
this section 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 entering the national stage from an international 
application under 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. Except as provided in paragraph (d) of this 
section, failure to timely submit the reference required by 35 U.S.C. 
120 and paragraph (c)(2) of this section is considered a waiver of any 
benefit under 35 U.S.C. 120, 121, or 365(c) to the prior-filed 
application. The time periods in this paragraph do not apply if the 
later-filed application is:
    (i) An application for a design patent;
    (ii) An application filed under 35 U.S.C. 111(a) before November 
29, 2000; or
    (iii) An international application filed under 35 U.S.C. 363 before 
November 29, 2000.
    (4) 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.
    (5) Cross-references to other related applications may be made when 
appropriate (see Sec.  1.14), but cross-references to applications for 
which a benefit is not claimed under title 35, United States Code, must 
not be included in an application data sheet (Sec.  1.76(b)(5)).
    (d) Delayed claims under 35 U.S.C. 120, 121, or 365(c) for the 
benefit of a prior-filed nonprovisional application or international 
application. If the reference required by 35 U.S.C. 120 and paragraph 
(c)(2) of this section is presented after the time period provided by 
paragraph (c)(3) 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:
    (1) The reference required by 35 U.S.C. 120 and paragraph (c)(2) of 
this section to the prior-filed application, unless previously 
submitted;
    (2) The surcharge set forth in Sec.  1.17(t); and
    (3) A statement that the entire delay between the date the claim 
was due under paragraph (c)(3) 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.
    (e) Applications containing conflicting claims. 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.
    (f) Applications or patents under reexamination naming different 
inventors and containing patentably indistinct claims. 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 on the effective 
filing date of the later claimed invention, 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 on the 
effective filing date of the later claimed invention. Even if the 
claimed inventions were commonly owned, or subject to an obligation of 
assignment to the same person, on the effective filing date of the 
later claimed invention, 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.
    (g) Time periods not extendable. The time periods set forth in this 
section are not extendable.
    8. Section 1.104 is amended by revising paragraphs (c)(4) and 
(c)(5) and adding a new paragraph (c)(6) to read as follows:


Sec.  1.104  Nature of examination.

    (c) * * *
    (4)(i) Subject matter that qualifies as prior art under 35 U.S.C. 
102(a)(2) and a claimed invention will be treated as commonly owned for 
purposes of 35 U.S.C. 102(b)(2)(C) if the applicant provides a 
statement that the prior art and the claimed invention, not later than 
the effective filing date of the claimed invention, were owned by the 
same person or subject to an obligation of assignment to the same 
person.
    (ii) Subject matter that qualifies as prior art under 35 U.S.C. 
102(a)(2) and

[[Page 43758]]

a claimed invention will be treated as commonly owned for purposes of 
35 U.S.C. 102(b)(2)(C) on the basis of a joint research agreement under 
35 U.S.C. 102(c) if:
    (A) The applicant provides a statement that the prior art was 
developed and the claimed invention was made by or on behalf of one or 
more parties to a joint research agreement, within the meaning of 35 
U.S.C. 100(h) and Sec.  1.9(e), that was in effect on or before the 
effective filing date of the claimed invention, and the claimed 
invention was made as a result of activities undertaken within the 
scope of the joint research agreement; and
    (B) The application for patent for the claimed invention discloses 
or is amended to disclose the names of the parties to the joint 
research agreement.
    (5)(i) Subject matter which qualifies as prior art under 35 U.S.C. 
102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed 
invention in an application or a patent granted on or after December 
10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 
103(c) in effect prior to March 16, 2013, if the applicant provides a 
statement that the prior art and the claimed invention, at the time the 
claimed invention was made, were owned by the same person or subject to 
an obligation of assignment to the same person.
    (ii) Subject matter which qualifies as prior art under 35 U.S.C. 
102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed 
invention in an application or a patent granted on or after December 
10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 
103(c) in effect prior to March 16, 2013, on the basis of a joint 
research agreement under 35 U.S.C. 103(c)(2) in effect prior to March 
16, 2013 if:
    (A) The applicant provides a statement to the effect that the prior 
art and the claimed invention were made by or on behalf of the parties 
to a joint research agreement, within the meaning of 35 U.S.C. 100(h) 
and Sec.  1.9(e), which was in effect on or before the date the claimed 
invention was made, and that the claimed invention was made as a result 
of activities undertaken within the scope of the joint research 
agreement; and
    (B) The application for patent for the claimed invention discloses 
or is amended to disclose the names of the parties to the joint 
research agreement.
    (6) Patents issued prior to December 10, 2004, from applications 
filed prior to November 29, 1999, are subject to 35 U.S.C. 103(c) in 
effect on November 28, 1999.
* * * * *
    9. Section 1.109 is added to read as follows:


Sec.  1.109  Effective filing date of a claimed invention.

    (a) The effective filing date for a claimed invention in a patent 
or application for patent, other than in a reissue application or 
reissued patent, is the earliest of:
    (1) The actual filing date of the patent or the application for the 
patent containing a claim to the invention; or
    (2) The filing date of the earliest application for which the 
patent or application is entitled, as to such invention, to priority to 
or the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, 
or 365.
    (b) The effective filing date for a claimed invention in a reissue 
application or a reissued patent is determined by deeming the claim to 
the invention to have been contained in the patent for which reissue 
was sought.
    10. Section 1.110 is revised to read as follows:


Sec.  1.110  Inventorship and ownership of the subject matter of 
individual claims.

    When more than one inventor is named in an application or patent, 
the Office may require an applicant or patentee to identify the 
inventor, and ownership on the effective filing date, of each claimed 
invention in the application or patent, when necessary for purposes of 
an Office proceeding.
    11. Section 1.130 is revised to read as follows:


Sec.  1.130  Affidavit or declaration of attribution, prior disclosure, 
or derivation under the Leahy-Smith America Invents Act.

    (a) When any claim of an application or a patent under 
reexamination is rejected, the applicant or patent owner may submit an 
appropriate affidavit or declaration to establish that:
    (1) The disclosure on which the rejection is based was by the 
inventor or joint inventor, the subject matter disclosed had been 
publicly disclosed by the inventor or a joint inventor before the 
disclosure of the subject matter on which the rejection is based, or 
the subject matter disclosed had been publicly disclosed by the 
inventor or a joint inventor before the date the subject matter in the 
patent or application on which the rejection is based was effectively 
filed; or
    (2) The disclosure on which the rejection is based was by a party 
who obtained the subject matter disclosed directly or indirectly from 
the inventor or a joint inventor, the subject matter disclosed had been 
publicly disclosed by a party who obtained the subject matter disclosed 
directly or indirectly from the inventor or a joint inventor before the 
disclosure of the subject matter on which the rejection is based, or 
the subject matter disclosed had been publicly disclosed by a party who 
obtained the subject matter disclosed directly or indirectly from the 
inventor or a joint inventor before the date the subject matter in the 
patent or application on which the rejection is based was effectively 
filed.
    (b) If the disclosure on which the rejection is based is by the 
inventor or a joint inventor, the affidavit or declaration under 
paragraph (a)(1) of this section must provide a satisfactory showing 
that the inventor or a joint inventor is in fact the inventor of the 
subject matter of the disclosure.
    (c) If the disclosure on which the rejection is based is not by the 
inventor or a joint inventor, the affidavit or declaration under 
paragraph (a)(1) of this section must identify and provide the date of 
the earlier disclosure of the subject matter by the inventor or a joint 
inventor and provide a satisfactory showing that the inventor or a 
joint inventor is the inventor of the subject matter of the earlier 
disclosure. If the earlier disclosure was a printed publication, the 
affidavit or declaration must be accompanied by a copy of the printed 
publication. If the earlier disclosure was not a printed publication, 
the affidavit or declaration must describe the disclosure with 
sufficient detail and particularity to determine that the disclosure is 
a public disclosure of the subject matter on which the rejection is 
based.
    (d) If the disclosure on which the rejection is based is by a party 
who obtained the subject matter disclosed directly or indirectly from 
the inventor or a joint inventor, an affidavit or declaration under 
paragraph (a)(2) of this section must provide a satisfactory showing 
that the inventor or a joint inventor is the inventor of the subject 
matter of the disclosure and directly or indirectly communicated the 
subject matter of the disclosure to the party.
    (e) If the disclosure on which the rejection is based is not by a 
party who obtained the subject matter disclosed directly or indirectly 
from the inventor or a joint inventor, an affidavit or declaration 
under paragraph (a)(2) of this section must identify and provide the 
date of the earlier disclosure of the subject matter by the party who 
obtained the subject matter disclosed directly or indirectly from the 
inventor or a joint inventor and also provide a satisfactory showing 
that the inventor or a joint inventor is the inventor of the subject 
matter of the earlier disclosure and directly or indirectly 
communicated

[[Page 43759]]

the subject matter of the disclosure to the party. If the earlier 
disclosure was a printed publication, the affidavit or declaration must 
be accompanied by a copy of the printed publication. If the earlier 
disclosure was not a printed publication, the affidavit or declaration 
must describe the disclosure with sufficient detail and particularity 
to determine that the disclosure is a public disclosure of the subject 
matter on which the rejection is based.
    (f) The provisions of this section are not available if the 
rejection is based upon a disclosure made more than one year before the 
effective filing date of the claimed invention. The Office may require 
the applicant to file a petition for a derivation proceeding pursuant 
to Sec.  42.401 et seq. of this title if the rejection is based upon a 
U.S. patent or U.S. patent application publication of a patented or 
pending application naming another inventor and the patent or pending 
application claims an invention that is the same or substantially the 
same as the applicant's claimed invention.
    (g) The provisions of this section apply to applications for 
patent, and to any patent issuing thereon, that contain, or contained 
at any time:
    (1) A claim to a claimed invention that has an effective filing 
date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013; 
or
    (2) A specific reference under 35 U.S.C. 120, 121, or 365(c) to any 
patent or application that contains, or contained at any time, a claim 
to a claimed invention that has an effective filing date as defined in 
35 U.S.C. 100(i) that is on or after March 16, 2013.
    12. Section 1.131 is revised to read as follows:


Sec.  1.131  Affidavit or declaration of prior invention or to 
disqualify commonly owned patent or published application as prior art.

    (a) When any claim of an application or a patent under 
reexamination is rejected, the inventor of the subject matter of the 
rejected claim, the owner of the patent under reexamination, or the 
party qualified under Sec. Sec.  1.42 or 1.47, may submit an 
appropriate oath or declaration to establish invention of the subject 
matter of the rejected claim prior to the effective date of the 
reference or activity on which the rejection is based. The effective 
date of a U.S. patent, U.S. patent application publication, or 
international application publication under PCT Article 21(2) is the 
earlier of its publication date or the date that it is effective as a 
reference under 35 U.S.C. 102(e) in effect on March 15, 2013. Prior 
invention may not be established under this section in any country 
other than the United States, a NAFTA country, or a WTO member country. 
Prior invention may not be established under this section before 
December 8, 1993, in a NAFTA country other than the United States, or 
before January 1, 1996, in a WTO member country other than a NAFTA 
country. Prior invention may not be established under this section if 
either:
    (1) The rejection is based upon a U.S. patent or U.S. patent 
application publication of a pending or patented application to another 
or others which claims the same patentable invention as defined in 
Sec.  41.203(a) of this title, in which case an applicant may suggest 
an interference pursuant to Sec.  41.202(a) of this title; or
    (2) The rejection is based upon a statutory bar.
    (b) The showing of facts for an oath or declaration under paragraph 
(a) of this section shall be such, in character and weight, as to 
establish reduction to practice prior to the effective date of the 
reference, or conception of the invention prior to the effective date 
of the reference coupled with due diligence from prior to said date to 
a subsequent reduction to practice or to the filing of the application. 
Original exhibits of drawings or records, or photocopies thereof, must 
accompany and form part of the affidavit or declaration or their 
absence must be satisfactorily explained.
    (c) When any claim of an application or a patent under 
reexamination is rejected under 35 U.S.C. 103 on a U.S. patent or U.S. 
patent application publication which is not prior art under 35 U.S.C. 
102(b) in effect on March 15, 2013, and the inventions defined by the 
claims in the application or patent under reexamination and by the 
claims in the patent or published application are not identical but are 
not patentably distinct, and the inventions are owned by the same 
party, the applicant or owner of the patent under reexamination may 
disqualify the patent or patent application publication as prior art. 
The patent or patent application publication can be disqualified as 
prior art by submission of:
    (1) A terminal disclaimer in accordance with Sec.  1.321(c); and
    (2) An oath or declaration stating that the application or patent 
under reexamination and patent or published application are currently 
owned by the same party, and that the inventor named in the application 
or patent under reexamination is the prior inventor under 35 U.S.C. 104 
in effect on March 15, 2013.
    (d) The provisions of this section apply to applications for 
patent, and to any patent issuing thereon, that contains, or contained 
at any time:
    (1) A claim to a claimed invention that has an effective filing 
date as defined in 35 U.S.C. 100(i) that is before March 16, 2013; or
    (2) A specific reference under 35 U.S.C. 120, 121, or 365(c) to any 
patent or application that contains, or contained at any time, a claim 
to a claimed invention that has an effective filing date as defined in 
35 U.S.C. 100(i) that is before March 16, 2013.
    (e) In an application for patent to which the provisions of Sec.  
1.130 apply, and to any patent issuing thereon, the provisions of this 
section are applicable only with respect to a rejection under 35 U.S.C. 
102(g) in effect on March 15, 2013.


Sec. Sec.  1.293 through 1.297  [Removed]

    13. Sections 1.293 through 1.297 are removed.
    14. Section 1.321 is amended by revising the introductory text of 
paragraph (d) to read as follows:


Sec.  1.321  Statutory disclaimers, including terminal disclaimers.

* * * * *
    (d) A terminal disclaimer, when filed in a patent application or in 
a reexamination proceeding to obviate double patenting based upon a 
patent or application that is not commonly owned but resulted from 
activities undertaken within the scope of a joint research agreement 
under 35 U.S.C. 102(c), must:
* * * * *

    Dated: July 17, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2012-18121 Filed 7-25-12; 8:45 am]
BILLING CODE 3510-16-P