[Federal Register Volume 78, Number 31 (Thursday, February 14, 2013)]
[Rules and Regulations]
[Pages 11024-11059]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-03453]
[[Page 11023]]
Vol. 78
Thursday,
No. 31
February 14, 2013
Part IV
Department of Commerce
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United States Patent and Trademark Office
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37 CFR Part 1
Changes To Implement and Examination Guidelines for Implementing the
First Inventor To File Provisions of the Leahy-Smith America Invents
Act; Final Rules
Federal Register / Vol. 78 , No. 31 / Thursday, February 14, 2013 /
Rules and Regulations
[[Page 11024]]
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DEPARTMENT OF COMMERCE
United States 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: Final rule.
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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 U.S.
patent system from a ``first to invent'' system to a ``first inventor
to file'' system; treats U.S. patents and U.S. patent application
publications as prior art as of their earliest effective U.S., 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 United States Patent and Trademark Office (Office or USPTO) is
revising the rules of practice in patent cases for consistency with,
and to address the examination issues raised by, the changes in section
3 of the AIA.
DATES: Effective date: The changes in this final rule are effective on
March 16, 2013.
Applicability date: The changes to 37 CFR 1.55 and 1.78 apply to
any application filed under 35 U.S.C. 111 or 363 on or after March 16,
2013. The provisions of 1.17 and 37 CFR 1.293 through 1.297 as in
effect on March 15, 2013, apply to any request for a statutory
invention registration filed prior to March 16, 2013. New 37 CFR 1.109
applies to any application for patent, and to any patent issuing
thereon, 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, and to any application for
patent, and to any patent issuing thereon, that contains, or contained
at any time, 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.
FOR FURTHER INFORMATION CONTACT: Susy Tsang-Foster, Legal Advisor
(telephone (571) 272-7711; electronic mail message ([email protected])) or Linda S. Therkorn, Patent Examination Policy
Advisor (telephone (571) 272-7837; electronic mail message
([email protected])), of the 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 U.S. patent system from a ``first to 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 United
States 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. This final rule revises the rules of practice in title 37 of
the Code of Federal Regulations (CFR) for consistency with, and to
address the examination issues raised by, the changes in section 3 of
the AIA.
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 sections 2121 through 2146 (8th
ed. 2001) (Rev. 9, Aug. 2012) (MPEP). The Office is also issuing
guidelines and will be training the Patent Examining Corps on how the
changes to 35 U.S.C. 102 and 103 in section 3 of the AIA impact
examination procedure and the provisions of the MPEP pertaining to 35
U.S.C. 102 and 103.
Summary of Major Provisions: The Office is specifically adopting
the following changes:
The Office is adding definitions provided in the AIA to 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 a joint inventor or by
another 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. In response to public comment, the
Office has provided a more flexible approach for submission of an
affidavit or declaration with evidence of a prior public disclosure. In
response to similar comments regarding the prior public disclosure
exception provisions, the Office wants to highlight that there is no
requirement that the mode of disclosure by an inventor or joint
inventor be the same as the mode of disclosure of an intervening
disclosure (e.g., inventor discloses his invention at a trade show and
the intervening disclosure is in a peer-reviewed journal), as explained
in more detail in the examination guidelines. Additionally, there is no
requirement that the disclosure by the inventor or a joint inventor be
a verbatim or ipsissimis verbis disclosure of an intervening disclosure
in order for the exception based on a prior public disclosure of
subject matter by the inventor or a joint inventor to apply. The
guidelines also clarify that the exception applies to subject matter of
the intervening disclosure that is simply a more general description of
the subject matter previously publicly disclosed by the inventor or a
joint inventor.
The Office is providing 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 or an interim copy of the
foreign application be filed within the later of four months from the
actual filing date of the application filed under 35 U.S.C. 111(a) or
sixteen months from the filing date of the prior foreign application.
This requirement does not apply if: (1) The foreign application was
filed in a foreign intellectual property office participating with the
Office in a bilateral or multilateral priority document exchange
agreement (participating foreign intellectual property office); or (2)
a copy of the foreign application was filed in an application
subsequently filed in a participating foreign intellectual property
office that permits the Office to obtain such a copy, and the applicant
timely requests in a separate document that the Office retrieve such
copy from
[[Page 11025]]
the participating intellectual property office. The priority document
exchange program provides for the electronic transmission of priority
documents to and from participating foreign Intellectual Property
Offices (if applicant files a request and an authorization) without
payment of a fee. The current participating offices are the European
Patent Office (EPO), the Japan Patent Office (JPO), the Korean
Intellectual Property Office (KIPO), and the World Intellectual
Property Organization (WIPO).
The Office is eliminating the provisions directed to statutory
invention registrations.
Finally, the Office is adopting additional requirements for
nonprovisional applications filed on or after March 16, 2013, that
claim priority to or the benefit of the filing date of an earlier
application (i.e., foreign, provisional, or nonprovisional application,
or international application designating the United States of America)
that was filed prior to March 16, 2013. If such a nonprovisional
application 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
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. This procedure 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 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 (35
U.S.C. 102(a)(1)); 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 (35 U.S.C. 102(a)(2)). See 125 Stat. at 285-86. The
publication of an international application designating the United
States of America 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: (A) 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 (35 U.S.C. 102(b)(1)(A)); or (B) 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 (35 U.S.C. 102(b)(1)(B)). 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: (A)
The subject matter disclosed was obtained directly or indirectly from
the inventor or a joint inventor (35 U.S.C. 102(b)(2)(A)); (B) 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 (35 U.S.C. 102(b)(2)(B)); or (C) 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 (35 U.S.C. 102(b)(2)(C)).
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 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 under 35 U.S.C. 102(a)(2). 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
[[Page 11026]]
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).
AIA 35 U.S.C. 103 provides 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. AIA 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 has implemented the
patent derivation proceedings provided for in the AIA in a separate
rulemaking. See Changes To Implement Derivation Proceedings, 77 FR
56068 (Sept. 11, 2012). 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),
287, 305, 363, 374, and 375(a). See 125 Stat. at 287-88, and 290-91.
The AIA provides that the changes in section 3 that are being
implemented in this rulemaking take effect on March 16, 2013. See 125
Stat. at 293. The AIA also provides that the changes (other than the
repeal of 35 U.S.C. 157) in section 3 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 id.
The AIA also provides that the provisions of 35 U.S.C. 102(g), 135,
and 291 as 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.
General Discussion of the Changes From Proposed Rules
The Office published a notice of proposed rulemaking and a notice
of proposed examination guidelines on July 26, 2012, to implement the
first inventor to file provisions of section 3 of the AIA. See Changes
To Implement the First Inventor To File Provisions of the Leahy-Smith
America Invents Act, 77 FR 43742 (July 26, 2012) (notice of proposed
rulemaking), and Examination Guidelines for Implementing the First
Inventor To File Provisions of the Leahy-Smith America Invents Act, 77
FR 43759 (July 26, 2012) (notice of proposed examination guidelines).
The Office also conducted a roundtable discussion with the public on
September 6, 2012, to obtain public input from organizations and
individuals on issues relating to the Office's proposed implementation
of the first inventor to file provisions of the AIA. See Notice of
Roundtable on the Implementation of the First Inventor To File
Provisions of the Leahy-Smith America Invents Act, 77 FR 49427 (Aug.
16, 2012). The Office also conducted a number of roadshow presentations
in September of 2012 that included a discussion of the first inventor
to file provisions of the AIA. In view of the input from the public,
the Office is making the following changes to the proposed rules of
practice pertaining to the first inventor to file provisions in section
3 of the AIA in this final rule:
Changes to the Time Period for Submitting a Certified Copy of the
Foreign Priority Application: The Office proposed 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. See
Changes To Implement the First Inventor To File Provisions of the
Leahy-Smith America Invents Act, 77 FR at 43743, 43745, and 43754. The
Office received a number of comments indicating that the Office should
consider alternative means of ensuring that a copy of any priority
application is available. The Office is requiring in this final rule
that a 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,
but is also providing that this requirement does not apply if: (1) The
priority application was filed in a participating foreign intellectual
property office, or if a copy of the foreign application was filed in
an application subsequently filed in a participating foreign
intellectual property office that permits the Office to obtain such a
copy, and the Office either receives a copy of the foreign application
from the participating foreign intellectual property office or a
certified copy of the foreign application within the pendency of the
application and before the patent is granted; or (2) the applicant
provides an interim copy of the original foreign 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,
and files a certified copy of the foreign application within the
pendency of the application and before the patent is granted. The
Office is additionally providing a ``good cause'' exception in the rule
for a belated certified copy of the foreign application.
Changes To the Statements Required For Nonprovisional Applications
Claiming Priority to or the Benefit of an Application filed Prior to
March 16, 2013: The Office proposed two requirements for nonprovisional
applications filed on or after March 16, 2013, that claim priority to
or the benefit of the filing date of an earlier application (i.e.,
foreign, provisional, nonprovisional application, or international
application designating the United States of America) that was filed
prior to March 16, 2013 (transition
[[Page 11027]]
application). First, the Office proposed to require that if a
transition application 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
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. See Changes To Implement the
First Inventor To File Provisions of the Leahy-Smith America Invents
Act, 77 FR at 43743, 43745, 43747-48, and 43755-57. Second, the Office
proposed that if a transition 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 prior-
filed foreign, provisional, nonprovisional application, or
international application designating the United States of America, the
applicant must provide a statement that the later filed application
includes subject matter not disclosed in the prior-filed foreign,
provisional, nonprovisional application, or international application
designating the United States of America 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. See id. The Office received a number of
comments expressing various concerns with a requirement that an
applicant determine the effective filing date of the claims in his or
her application, and questioning the need for any such statement in an
application that never contained a claim to a claimed invention that
has an effective filing date on or after March 16, 2013.
The Office is providing in this final rule that a statement is
required only if a transition application contains, or contained at any
time, a claim to a claimed invention that has an effective filing date
on or after March 16, 2013. Thus, no statement is required if a
transition application discloses subject matter not also disclosed in
the prior-filed foreign, provisional, nonprovisional application, or
international application designating the United States of America but
does not ever contain a claim to a claimed invention that has an
effective filing date on or after March 16, 2013. The Office is also
providing that an applicant is not required to provide such a statement
if the applicant reasonably believes on the basis of information
already known to the individuals designated as having a duty of
disclosure with respect to the application that the transition
application does not, and did not at any time, contain a claim to a
claimed invention that has an effective filing date on or after March
16, 2013. Thus, an applicant in this situation is not required to
conduct any additional investigation or analysis to determine the
effective filing date of the claims in their applications.
Changes To Affidavits or Declarations Showing a Prior Disclosure by
an Inventor or Another Who Obtained the Subject Matter From an
Inventor: The Office proposed setting out the standard for a successful
affidavit or declaration where the disclosure is the inventor's own
work (i.e., a satisfactory showing that the inventor or a joint
inventor is in fact the inventor of the subject matter of the
disclosure) and where the disclosure was by another who obtained the
subject matter disclosed directly or indirectly from the inventor or a
joint inventor (i.e., showing that the inventor or a joint inventor is
the inventor of the subject matter disclosed and directly or indirectly
communicated the subject matter disclosed to another) in the rules of
practice. See Changes To Implement the First Inventor To File
Provisions of the Leahy-Smith America Invents Act, 77 FR at 43743,
43749-51, and 43758-59. The Office also proposed to require the
applicant to file a petition for a derivation proceeding if a 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. See
Changes To Implement the First Inventor To File Provisions of the
Leahy-Smith America Invents Act, 77 FR at 43751 and 43759. The Office
received a number of comments suggesting that a procedural provision
should not set out the standard for a successful affidavit or
declaration and suggesting that the Office should not require an
applicant to file a petition for a derivation proceeding. The Office is
revising the provision in this final rule to simply specify: (1) When
an affidavit or declaration of attribution or prior public disclosure
may be used to disqualify a disclosure as prior art; and (2) the
procedural requirements for such an affidavit or declaration. The
Office is also replacing the provision that the Office may require the
applicant to file a petition for a derivation proceeding with a
provision indicating that such an affidavit or declaration may not be
available to overcome a rejection when the affidavit or declaration
contends that an inventor named in the U.S. patent or U.S. patent
application publication derived the claimed invention from the inventor
or a joint inventor named in the application or patent, and that in
such a case, an applicant or a patent owner may file a petition for a
derivation proceeding.
The Office has sought to address the concerns of its stakeholders
as expressed in the public comment, and plans to seek additional public
comment on the rules of practice pertaining to the first inventor to
file provisions of section 3 of the AIA after the Office and the public
have gained experience with the rules of practice pertaining to the
first inventor to file provisions in operation.
Discussion of Specific Rules
The following is a discussion of the amendments to Title 37 of the
Code of Federal Regulations, part 1, in this final rule.
Section 1.9: Section 1.9 is amended to add the definition of the
terms used throughout the rules.
Section 1.9(d)(1) 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) 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) provides that the term ``claimed invention'' as used
in this chapter means the subject matter
[[Page 11028]]
defined by a claim in a patent or an application for a patent. See 35
U.S.C. 100(j).
Section 1.14: Section 1.14(f) is amended to correct the spelling of
the word ``proprietary.''
Section 1.17: Section 1.17 is amended to eliminate the provisions
pertaining to statutory invention registrations in Sec. 1.17(g), (n),
and (o). See discussion of the provisions of Sec. Sec. 1.293 through
1.297.
Sections 1.17(g) and (i) are also amended for consistency with the
changes to Sec. 1.55. See discussion of Sec. 1.55.
Section 1.53: Section 1.53(b) is amended for consistency with the
reorganization of Sec. 1.78. See discussion of Sec. 1.78.
Section 1.53(c) is amended to eliminate the provisions pertaining
to statutory invention registrations. See discussion of the provisions
of Sec. Sec. 1.293 through 1.297.
Section 1.53(j) is removed as the provisions of Sec. 1.53 pertain
to applications filed under 35 U.S.C. 111 and the discussion of former
Sec. 1.53(j) pertained to applications filed under the Patent
Cooperation Treaty (PCT).
Section 1.55: Section 1.55 is reorganized into paragraphs (a)
through (l) for clarity.
Section 1.55(a) provides generally that an applicant in a
nonprovisional application may claim priority to 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) and Sec. 1.55.
Section 1.55(b) provides that the nonprovisional application must
be filed not later than twelve months (six months in the case of a
design application) after the date on which the foreign application was
filed, or that the nonprovisional application is entitled to claim the
benefit under 35 U.S.C. 120, 121, or 365(c) of an application that was
filed not later than twelve months (six months in the case of a design
application) after the date on which the foreign application was filed.
See MPEP Sec. 201.13. While section 3(g)(1) of the AIA amended 35
U.S.C. 172 to eliminate the reference to ``the time specified in
section 102(d)'' in view of the elimination of the premature foreign
patenting provisions of pre-AIA 35 U.S.C. 102(d), the AIA did not
otherwise change the provision in 35 U.S.C. 172 that the right of
priority provided for by 35 U.S.C. 119(a) through (d) shall be six
months in the case of designs. See MPEP Sec. 1504.10. Section 1.55(b)
also provides that this twelve-month period is subject to 35 U.S.C.
21(b) (and Sec. 1.7(a)) and PCT Rule 80.5, and the six-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 an action
(e.g., filing a nonprovisional application within twelve months of the
date on which the foreign application was filed) or paying a 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. PCT Rule 80.5 has similar
provisions relating to the expiration of any period during which any
document or fee in an international application must reach a national
Office or intergovernmental organization.
Section 1.55(c) pertains to the time for filing a priority claim
and certified copy of a foreign application in an international
application entering the national stage under 35 U.S.C., which
corresponds to former Sec. 1.55(a)(1)(ii). Section 1.55(c) provides
that in an international application entering the national stage under
35 U.S.C., the claim for priority must be made and a certified copy of
the foreign application must be filed within the time limit set forth
in the PCT and the Regulations under the PCT. Note that it is
permissible, but not required under Sec. 1.55(c), to present the claim
for priority in an application data sheet in an international
application entering the national stage under 35 U.S.C.
Section 1.55(d) pertains to the time for filing a priority claim in
an application filed under 35 U.S.C. 111(a).
Section 1.55(d) 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 48776, 48818 (Aug. 14, 2012). Section 1.55(d) does
not include the requirement of former Sec. 1.55(a)(1)(i) for an
identification of any foreign application for the same subject matter
having a filing date before that of the application for which priority
is claimed, but otherwise contains the provisions of former Sec.
1.55(a)(1)(i).
Section 1.55(d) does not provide for an application under 35 U.S.C.
111(b) because an application under 35 U.S.C. 111(b) may not claim
priority to or the benefit of an earlier filed application. See 35
U.S.C. 111(b)(7).
Section 1.55(e) pertains to a waiver of claims for priority and
acceptance of unintentionally delayed claims for priority under 35
U.S.C. 119(a) through (d) or (f), or 365(a) in an application filed
under 35 U.S.C. 111(a). Section 1.55(e) also requires that a petition
to accept a delayed claim for priority be accompanied by a certified
copy of the foreign application if required by Sec. 1.55(f), unless
previously submitted. Section 1.55(h)(4) permits applicants to request
in a separate document that the Office obtain a copy of the foreign
application that was filed in a nonparticipating intellectual property
office from a participating intellectual property office that permits
the Office to obtain such a copy to be filed with a petition under
Sec. 1.55(e), and Sec. 1.55(i)(1) permits an interim copy to be filed
with a petition under Sec. 1.55(e). Section 1.55(e) otherwise contains
the provisions of former Sec. 1.55(c).
Section 1.55(f) pertains to the time for filing a certified copy of
the foreign application in an application filed under 35 U.S.C. 111(a).
Section 1.55(f) provides that in an original application filed under 35
U.S.C. 111(a), a certified copy of the foreign application must 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, except as provided in Sec. 1.55(h) or (i).
Section 1.55(f) also provides that the time period in Sec. 1.55(f)
does not apply in a design application. Since U.S. patent application
publications (as well as U.S. patents) 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 AIA 35
U.S.C. 102, the Office needs to ensure that it has a copy of the
priority application by the time of publication. The 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(f) further provides that if a certified copy of the
foreign application is not 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, and the exceptions in
Sec. 1.55(h) and (i) are not applicable, the certified copy of the
foreign application must be accompanied by a petition including a
showing of good and sufficient cause for the delay and the petition fee
set forth in Sec. 1.17(g). The Office is including a provision in
Sec. 1.55(f) to provide for the belated filing of a certified copy of
the foreign application to provide a lower standard (good and
sufficient cause versus an extraordinary situation) and lower fee ($200
petition fee set forth in Sec. 1.17(g) versus the $400 petition fee
set forth in
[[Page 11029]]
Sec. 1.17(f)) than would otherwise be applicable for a petition under
Sec. 1.183 to waive or suspend a requirement of the regulations in
such a situation.
Section 1.55(g) provides requirements for filing a priority claim,
certified copy of foreign application, and translation that are
applicable in all applications.
Section 1.55(g)(1) corresponds to the provisions of former Sec.
1.55(a)(2). Section 1.55(g)(1) provides that 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 in or received by
the Office within the pendency of the application and before the patent
is granted. Section 1.55(g) does not in any way supersede the timing
requirements of Sec. 1.55(c) through (f) for a claim for priority and
the certified copy of the foreign application. Section 1.55(g)(1)
simply indicates that the claim for priority and the certified copy of
the foreign application must be filed in or received by the Office
within the pendency of the application and before the patent is granted
in all situations. For example, if a petition to accept a delayed claim
for priority is filed under Sec. 1.55(e), 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. Section 1.55(g)(1) also provides that 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 also 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.
Section 1.55(g)(2) corresponds to the provisions of former Sec.
1.55(a)(3). Section 1.55(g)(2) provides that the Office may require
that the claim for priority and the certified copy of the foreign
application be filed earlier than otherwise provided in Sec. 1.55: (1)
When the application is involved in an interference (see Sec. 41.202
of this title) or derivation (see part 42 of this title) proceeding;
(2) when necessary to overcome the date of a reference relied upon by
the examiner; or (3) when deemed necessary by the examiner.
Notwithstanding the time period requirement of 1.55(f), this provision
is still needed to provide for 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).
Section 1.55(g)(3) corresponds to the provisions of former Sec.
1.55(a)(4)(i). Section 1.55(g)(3) provides that an English language
translation of a non-English language foreign application is not
required except: (1) When the application is involved in an
interference (see Sec. 41.202 of this title) or derivation (see part
42 of this title) proceeding; (2) when necessary to overcome the date
of a reference relied upon by the examiner; or (3) when specifically
required by the examiner.
Section 1.55(g)(4) corresponds to the provisions of former Sec.
1.55(a)(4)(ii). Section 1.55(g)(4) provides that 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.
Section 1.55(h) provides that the requirement in Sec. 1.55(c),
(f), and (g) for a certified copy of the foreign application to be
filed within the time limit set forth in Sec. 1.55(c), (f), and (g)
will be considered satisfied if the Office receives a copy of the
priority document through the priority document exchange program within
the period specified in Sec. 1.55(g)(1). See Changes To Implement
Priority Document Exchange Between Intellectual Property Offices, 72 FR
1664 (Jan. 16, 2007). Section 1.55(h) specifically provides that this
requirement for a timely filed certified copy of the foreign
application will be considered satisfied if: (1) The foreign
application was filed in a foreign intellectual property office
participating with the Office in a bilateral or multilateral priority
document exchange agreement (participating foreign intellectual
property office); (2) the claim for priority is presented in an
application data sheet (Sec. 1.76(b)(6)), identifying the foreign
application for which priority is claimed, by specifying the
application number, country (or intellectual property authority), day,
month, and year of its filing, and including the information necessary
for the participating foreign intellectual property office to provide
the Office with access to the foreign application; and (3) the copy of
the foreign application is received by the Office from the
participating foreign intellectual property office, or a certified copy
of the foreign application is filed, within the pendency of the
application and before the patent is granted (as set forth in Sec.
1.55(g)(1)).
Section 1.55 no longer requires that a request that the Office
obtain a copy of the foreign application 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 if the foreign
application was filed in a participating foreign intellectual property
office. This is because the Office treats a priority claim (presented
in an application data sheet) to an application filed in a
participating foreign intellectual property office as such a request,
and any priority claim must be filed within the later of four months
from the filing date of the application filed under 35 U.S.C. 111(a) or
sixteen months from the filing date of the foreign application (except
as provided in Sec. 1.55(e)).
Section 1.55(h) also provides that if the foreign application was
not filed in a participating foreign intellectual property office, but
a copy of the foreign application was filed in an application
subsequently filed in a participating foreign intellectual property
office that permits the Office to obtain such a copy, the applicant
must also file a request in a separate document that the Office obtain
a copy of the foreign application from the participating intellectual
property office. This request must identify the participating
intellectual property office and the application number and filing date
of the subsequent application in which a copy of the foreign
application was filed, and be filed within the later of sixteen months
from the filing date of the prior foreign application or four months
from the actual filing date of an application under 35 U.S.C. 111(a),
within four months from the later of the date of commencement (Sec.
1.491(a)) or the date of the initial submission under 35 U.S.C. 371 in
an application entering the national stage under 35 U.S.C. 371, or with
a petition under Sec. 1.55(e). Applicants can use Form PTO/SB/38
(Request to Retrieve Electronic Priority Application(s)) to file such a
request.
The Office has provided information concerning the priority
document exchange program on its Internet Web site (www.uspto.gov).
This information includes the intellectual property offices that
participate in the priority document exchange program, as well as the
information necessary for each participating foreign intellectual
property office to provide the Office with access to the foreign
application.
The Office appreciates that an applicant may discover that the
Office will not receive a copy of a foreign application through the
priority
[[Page 11030]]
document exchange program until after the expiration of the time frame
specified in Sec. 1.55(f). In this situation, an applicant who
otherwise meets the conditions of Sec. 1.55(h) may satisfy the
requirement of Sec. 1.55(h)(3) by filing a certified copy of the
foreign application in the Office within the pendency of the
application and before the patent is granted.
Note that the Office cannot obtain a copy of a design application
to which priority is claimed, or a foreign application to which
priority is claimed in a design application, through the priority
document exchange program. In addition, note that the Office can obtain
a PCT application to which priority is claimed through the priority
document exchange program for PCT applications filed in a limited
number of PCT Receiving Offices (currently, RO/DK (Denmark), RO/FI
(Finland), RO/IB (International Bureau), and RO/SE (Sweden)).
Applicants continue to bear the ultimate responsibility for
ensuring that the priority document is filed by the time required under
Sec. 1.55(g)(1). Accordingly, applicants are encouraged to check as
necessary to confirm receipt by the Office of appropriate documents.
Priority documents retrieved from a participating foreign intellectual
property office will bear the document description: ``Priority
documents electronically retrieved by USPTO from a participating IP
Office.''
Section 1.55(i) permits an applicant to provide an ``interim copy''
of the original foreign application from the applicant's own records to
provide for the situation in which the applicant cannot obtain a
certified copy of the foreign application within the time limit set
forth in Sec. 1.55(f), although there is no requirement that an
applicant be unable to obtain a certified copy of the foreign
application within the time limit set forth in Sec. 1.55(f) to use
Sec. 1.55(i). Section 1.55(i) provides that the requirement in Sec.
1.55(f) for a certified copy of the foreign application to be filed
within the time limit set forth in Sec. 1.55(f) will be considered
satisfied if the applicant files a copy of the original foreign
application clearly labeled as ``Interim Copy,'' including the
specification, and any drawings or claims upon which it is based.
Section 1.55(i) also provides that the interim copy of the foreign
application must be filed together with a separate cover sheet
identifying the foreign application by specifying the application
number, country (or intellectual property authority), day, month, and
year of its filing, and stating that the copy filed in the Office is a
true copy of the original application as filed in the foreign country
(or intellectual property authority). Section 1.55(i) also provides
that the interim copy of the foreign application and cover sheet must
be filed within the later of sixteen months from the filing date of the
prior foreign application or four months from the actual filing date of
an application under 35 U.S.C. 111(a), or with a petition under Sec.
1.55(e). Section 1.55(i) finally provides that a certified copy of the
foreign application ultimately must be filed within the period
specified in Sec. 1.55(g)(1). Thus, providing an interim copy of a
foreign application under Sec. 1.55(i) satisfies the requirement for a
certified copy of the foreign application to be filed within the time
limit set forth in Sec. 1.55(f), but a certified copy of the foreign
application must still be filed before a patent is granted.
Section 1.55(j) pertains to applications filed on or after March
16, 2013, that claim priority to a foreign application filed prior to
March 16, 2013. Section 1.55(j) provides that if a nonprovisional
application filed on or after March 16, 2013, claims priority to 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 nonprovisional 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 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 nonprovisional application.
Section 1.55(j) further provides that an applicant is not required to
provide such a statement if the applicant reasonably believes on the
basis of information already known to the individuals designated in
Sec. 1.56(c) that the nonprovisional application does not, and did not
at any time, contain a claim to a claimed invention that has an
effective filing date on or after March 16, 2013.
This information is needed to assist the Office in determining
whether the nonprovisional application is subject to AIA 35 U.S.C. 102
and 103 or pre-AIA 35 U.S.C. 102 and 103. If the Office must determine
on its own the effective filing date of every claim ever presented in a
nonprovisional 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, the time required to examine an application will
significantly increase. This in turn would result in an inefficient
examination process that leads to increased examination costs, higher
patent pendency, and/or reduced patent quality. The applicant, on the
other hand, should be far more familiar with the contents of both the
transition application and its priority or benefit application(s) than
the examiner. Therefore, the Office is requiring the applicant, who is
in the best position to know the effective filing date of each claimed
invention, to indicate whether application contains, or contained at
any time, a claimed invention that has an effective filing date on or
after March 16, 2013.
This provision is tailored to the transition to 35 U.S.C. 102 and
103 under the AIA. For a nonprovisional application filed on or after
March 16, 2013, that claims priority to a foreign application, the
applicant would not be required to provide any statement if: (1) The
nonprovisional application claims only subject matter disclosed in a
foreign application filed prior to March 16, 2013; or (2) the
nonprovisional application claims only priority to a foreign
application filed on or after March 16, 2013. Section 1.55(j) also does
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. Section 1.55(j) requires 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.
The Office may issue a requirement for information under Sec.
1.105 if an applicant takes conflicting positions on whether an
application contains, or contained at any time, a claim to a claimed
invention having an effective filing date on or after March 16, 2013.
For example, the Office may require the applicant to identify where
there is written description support under 35 U.S.C. 112(a) in the pre-
AIA application for each claim if an applicant provides the statement
under Sec. 1.55(j) but later argues that the application should have
been examined as a pre-AIA application because the application does not
actually contain a claim to a claimed invention having an effective
filing date on or after March 16, 2013. The Office would not issue a
requirement for information under Sec. 1.105 simply because of a
disagreement with the applicant's statement under Sec. 1.55(j) or the
lack of such a statement.
[[Page 11031]]
Section 1.55(k) contains the provisions of former Sec. 1.55(b).
Section 1.55(l) provides that the time periods set forth in Sec.
1.55 are not extendable. This is not a change from former practice,
under which the time periods set forth in Sec. 1.55 are not
extendable. This provision simply avoids the need to separately state
that a time period is not extendable with respect to each time period
set forth in Sec. 1.55.
As it is now more than a decade since the implementation of
eighteen-month publication in November of 2000, and as the changes in
this final rule to Sec. 1.55 do not apply to applications filed before
March 16, 2013, the language in former Sec. 1.55 itself that certain
time periods therein do not apply to an application filed under 35
U.S.C. 111(a) before November 29, 2000, or to an international
application filed under 35 U.S.C. 363 before November 29, 2000, has
been deleted.
Section 1.71: Section 1.71(g)(1) is amended to remove reference to
pre-AIA 35 U.S.C. 103(c)(2)(C) which provided for the names of the
parties to a joint research agreement in the application for patent and
is replaced by a reference to the definition of a joint research
agreement (JRA) as set forth in Sec. 1.9(e) in order to provide for
both pre-AIA and AIA applications and patents.
Section 1.76: Sections 1.76(b)(5) and (b)(6) are amended for
consistency with the changes to and reorganization of Sec. Sec. 1.55
and 1.78. See discussion of Sec. Sec. 1.55 and 1.78.
Section 1.77: Section 1.77(b) is 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 a preferred arrangement of the
specification of a patent application. An applicant is not required to
use the format specified in Sec. 1.77 or identify in the specification
any prior disclosures by the inventor or a joint inventor, 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 1.77(b)(2) is amended to delete the parenthetical ``(unless
included in the application data sheet)'' for consistency with Sec.
1.78(c)(5).
Section 1.78: Section 1.78 is reorganized as follows: (1) Sec.
1.78(a) 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) 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) 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) 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) contains provisions relating to applications
containing patentably indistinct claims; (6) Sec. 1.78(f) contains
provisions relating to applications or patents under reexamination
naming different inventors and containing patentably indistinct claims;
and (7) Sec. 1.78(g) provides that the time periods set forth in Sec.
1.78 are not extendable. In addition, as it is now more than a decade
since the implementation of eighteen-month publication in November of
2000, and as the changes in this final rule to Sec. 1.78 do not apply
to applications filed before March 16, 2013, the language in former
Sec. 1.78 that certain time periods therein do not apply to an
application filed under 35 U.S.C. 111(a) before November 29, 2000, or
to an international application filed under 35 U.S.C. 363 before
November 29, 2000, has been deleted.
Section 1.78(a) addresses claims under 35 U.S.C. 119(e) for the
benefit of one or more prior-filed provisional applications. Section
1.78(a) contains the provisions of former Sec. 1.78(a)(4) and (a)(5)
except as otherwise discussed in this final rule.
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 as to such invention. 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, does not
require (as did former 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. 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. 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 AIA 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. In contrast, the
prior-filed application must describe the subject matter for the later-
filed application to be considered effectively filed under AIA 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) provides that a nonprovisional application
(other than a design 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, or that the nonprovisional application or international
application designating the United States of America be entitled to
claim the benefit under 35 U.S.C. 120, 121, or 365(c) of an application
that was filed not later than twelve months after the date on which the
provisional application was filed. Section 1.78(a)(1) also provides
that this twelve-month period is subject to 35 U.S.C. 21(b) (and Sec.
1.7(a)). As discussed previously, 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 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)(2) provides that each prior-filed provisional
application must name the inventor or a joint inventor named in the
later--filed application as the inventor or a joint inventor.
Section 1.78(a)(2) and (c)(2) require the reference to each prior-
filed application to be included in an
[[Page 11032]]
application data sheet. See Changes To Implement the Inventor's Oath or
Declaration Provisions of the Leahy-Smith America Invents Act, 77 FR at
48820.
Section 1.78(a)(6) requires 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 nonprovisional 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 nonprovisional
application. Section 1.78(a)(6) further provides that an applicant is
not required to provide such a statement if the applicant reasonably
believes on the basis of information already known to the individuals
designated in Sec. 1.56(c) that the nonprovisional application does
not, and did not at any time, contain a claim to a claimed invention
that has an effective filing date on or after March 16, 2013.
This information is needed to assist the Office in determining
whether the nonprovisional application is subject to AIA 35 U.S.C. 102
and 103 or pre-AIA 35 U.S.C. 102 and 103. As discussed previously, if
the Office must determine on its own the effective filing date of every
claim ever presented in a nonprovisional 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, the time required to examine
an application will significantly increase. This in turn would result
in an inefficient examination process that leads to increased
examination costs, higher patent pendency, and/or reduced patent
quality. The applicant, on the other hand, should be far more familiar
with the contents of both the transition application and its priority
or benefit application(s) than the examiner. Therefore, the Office is
requiring the applicant, who is in the best position to know the
effective filing date of each claimed invention, to indicate whether
application contains, or contained at any time, a claim to a claimed
invention that has an effective filing date on or after March 16, 2013.
This 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. Section 1.78(a)(6) also does 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. Section
1.78(a)(6) requires 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.
The Office may issue a requirement for information under Sec.
1.105 if an applicant takes conflicting positions on whether an
application contains, or contained at any time, a claim to a claimed
invention having an effective filing date on or after March 16, 2013.
For example, the Office may require the applicant to identify where
there is written description support under 35 U.S.C. 112(a) in the pre-
AIA application for each claim to a claimed invention if an applicant
provides the statement under Sec. 1.78(a)(6), but later argues that
the application should have been examined as a pre-AIA application
because the application does not actually contain a claim to a claimed
invention having an effective filing date on or after March 16, 2013.
Section 1.78(b) 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 former Sec.
1.78(a)(6).
Section 1.78(c) 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 designating the United
States of America. Section 1.78(c)(1) provides that each prior-filed
application must name the inventor or a joint inventor named in the
later-filed application as the inventor or a joint inventor. 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
pendency of the application (provisions from former Sec. 1.78(a)(1)).
Section 1.78(c) does not contain a provision (as did former Sec.
1.78(a)(1)) 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
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 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 section 201.11.
Section 1.78(c)(3) through (5) contain the provisions of former
Sec. 1.78(a)(2). Section 1.78(c)(5) 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(c)(6) requires that if a nonprovisional application
filed on or after March 16, 2013, claims the benefit of the filing date
of a nonprovisional application or an international application
designating the United States of America 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
[[Page 11033]]
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
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 later-filed application. Section 1.78(c)(6) further provides
that an applicant is not required to provide such a statement if the
application claims the benefit of a nonprovisional application in which
a statement under Sec. 1.55(j), Sec. 1.78(a)(6), or Sec. 1.78(c)(6)
that the application contains, or contained at any time, a claim to a
claimed invention that has an effective filing date on or after March
16, 2013, has been filed (as an application that contains, or contained
at any time, a specific reference under 35 U.S.C. 120, 121, or 365(c)
to any patent or an application that is subject to AIA 35 U.S.C. 102
and 103 is itself subject to AIA 35 U.S.C. 102 and 103). Section
1.78(c)(6) also further provides that an applicant is not required to
provide such a statement if the applicant reasonably believes on the
basis of information already known to the individuals designated in
Sec. 1.56(c) that the later filed application does not, and did not at
any time, contain a claim to a claimed invention that has an effective
filing date on or after March 16, 2013.
This information is needed to assist the Office in determining
whether the nonprovisional application is subject to AIA 35 U.S.C. 102
and 103 or pre-AIA 35 U.S.C. 102 and 103. As discussed previously, if
the Office must determine on its own the effective filing date of every
claim ever presented in a nonprovisional application filed on or after
March 16, 2013, that claims priority to or the benefit of a
nonprovisional application or an international application designating
the United States of America filed prior to March 16, 2013, the time
required to examine an application will significantly increase. This in
turn would result in an inefficient examination process that leads to
increased examination costs, higher patent pendency, and/or reduced
patent quality. The applicant, on the other hand, should be far more
familiar with the contents of both the transition application and its
priority or benefit application(s) than the examiner. Therefore, the
Office is requiring the applicant, who is in the best position to know
the effective filing date of each claimed invention, to indicate
whether application contains, or contained at any time, a claim to a
claimed invention that has an effective filing date on or after March
16, 2013.
This 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 or an international application designating
the United States of America, 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 or international application designating the United States
of America filed prior to March 16, 2013; or (2) the nonprovisional
application claims only the benefit of the filing date of a
nonprovisional application or an international application designating
the United States of America filed on or after March 16, 2013. Section
1.78(c)(6) also does 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 or international application designating the United States
of America. Section 1.78(c)(6) requires 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.
The Office may issue a requirement for information under Sec.
1.105 if an applicant takes conflicting positions on whether a
nonprovisional application contains, or contained at any time, a claim
to a claimed invention having an effective filing date on or after
March 16, 2013. For example, the Office may require the applicant to
identify where there is written description support under 35 U.S.C.
112(a) in the pre-AIA application for each claim to a claimed invention
if an applicant provides the statement under Sec. 1.78(c)(6) but later
argues that the application should have been examined as a pre-AIA
application because the application does not actually contain a claim
to a claimed invention having an effective filing date on or after
March 16, 2013. The Office would not issue a requirement for
information under Sec. 1.105 simply because of a disagreement with the
applicant's statement under Sec. 1.78(c)(6) or the lack of such a
statement.
Section 1.78(d) 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) contains
the provisions of former Sec. 1.78(a)(3).
Section 1.78(e) contains the provisions of former Sec. 1.78(b)
pertaining to applications containing ``conflicting'' claims. Section
1.78(e), however, uses the term ``patentably indistinct'' rather than
``conflicting'' for clarity as the term ``conflicting'' is not
otherwise employed in the rules of practice. See Changes To Implement
Derivation Proceedings, 77 FR at 56070, 56071-72, and 56090 (adding new
Sec. 42.401, which includes defining same or substantially the same as
meaning patentably indistinct).
Section 1.78(f) addresses applications or patents under
reexamination that name different inventors and contain patentably
indistinct claims. The provisions are similar to the provisions of
former Sec. 1.78(c), but the language has been amended to refer to
``on its effective filing date (as defined in Sec. 1.109) or on its
date of invention, as applicable'' in place of ``at the time the later
invention was made'' to provide for both AIA applications (under the
``first inventor to file'' system) and pre-AIA applications. Section
1.78(f) likewise uses the term ``patentably indistinct'' rather than
``conflicting'' for clarity.
Section 1.78(g) provides that the time periods set forth in Sec.
1.78 are not extendable.
Section 1.84: Section 1.84(a) is amended to eliminate the
provisions pertaining to statutory invention registrations. See
discussion of the provisions of Sec. Sec. 1.293 through 1.297.
Section 1.103: Section 1.103(g) is removed to eliminate the
provisions pertaining to statutory invention registrations. See
discussion of the provisions of Sec. Sec. 1.293 through 1.297.
Section 1.104: Section 1.104(c)(4) is amended to include the
provisions that pertain to commonly owned or joint research agreement
subject matter for applications and patents subject to AIA 35 U.S.C.
102 and 103. Specifically, Sec. 1.104(c)(4) 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) is applicable to applications and patents that are subject
to AIA 35 U.S.C. 102 and 103.
Section 1.104(c)(4)(i) provides that subject matter which would
otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) and a
claimed invention will be treated as commonly owned for purposes of AIA
35 U.S.C. 102(b)(2)(C) if the applicant or patent owner provides a
statement to the effect that the subject matter and the claimed
invention, not later than the effective
[[Page 11034]]
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) addresses joint research agreements and
provides that subject matter which would otherwise qualify as prior art
under AIA 35 U.S.C. 102(a)(2) and a claimed invention will be treated
as commonly owned for purposes of AIA 35 U.S.C. 102(b)(2)(C) on the
basis of a joint research agreement under AIA 35 U.S.C. 102(c) if: (1)
The applicant or patent owner provides a statement to the effect that
the subject matter 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 amended to include the provisions that
pertain to commonly owned or joint research agreement subject matter
for applications and patents 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) is applicable to applications and patents that are subject
to 35 U.S.C. 102 and 103 in effect prior to March 16, 2013.
Section 1.104(c)(5)(i) 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 filed on or
after November 29, 1999, or any patent issuing thereon, in an
application filed before November 29, 1999, but pending on December 10,
2004, or any patent issuing thereon, or in any 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
or patent owner provides a statement to the effect that the subject
matter 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) 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 pending on or after December 10,
2004, or in any 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 or patent owner provides a statement to the effect that
the subject matter 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 (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. Sections 1.104(c)(4)(ii) and
1.104(c)(5)(ii) make 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 is referencing the definition of joint research
agreement in 35 U.S.C. 100(h) in Sec. 1.104(c)(4)(ii) and (c)(5)(ii)
for simplicity.
Section 1.104(c)(6) is 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 former Sec. 1.104(c)(5) pertain to statutory
invention registrations and are thus removed. See discussion of the
provisions of Sec. Sec. 1.293 through 1.297.
Section 1.109: Section 1.109 is added to specify the effective
filing date of a claimed invention under the AIA. Section 1.109(a)
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 a right of priority 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) 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 1.109 applies to any application for patent, and to any
patent issuing thereon, 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, and to
any application for patent, and to any patent issuing thereon, that
contains, or contained at any time, 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.
Section 1.110: Section 1.110 is revised to provide for both AIA
applications and pre-AIA applications. Section 1.110 specifically
provides that when one or more joint inventors are named in an
application or patent, the Office may require an applicant or patentee
to identify the inventorship and ownership or obligation to assign
ownership, of each claimed invention on its effective filing date (as
defined in Sec. 1.109) or on its date of invention, as applicable,
when necessary for purposes of an Office proceeding. Section 1.110 is
amended to change the ownership inquiry to ownership: (1) On its
effective filing date (as defined in Sec. 1.109), which would be
applicable to AIA applications; or (2) on its date of invention, which
would be applicable to pre-AIA applications. Section 1.110 further
provides that the Office may also require an applicant or patentee to
identify the invention dates of the subject matter of each claim when
necessary for purposes of an Office proceeding, which would be
applicable to pre-AIA applications.
Section 1.130: Section 1.130 is amended to implement the exceptions
provided under AIA 35 U.S.C. 102(b) by replacing its existing
provisions (which are relocated to Sec. 1.131) with provisions for:
(1) Disqualifying a disclosure as prior art by establishing that the
disclosure was by the inventor or a joint inventor or is a disclosure
of the inventor's or a joint inventor's own work (affidavit or
declaration of attribution); and (2) disqualifying a disclosure as
prior art by establishing that there was a prior public disclosure of
the subject matter disclosed by the inventor or a joint inventor or
that there was a prior public disclosure by another of the inventor's
or a joint inventor's own work (affidavit or declaration of prior
public disclosure). Thus, Sec. 1.130 applies to applications for
patent (and patents issuing thereon) that are subject
[[Page 11035]]
to AIA 35 U.S.C. 102 and 103, and Sec. 1.131 would apply to
applications for patent (and patents issuing thereon) that are subject
to pre-AIA 35 U.S.C. 102 and 103 (35 U.S.C. 102 and 103 as in effect on
March 15, 2013, prior to the effective date of section 3 of the AIA).
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)
as in effect on March 15, 2013.
Section 1.130 provides a mechanism for filing an affidavit or
declaration to establish that a disclosure is not prior art in
accordance with AIA 35 U.S.C. 102(b). Section 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 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
54604, 54640 (Sept. 8, 2000) (discussing procedural nature of
Sec. Sec. 1.131 and 1.132). The examination guidelines will discuss
the standard for evaluating the sufficiency of an affidavit or
declaration attributing the disclosure or subject matter disclosed as
the inventor's or a joint inventor's own work and the sufficiency of an
affidavit or declaration of a prior public disclosure of the subject
matter disclosed as the inventor's or a joint inventor's own work.
Section 1.130(a) provides that 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 disqualify a
disclosure as prior art by establishing that the disclosure was made by
the inventor or a joint inventor, or the subject matter disclosed was
obtained directly or indirectly from the inventor or a joint inventor.
Section 1.130(a) pertains to the provisions of subparagraph (A) of AIA
35 U.S.C. 102(b)(1) and (b)(2). AIA 35 U.S.C. 102(b)(1)(A) provides
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 AIA 35 U.S.C. 102(a)(1) if 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, and AIA 35 U.S.C. 102(b)(2)(A) provides that a disclosure
shall not be prior art to a claimed invention under AIA 35 U.S.C.
102(a)(2) if the subject matter disclosed was obtained directly or
indirectly from the inventor or a joint inventor. In these situations,
the applicant or patent owner is attempting to show that: (1) The
disclosure was made by the inventor or a joint inventor; or (2) the
subject matter disclosed was obtained directly or indirectly from the
inventor or a joint inventor.
Affidavits or declarations seeking to attribute an activity, a
reference, or part of a reference to the applicant to show that the
activity or reference is not available as prior art under pre-AIA 35
U.S.C. 102(a) have been treated as affidavits or declarations under
Sec. 1.132. See MPEP Sec. 716.10. Affidavits or declarations of
attribution in pre-AIA applications remain as affidavits or
declarations under Sec. 1.132. Thus, the Office will treat affidavits
or declarations of attribution in AIA applications as affidavits or
declarations under Sec. 1.130, and affidavits or declarations of
attribution in pre-AIA applications as affidavits or declarations under
Sec. 1.132, regardless of whether the affidavit or declaration is
designated as an affidavit or declaration under Sec. Sec. 1.130,
1.131, or 1.132.
Section 1.130(b) provides that 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 disqualify a
disclosure as prior art by establishing that the subject matter
disclosed had, before such disclosure was made or before such subject
matter was effectively filed, 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.
Section 1.130(b) pertains to the provisions of subparagraph (B) of AIA
35 U.S.C. 102(b)(1) and (b)(2). AIA 35 U.S.C. 102(b)(1)(B) provides
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 AIA 35 U.S.C. 102(a)(1) if 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. AIA 35
U.S.C. 102(b)(2)(B) provides that a disclosure shall not be prior art
to a claimed invention under AIA 35 U.S.C. 102(a)(2) if the subject
matter disclosed had, before such subject matter was effectively filed
under AIA 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.
In these situations, the disclosure on which the rejection is based is
not by the inventor or a joint inventor, or by another who obtained the
subject matter disclosed directly or indirectly from the inventor or a
joint inventor, and the applicant or patent owner is attempting to show
that the subject matter disclosed had, before such disclosure was made
or before such subject matter was effectively filed, been publicly
disclosed by: (1) The inventor or a joint inventor; or (2) another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor. As pointed out in the examination
guidelines, in response to public comments, the Office is clarifying
that there is no requirement that the mode of disclosure by an inventor
or joint inventor be the same as the mode of disclosure of an
intervening disclosure (e.g., inventor discloses his invention at a
trade show and the intervening disclosure is in a peer-reviewed
journal). Additionally, there is no requirement that the disclosure by
the inventor or a joint inventor be a verbatim or ipsissimis verbis
disclosure of an intervening disclosure in order for the exception
based on a previous public disclosure of subject matter by the inventor
or a joint inventor to apply. The examination guidelines also clarify
that the exception applies to subject matter of the intervening
disclosure that is simply a more general description of the subject
matter previously publicly disclosed by the inventor or a joint
inventor.
Section 1.130(b) further provides that an affidavit or declaration
under Sec. 1.130(b) must identify the subject matter publicly
disclosed and provide the date of the public disclosure of such subject
matter 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. Section 1.130(b)(1) provides that if the subject matter
publicly disclosed on the earlier date by the inventor or a joint
inventor, or by another who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor, was in a
printed publication, the affidavit or declaration must be accompanied
by a copy of the printed publication. Section 1.130(b)(2) provides that
if the subject matter publicly disclosed on the earlier date was not in
a printed publication, the affidavit or declaration must describe the
subject matter with
[[Page 11036]]
sufficient detail and particularity to determine what subject matter
had been publicly disclosed on the earlier date 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 needs these details to determine not only whether the inventor
is entitled to disqualify the disclosure under AIA 35 U.S.C. 102(b),
but also because if the rejection is based on a U.S. patent application
publication or WIPO publication of an international application to
another and such application is also pending before the Office, this
prior disclosure may be prior art under AIA 35 U.S.C. 102(a) to the
other earlier filed application, and the Office may need this
information to avoid granting two patents on the same invention.
Section 1.130 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'' in contrast to the requirement for such
exhibits in 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 or a
joint 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(c) 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. A disclosure made more than one year before the effective
filing date of the claimed invention is prior art under AIA 35 U.S.C.
102(a)(1), and may not be disqualified under AIA 35 U.S.C. 102(b)(1).
Note that the provisions of Sec. 1.130 are available to establish that
a rejection under AIA 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 claimed invention 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.
Section 1.130(c) also provides that the provisions of Sec. 1.130
may not be available 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, the patent or pending application
claims an invention that is the same or substantially the same as the
applicant's or patent owner's claimed invention, and the affidavit or
declaration contends that an inventor named in the U.S. patent or U.S.
patent application publication derived the claimed invention from the
inventor or a joint inventor named in the application or patent, in
which case an applicant or patent owner may file a petition for a
derivation proceeding pursuant to Sec. 42.401 et seq. of this title.
Permitting two different applicants to each aver or declare that an
inventor named in the other application derived the claimed invention
without a derivation proceeding to resolve who the true inventor is
could result in the Office issuing two patents containing patentably
indistinct claims to two different parties. Thus, the Office needs to
provide that the provisions of Sec. 1.130 are not available in certain
situations to avoid the issuance of two patents containing patentably
indistinct claims to two different parties. See In re Deckler, 977 F.2d
1449, 1451-52 (Fed. Cir. 1992) (35 U.S.C. 102, 103, and 135 ``clearly
contemplate--where different inventive entities are concerned--that
only one patent should issue for inventions which are either identical
to or not patentably distinct from each other'') (quoting Aelony v.
Arni, 547 F.2d 566, 570 (CCPA 1977)). The provisions of Sec. 1.130,
however, would be available if: (1) 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); (2) 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; or (3) the rejection is based upon a U.S. patent or
U.S. patent application and the patent or pending application that does
claim an invention that is the same or substantially the same as the
applicant's claimed invention, but the affidavit or declaration under
Sec. 1.130 does not contend that an inventor named in the U.S. patent
or U.S. patent application publication derived the claimed invention
from the inventor or a joint inventor named in the application or
patent (e.g., the affidavit or declaration under Sec. 1.130 contends
that the subject matter disclosed had, before such disclosure was made
or before such subject matter was effectively filed, been publicly
disclosed by the inventor or a joint inventor).
Section 1.130(d) provides that the provisions of Sec. 1.130 apply
to any application for patent, and to any patent issuing thereon, that
is subject to AIA 35 U.S.C. 102 and 103.
Section 1.131: The title of Sec. 1.131 is amended to include the
provisions of former Sec. 1.130.
Section 1.131(a) is amended to refer to a party qualified under
Sec. 1.42 or Sec. 1.46 for consistency with the changes to Sec. 1.42
et seq. See Changes To Implement the Inventor's Oath or Declaration
Provisions of the Leahy-Smith America Invents Act, 77 FR at 48778-79.
Section 1.131(a) is amended to refer to pre-AIA 35 U.S.C. 102(e) as 35
U.S.C. 102(e) as in effect on March 15, 2013. Section 1.131(a)(1) is
amended to refer to an ``application naming another inventor which
claims interfering subject matter as defined in Sec. 41.203(a)''
rather than an ``application to another or others which claims the same
patentable invention as defined in Sec. 41.203(a)'' in view of the
changes to 35 U.S.C. 102 in the AIA and the current provisions of Sec.
41.203(a).
Section 1.131(b) is 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 added to include the provisions of former Sec.
1.130, but is revised to refer to 35 U.S.C. 103 as 35 U.S.C. 103 as in
effect on March 15, 2013, to refer to pre-AIA 35 U.S.C. 102(b) as 35
U.S.C. 102(b) as in effect on March 15, 2013, and to refer to 35 U.S.C.
104 as 35 U.S.C. 104 as in effect on March 15, 2013.
Section 1.131(d) is added to provide that the provisions of Sec.
1.131 apply to any application for patent, and to any patent issuing
thereon, that contains, or contained at any time: (1) A claim to an
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 an 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 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) as in effect on March 15,
2013. Section 1.130(d) provides that the provisions of Sec. 1.130
apply to applications for patent, and to any patent issuing thereon,
that is subject to
[[Page 11037]]
AIA 35 U.S.C. 102 and 103. The date of invention is not relevant under
AIA 35 U.S.C. 102 and 103. 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 could not be antedated under AIA 35 U.S.C. 102
and 103 by way of an affidavit or declaration under Sec. 1.131(a)
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 removed.
Section 1.321: Section 1.321(d) is amended to remove reference to
35 U.S.C. 103(c) and to provide a reference to the provisions of Sec.
1.104(c)(4)(ii) and Sec. 1.104(c)(5)(ii) in order provide for both AIA
and pre-AIA applications.
Comments and Responses to Comments
As discussed previously, the Office published a notice of proposed
rulemaking and a notice of proposed examination guidelines on July 26,
2012, to implement the first inventor to file provisions of section 3
of the AIA, and conducted a roundtable on September 6, 2012, to obtain
public input from organizations and individuals on issues relating to
the Office's proposed implementation of the first inventor to file
provisions of the AIA. See Changes To Implement the First Inventor To
File Provisions of the Leahy-Smith America Invents Act, 77 FR at 43742-
59, Examination Guidelines for Implementing the First Inventor To File
Provisions of the Leahy-Smith America Invents Act, 77 FR at 43759-73,
and Notice of Roundtable on the Implementation of the First Inventor To
File Provisions of the Leahy-Smith America Invents Act, 77 FR at 49427-
28. The Office received approximately seventy written comments (from
intellectual property organizations, industry, law firms, individual
patent practitioners, and the general public) in response to these
notices. The comments germane to the proposed changes to the rules of
practice and the Office's responses to the comments follow.
A. Foreign Priority Claim and Certified Copy
Comment 1: Numerous comments either opposed or suggested revising
the requirement for submission of a certified copy of the foreign
priority document within the later of four months from the actual
filing date of the application or sixteen months from the filing of the
prior foreign application as set forth in proposed Sec. 1.55. The
majority of these comments stated that such filing deadlines for the
certified copy are unrealistic because many delays can be beyond the
control of the applicant, such as delays by the foreign intellectual
property office, mailing and courier delays, and even delays by the
Office in requesting delivery under the priority document exchange
program. One comment suggested revising the timing requirement for
filing the certified copy of the foreign priority document to no later
than payment of the issue fee.
Response: Section 1.55(f) as adopted in this final rule requires
that a certified copy of the foreign application must 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(f) as adopted in this final rule, however,
also provides that this requirement does not apply if: (1) The priority
application was filed in a participating foreign intellectual property
office, or if a copy of the foreign application was filed in an
application subsequently filed in a participating foreign intellectual
property office that permits the Office to obtain such a copy, and the
Office receives either a copy of the foreign application from the
participating foreign intellectual property office or a certified copy
of the foreign application within the pendency of the application and
before the patent is granted; or (2) the applicant provides an interim
copy of the original foreign 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, and files a
certified copy of the foreign application within the pendency of the
application and before issuance of the patent.
Comment 2: Several comments asserted that there is no need for a
certified copy of the foreign priority application because the Office
can readily obtain priority documents through its exchange mechanisms
(e.g., Digital Access Service (DAS) and Priority Document Exchange
(PDX)) with other intellectual property offices. The comments suggested
that the Office revise proposed Sec. 1.55 to specifically exempt the
time period for filing the certified copy of the priority document if
the applicant has timely requested a certified copy or electronic
transfer of that copy. One comment suggested that in such
circumstances, the rule should not include the requirement for actual
receipt of the foreign application by the Office.
Response: Section 1.55(h) as adopted in this final rule provides an
exception for filing a certified copy of the foreign priority
application when the priority application was filed in a participating
foreign intellectual property office, or if a copy of the foreign
application was filed in an application subsequently filed in a
participating foreign intellectual property office that permits the
Office to obtain such a copy, and the Office receives a copy of the
foreign application from the participating foreign intellectual
property office within the pendency of the application and before the
patent is granted. Otherwise, the Office continues to require a
certified copy of a foreign priority application pursuant to its
authority in 35 U.S.C. 119(b). The requirement for a certified copy
where a copy was not received from a participating intellectual
property office is necessary to ensure that a true copy of the earlier
filed application is of record before the patent is granted. The Office
needs a copy of the foreign priority application for situations 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.
Comment 3: One comment noted that the electronic transmittal of
priority documents by participating foreign intellectual property
offices is not always available as an alternative to submitting a
certified paper copy of the priority application, and further observed
that several large patent offices (e.g., the German Patent and Trade
Mark Office (DPMA)) do not participate in electronic priority document
exchange programs with the Office.
Response: Section 1.55(i) as adopted in this final rule permits an
applicant to provide an ``interim copy'' of the original foreign
application from the applicant's own records to provide for the
situation in which the applicant cannot obtain a certified copy of the
foreign application within the time limit set forth in Sec. 1.55(f).
While providing an interim copy of a foreign application under Sec.
1.55(i) satisfies the requirement for a certified copy of the foreign
application to be filed within the time limit set forth in Sec.
1.55(f), a certified copy of the foreign application ultimately must
still be filed before a patent is granted as set forth in Sec.
1.55(g).
Furthermore, Sec. 1.55(h)(4) as adopted in this final rule
provides that, under specified conditions, if the foreign application
was not filed in a participating foreign intellectual property office,
the applicant can file a request in a separate document that the Office
obtain a copy of the foreign
[[Page 11038]]
application from a participating intellectual property office that
permits the Office to obtain such a copy. Applicants can use Form PTO/
SB/38 (Request to Retrieve Electronic Priority Application(s)) to file
such a request. If the Office receives a copy of the foreign
application from the participating foreign intellectual property office
within the pendency of the application and before the patent is
granted, the applicant need not file a certified paper copy of the
foreign application. As a specific example, an application filed in the
DPMA (which is not currently a participating foreign intellectual
property office) may be retrieved via the priority document exchange
program if it is identified in the claim for priority on the
application data sheet, a subsequent application filed in the European
Patent Office (EPO) or the Japan Patent Office (JPO) contains a
certified copy of the DPMA application, and the applicant timely files
a separate request for the Office to obtain from the EPO (or JPO) a
copy of the certified copy of the DPMA application, wherein the request
identifies the DPMA application and the subsequent application by their
application number, country (EPO, JPO, or DE), day, month, and year of
their filing.
Comment 4: Several comments suggested that where a priority
application was published and available to the public by the time of
publication of the U.S. application there is no need for a certified
copy of the foreign application for the purpose of establishing an
earlier effective prior art date under AIA 35 U.S.C. 102(d). One
comment suggested that the Office waive the certified copy requirement
for foreign priority applications filed in foreign intellectual
property offices that publish at eighteen months. One comment argued
that the requirement for the certified copy of the foreign priority
document is obsolete because a certified copy is not required by
statute. Another comment asserted that the filing of the certified copy
of the foreign application is burdensome, costly, and not required
unless an applicant relies on the foreign priority date to eliminate a
prior art rejection.
Response: AIA 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 AIA 35 U.S.C. 102(a)(2), the patent or
application shall be considered to have been effectively filed, with
respect to any subject matter described in the patent or application,
as of the earliest of the actual filing date of the patent or the
application for patent, or the filing date of the earliest application
for which the patent or application for patent is entitled to claim a
right of priority under 35 U.S.C. 119, 365(a), or 365(b), or to claim
the benefit of an earlier filing date under 35 U.S.C. 120, 121, or
365(c), that describes the subject matter. It is thus necessary for a
copy of any foreign application to which a patent or application for
patent claims a right of priority under 35 U.S.C. 119 or 365(a) to be
available for review in order to determine the date that the patent or
application for patent was effectively filed with respect to subject
matter described in the patent or application for patent. The
requirement in Sec. 1.55 for a certified copy of the foreign
application is specifically authorized by 35 U.S.C. 119(b) and is
consistent with international requirements (see, e.g., PCT Rule 17).
Comment 5: Several comments requested that a provision be added to
proposed Sec. 1.55 to allow for late submission of the certified copy
of the foreign priority application. One comment observed that if a
remedy for late submission of the certified copy is provided for in the
rule, an applicant would not need to file a petition for waiver of the
applicable rule for late filing of the certified copy of the foreign
application that is due to actions beyond the control of the applicant.
The comment further suggested that the Office consider following the
approach set forth in PCT Rule 17.1 to address delays attributable to
the actions of the patent offices.
Response: Section 1.55(f) as adopted in this final rule provides
for the belated filing of a certified copy of the foreign application.
Section 1.55(f) specifically provides that a certified copy of the
foreign application filed after the time period set forth therein must
be accompanied by a petition including a showing of good and sufficient
cause for the delay and the petition fee set forth in Sec. 1.17(g). As
compared to a petition to seek the suspension or waiver under Sec.
1.183 of the requirement to submit a certified copy of the foreign
application within the specified time frame, Sec. 1.55(f) provides a
lower standard (good and sufficient cause versus an extraordinary
situation) and fee ($200 petition fee set forth in Sec. 1.17(g) versus
the $400 petition fee set forth in Sec. 1.17(f)).
Comment 6: Several comments questioned whether an applicant is
required to repeatedly check to see if the Office has received a copy
of the foreign application under the priority document exchange
program. Two comments questioned whether the Office will mail a notice
setting a due date for compliance to file the certified copy of the
foreign application.
Response: The Office will not send a notice setting a time period
for filing a certified copy of the priority document. Upon receipt of a
Notice of Allowance, applicants should check to see whether the Office
has received a copy of the foreign application under the priority
document exchange program. To be entitled to priority, the Office must
receive a copy of the foreign application from the participating
foreign intellectual property office within the pendency of the
application and before the patent is granted, or receive a certified
copy of the foreign application within that time period. If a 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.
Comment 7: One comment noted that the Office automatically
retrieves foreign applications from participating foreign intellectual
property offices and questioned whether this practice will continue or
whether an applicant must file a separate document requesting that the
Office retrieve a copy of the foreign application. One comment
suggested modifying proposed Sec. 1.55(d)(2) to indicate that if the
foreign application was not filed in a participating foreign
intellectual property office, the request that the Office obtain a copy
of the foreign application from a participating intellectual property
office may be provided in an application data sheet instead of a
separate request.
Response: The Office is continuing the practice of treating a
priority claim to an application filed in a participating foreign
intellectual property office as a request that the Office obtain a copy
of the foreign application from the participating intellectual property
office. A separate written request may be used when the applicant
wishes the Office to retrieve a foreign application from a foreign
intellectual property office that becomes a participating foreign
intellectual property office after the foreign priority has been
claimed, so long as the time period set in Sec. 1.55(f) has not
expired. A separate written request is required in the situation where
the foreign application is not originally filed in a participating
office, but a certified copy of the foreign application was filed in an
application subsequently filed in a participating foreign intellectual
property office. The suggestion to include the request that the Office
obtain a copy of the foreign application from the participating
intellectual property office in the
[[Page 11039]]
application data sheet is not adopted in this final rule. Including
information regarding the subsequent application for which priority is
not claimed in an application data sheet, instead of in a separate
request, could lead to incorrect processing of the subsequent
application as the foreign priority document.
Comment 8: One comment asserted that the late filing of a certified
copy of a priority document due to circumstances beyond the control of
the applicant should not result in a reduction of patent term
adjustment.
Response: There are no provisions in the patent term adjustment
regulations (i.e., Sec. Sec. 1.702 et seq.) for a reduction of patent
term adjustment due to the late filing of a certified priority
document.
Comment 9: One comment suggested that proposed Sec. 1.55 is
unclear with respect to the deadline for submission of certified copies
and priority claims for applications that claim priority to multiple
prior filed foreign applications. The comment suggested that either the
rule specify that the deadline is sixteen months from the earliest
priority application to which a claim for priority is made, or sixteen
months from the filing date of any priority application to which a
claim of priority is made.
Response: Section 1.55(f) provides that in an original application
filed under 35 U.S.C. 111(a), a certified copy of the foreign
application must 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, except as provided in Sec.
1.55(h) and (i). The sixteen-month time frame in Sec. 1.55 for filing
a certified copy of a foreign priority application is measured from the
filing date of any foreign application for which priority is claimed.
Comment 10: One comment suggested that the Office clarify whether
an applicant who files a 35 U.S.C. 111(a) application claiming the
benefit of a PCT application (i.e., a ``bypass'' application) may
establish compliance with Sec. 1.55 either by complying with Sec.
1.55(a)(2) (applicable to ``original applications'') or by establishing
compliance with Sec. 1.55(a)(3) (applicable to PCT national stage
applications) during the international phase of the parent PCT
application to provide applicants the greatest flexibility to choose
the path of entry into the U.S. for an application filed under the PCT.
The comment further requested clarification that the requirement in
Sec. 1.55 pertaining to 35 U.S.C. 371 applications refers to the
filing of a certified copy of the foreign priority document during the
international phase and not during the national phase.
Response: An application filed under 35 U.S.C. 111(a) (including a
``bypass'' application claiming the benefit of a PCT application, which
PCT application claims priority to a foreign application) must comply
with the time for filing a priority claim and a certified copy of a
priority document set forth in Sec. 1.55(d) and (f) as adopted in this
final rule. Section 1.55(d) requires that in an application under 35
U.S.C. 111(a), a claim for priority must 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(f) requires that in an application under 35 U.S.C. 111(a), a
certified copy of the foreign application must 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,
except as provided in Sec. 1.55((h) and (i). This timing differs from
that for an international application entering the national stage under
35 U.S.C. 371, wherein the claim for priority must be made and a
certified copy of the foreign application must be filed within the time
limit set forth in the PCT and the Regulations under the PCT.
With respect to the requirements of Sec. 1.55 as they pertain to
applications entering the national stage under 35 U.S.C. 371, if the
applicant submitted a certified copy of the foreign priority document
in compliance with PCT Rule 17 during the international phase, the
International Bureau will forward a copy of the certified priority
document to each Designated Office that has requested a copy of the
foreign priority document and the copy received from the International
Bureau is acceptable to establish that applicant has filed a certified
copy of the priority document. See MPEP Sec. 1893.03(c). If, however,
the International Bureau is unable to forward a copy of the certified
priority document because the applicant failed to submit a certified
copy of the foreign priority document during the international phase,
the applicant will need to provide a certified copy of the priority
document or have the document furnished in accordance with the priority
document exchange program during the national stage to fulfill the
requirements of Sec. 1.55. See id.
Comment 11: One comment asked whether the requirement for the
certified copy of the foreign application of proposed Sec. 1.55(a)(2)
would be met if a certified copy of the foreign application is
submitted in a U.S. parent application within the time period specified
in the proposed rule. The comment further asked if it would be
necessary for the applicant to indicate that the certified copy of the
foreign application was submitted in the U.S. parent application.
Response: Consistent with current practice, it is not necessary to
file a certified copy of a foreign application in a later-filed
application that claims the benefit of an earlier nonprovisional
application where: (1) Priority to the foreign application is claimed
in the later-filed application (i.e., continuation, continuation-in-
part, division) or in a reissue application; and (2) a certified copy
of the foreign application has been filed in the earlier nonprovisional
application. When making such claim for priority, the applicant must
identify the earlier nonprovisional application containing the
certified copy. See MPEP Sec. 201.14(b).
Comment 12: One comment requested clarification as to whether an
applicant may obtain an extension of time to file an English-language
translation when filing the English-language translation in response to
an Office action, notwithstanding that proposed Sec. 1.55(f) indicates
that time periods under that section are not extendable.
Response: The time period for filing a translation is not set forth
in Sec. 1.55, which only sets time periods for filing a foreign
priority claim and a certified copy of the priority application. The
provisions of Sec. 1.55(l) as adopted in this final rule apply to time
periods actually set in Sec. 1.55, and not to time periods that are
set in an Office action. Thus, an applicant may obtain an extension of
time to file an English-language translation when filing the English-
language translation in response to an Office action, unless the Office
action indicates that extensions of time are not available.
Comment 13: One comment suggested that the Office should not
require applicants to file a translation of a non-English language
provisional application as currently required by Sec. 1.78(a)(5)
because applicants are not required to file an English translation of
foreign language priority documents except in limited circumstances.
Response: The Office will take this suggestion under consideration.
The Office did not propose any change to this practice, and thus has
not had the benefit of public comment on the issue. Furthermore, the
Office would need to gain greater experience with examination under the
AIA to determine how often it is necessary to obtain translations of
priority documents for the purposes of
[[Page 11040]]
examination under AIA 35 U.S.C. 102 and 103. As discussed previously,
the Office plans to seek additional public comment on the rules of
practice pertaining to the first inventor to file provisions of section
3 of the AIA after the Office and the public have gained experience
with the rules of practice pertaining to the first inventor to file
provisions in operation.
Comment 14: One comment requested that the Office provide a
rationale or statutory basis for the proposed requirement of a
``statement that the entire delay between the date the claim was due
under paragraph (a) and the date the claim was filed was
unintentional'' in a petition filed under proposed Sec. 1.55(c)(4) for
late presentation of a priority claim. The comment further asserted
that requirement of proof of the subjective intent of the applicant
runs counter to many statutory changes in the AIA, and suggested that
the Office could impose the loss of patent term adjustment to dissuade
applicants from intentionally delaying the presentation of the priority
claim.
Response: The provisions for setting time periods for the filing of
priority and benefit claims, and for accepting unintentionally delayed
priority and benefit claims, were added by amendments to 35 U.S.C.
119(b), 119(e), and 120 in the American Inventors Protection Act of
1999 (AIPA). See Public Law 106-113, 113 Stat. 1501, 1501A-563 and
1501A-564 (1999); see also Changes To Implement Eighteen-Month
Publication of Patent Applications, 65 FR 57024, 57024-25, 57030-31,
57054-55 (Sept. 20, 2000). The AIA did not revise these provisions for
setting time periods for the filing of priority and benefit claims, and
for accepting unintentionally delayed priority and benefit claims in 35
U.S.C. 119(b), 119(e), and 120.
B. Required Statements in Transition Applications
Comment 15: A number of comments opposed or expressed concerns with
the statement requirements proposed in Sec. Sec. 1.55 and 1.78 that an
applicant must provide one of two alternative statements to assist the
Office's determination of whether a nonprovisional application filed on
or after March 16, 2013 (``transition date'') that claims priority/
benefit to one or more pre-transition patent filings is subject to AIA
35 U.S.C. 102 and 103 or pre-AIA 35 U.S.C. 102 and 103. Several
comments opined that it is the examiner's burden to determine whether
post-AIA provisions are applicable, and that the statement requirements
are inconsistent with the prima facie case requirement of 35 U.S.C.
102, 131, and 132, as well as costly, burdensome, unnecessary, and
unjustified. One comment also stated that the number of applicants who
will file applications of different scope that contain both pre-AIA and
post-AIA disclosure will be miniscule.
One comment stated that the statement requirements were similar to
an examination support document requirement that was at issue in the
Tafas litigation. See Tafas v. Kappos, 586 F.3d 1369 (Fed. Cir. 2009)
(Tafas IV); Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009) (Tafas III);
Tafas v. Dudas, 541 F. Supp. 2d 805 (E.D. Va. 2008) (Tafas II).
Response: Sections 1.55 and 1.78 as adopted in this final rule
require a statement from the applicant in a ``transition'' application
(a nonprovisional application filed on or after March 16, 2013, that
claims priority to, or the benefit of the filing date of an earlier
application (i.e., foreign, provisional, or nonprovisional application,
or an international application designating the United States) filed
prior to March 16, 2013) only if the application contains, or contained
at any time, a claim to a claimed invention that has an effective
filing date on or after March 16, 2013. As discussed in the notice of
proposed rulemaking, this statement is needed to assist the Office in
determining whether the application is subject to AIA 35 U.S.C. 102 and
103 (an AIA application) or pre-AIA 35 U.S.C. 102 and 103 (a pre-AIA
application). See Changes To Implement the First Inventor To File
Provisions of the Leahy-Smith America Invents Act, 77 FR at 43745,
43747, and 43748. The Office is not requiring the applicant to indicate
which particular claim or claims have a post March 16, 2013 effective
filing date, or the effective filing date of each claim, as the Office
does not need this information to determine whether the application is
an AIA application or a pre-AIA application. See id. As also discussed
in the notice of proposed rulemaking, 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 an application filed prior to March 16, 2013,
examination costs will significantly increase. See id.
The changes to Sec. Sec. 1.55 and 1.78 as adopted in this final
rule do not implicate the prima facie case requirement. The prima facie
case requirement pertains to the making of rejections and objections
under 35 U.S.C. 131 and 132. See In re Jung, 637 F.3d 1356, 1362 (Fed.
Cir. 2012). While 35 U.S.C. 131 provides that the ``Director shall
cause an examination to be made of the application,'' it does not
preclude the Office from requiring the applicant to provide information
that is reasonably necessary to the examination of the application. See
Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1283 (Fed. Cir.
2005). Sections 1.55 and 1.78 as adopted in this final rule do not
require an applicant to engage in a ``self-examination'' of an
application or make a prima facie case of entitlement to a patent.
Rather, the requirement for a statement for certain transition
applications in Sec. Sec. 1.55 and 1.78 as adopted in this final rule
simply requires the applicant to provide information that will be used
by the Office as an aid in determining whether to examine the
application under AIA 35 U.S.C. 102 and 103 or pre-AIA 35 U.S.C. 102
and 103.
With respect to the suggestion that the changes proposed to
Sec. Sec. 1.55 and 1.78 would add costs and burdens to the patent
application process, the Office has revised Sec. Sec. 1.55 and 1.78 in
this final rule to: (1) Require the statement in a transition
application only if the application contains, or contained at any time,
a claim to a claimed invention that has an effective filing date on or
after March 16, 2013, (i.e., and not require a statement simply because
the transition application discloses subject matter not also disclosed
in the prior-filed application); and (2) indicate that no statement is
required if the applicant reasonably believes on the basis of
information already known to the individuals identified in Sec.
1.56(c) that the nonprovisional application does not, and did not at
any time, contain a claim to a claimed invention that has an effective
filing date on or after March 16, 2013. Therefore, the changes to
Sec. Sec. 1.55 and 1.78 adopted in this final rule should not require
additional investigation on the part of the applicant and thus should
not be costly or burdensome. In any event, the applicant will have
prepared both the transition application and its priority or benefit
application(s) and thus should be far more familiar with the contents
thereof than an examiner who was not involved in the preparation of any
of the applications. Patent applicants would need to pay higher filing
fees to recover the significantly higher examination costs if Office
personnel were required to independently determine the effective filing
date of each claim ever presented in an application. As a result of the
statement requirement, the Office
[[Page 11041]]
and the public will have greater certainty as to whether any resulting
patent is an AIA or pre-AIA patent. See Star Fruits, 393 F.3d at 1284.
Therefore, the patent examination process will operate more effectively
if this information (whether the application ever contained a claim to
a claimed invention that has an effective filing date on or after March
16, 2013) is provided at the outset by the party having the best access
to the information.
The requirement for a statement for certain transition applications
in Sec. Sec. 1.55 and 1.78 as adopted in this final rule bears no
relationship to the examination support document at issue in the Tafas
litigation. The requirement for a statement for certain transition
applications in Sec. Sec. 1.55 and 1.78 as adopted in this final rule
involves a determination and statement that is comparable to
determinations and statements required under pre-existing rules of
practice regarding the absence of new matter. See Sec. 1.57(f)
(requires amendment inserting material incorporated by reference to be
accompanied by a statement that the amendment contains no new matter),
Sec. 1.125(b) (requires a substitute specification to be accompanied
by a statement that the substitute specification includes no new
matter), and former Sec. 1.63(d)(1)(iii) (permits use of an oath or
declaration from a prior application in a continuation or divisional
application that contains no matter that would have been new matter in
the prior application). The concern with the examination support
document in the Tafas litigation, meanwhile, was that it required a
prior art search by the applicant and was viewed as shifting the burden
of proving patentability onto the applicant. See Tafas III, 559 F.3d at
1373-74 (dissent), and Tafas II, 541 F. Supp. 2d at 817. Sections 1.55
and 1.78 as adopted in this final rule do not require an extensive
investigation or search of the prior art, but instead simply require a
statement for certain transition applications based upon information
that is already in the applicant's possession.
With respect to the suggestion that the number of applicants who
will file applications of different scope that contain both pre-AIA and
post-AIA disclosure will be miniscule, an applicant who avoids filing
serial applications of different scope that contain both pre-AIA and
post-AIA disclosure is not required to provide any statement under
Sec. Sec. 1.55 and 1.78 as adopted in this final rule. Thus, if the
number of serial applications of different scope that contain both pre-
AIA and post-AIA disclosure is miniscule as suggested by the comment,
then only the few patent applicants who engage in this atypical
application filing practice will need to provide a statement under
Sec. 1.55 or 1.78 as adopted in this final rule.
Comment 16: A number of comments suggested removing the requirement
for a statement when a transition application adds, but does not claim,
subject matter that is not supported in a benefit or priority
application filed before March 16, 2013. Several comments indicated
that such a statement is burdensome and of limited use, with one
comment noting that the statutory language makes clear that the
determination of whether an application is subject to AIA or pre-AIA 35
U.S.C. 102 and 103 is governed solely by claims. Several comments
stated that it is difficult to determine whether certain changes to the
disclosure would be considered ``added'' subject matter. Several
comments asked whether a statement would be required if only editorial
or other minor changes were made to an application before it is filed.
Response: Sections 1.55 and 1.78 as adopted in this final rule do
not require a statement if a transition application discloses, but does
not claim, subject matter that is not supported in a benefit or
priority application filed before March 16, 2013.
Comment 17: Several comments asserted that the required statements
in proposed Sec. 1.55 and 1.78 are unnecessary since an examiner can
address in a rejection that certain subject matter or claims are not
supported by the priority application, giving an applicant the
opportunity to respond to either the prior art rejection or a rejection
under 35 U.S.C. 112 for claim amendments that add subject matter.
Several comments suggested deferring the determination of whether the
application is an AIA application or a pre-AIA application until and
unless a rejection is addressed with a pre-AIA Sec. 1.131 affidavit or
declaration. Several comments asserted that by dealing with this issue
in the context of a rejection, the dispute of whether the application
ever contained a claim having an effective filing date that is on or
after March 16, 2013, can be resolved through appeal.
Response: The suggested alternative of having the examiner address
the issue of entitlement to priority or the benefit of an earlier
filing date, and allowing the applicant to address the issue in a
response to the Office action, would entail the same examination costs
that the Office would incur to determine on its own whether an
application is an AIA application or a pre-AIA application prior to
issuing an Office action. Moreover, a claim is not subject to a
rejection under AIA 35 U.S.C. 102 or 103 (unless there is intervening
prior art) or under 35 U.S.C. 112(a) simply because the claim is to a
claimed invention that has an effective filing date on or after March
16, 2013. Lastly, the differences between AIA 35 U.S.C. 102 and 103 and
pre-AIA 35 U.S.C. 102 and 103 are not limited to the ability to
antedate prior art by showing prior invention under Sec. 1.131.
Comment 18: One comment questioned whether the statement
requirement under Sec. Sec. 1.55 and 1.78 is part of the applicant's
duty of disclosure. Several comments were concerned that the
requirement to make these statements would increase the likelihood of
charges of inequitable conduct. Two comments requested clarification of
the Office's suggestion to include the ``reasonable belief'' language
in the required statements. Another comment suggested that the Office
include in the rules that the required statements made by applicant
would not impact the validity of the patent.
Response: The Office is providing in this final rule that an
applicant is not required to provide such a statement if the applicant
reasonably believes on the basis of information already known to the
individuals designated as having a duty of disclosure with respect to
the application that the transition application does not, and did not
at any time, contain a claim to a claimed invention that has an
effective filing date on or after March 16, 2013. However, Sec. 1.56
also includes a general duty of candor and good faith in dealing with
the Office, which could be implicated if an applicant is aware that a
transition application contains a claim to a claimed invention that has
an effective filing date on or after March 16, 2013, but nonetheless
chooses not to provide the statement when required under Sec. 1.55 or
1.78.
Comment 19: One comment questioned how long the statement
requirement would be applicable, noting that an application may claim
the benefit under 35 U.S.C. 120 and Sec. 1.78 of an application filed
many years earlier.
Response: The requirement for a statement for certain transition
applications in Sec. Sec. 1.55 and 1.78 as adopted in this final rule
is implicated whenever an application filed on or after March 16, 2013,
claims a right of priority to or the benefit of the filing date of an
application filed prior to March 16, 2013. This requirement, however,
should not affect continuation
[[Page 11042]]
or divisional applications because a continuation or divisional
application discloses and claims only subject matter also disclosed in
the prior-filed application. See MPEP Sec. 201.06 (defines divisional
application), and Sec. 201.07 (defines continuation application). In
addition, an application claiming a right of priority to a foreign
application or the benefit of a provisional application must be filed
within one year of the filing date of the foreign or provisional
application. See 35 U.S.C. 119(a) and 119(e). In view of the one-year
filing period requirement in 35 U.S.C. 119(a) and 119(e), this
requirement should not affect applications filed after May 16, 2014,
that claim only a right of priority to one or more foreign
applications, or that only claim the benefit of one or more provisional
applications (the critical date is May 16, 2014, rather than March 16,
2014, in view of the changes to 35 U.S.C. 119 in section 201(c) of the
the Patent Law Treaties Implementation Act of 2012, Public Law 112-211
(2012)). Therefore, after March 16, 2014, (or May 16, 2014, the
statement required by Sec. Sec. 1.55 and 1.78 as adopted in this final
rule for certain transition applications should be necessary only in
certain continuation-in-part applications.
Comment 20: One comment suggested that the Office extend the four-
month deadline for making the statements required under Sec. Sec. 1.55
and 1.78 because it is burdensome on applicants to identify the
existence of claims having an effective filing date after March 16,
2013, and missing the deadline would trigger a requirement for
information under Sec. 1.105 that the applicant identify where there
is written description support for the remaining claims in the
nonprovisional application. One comment asserted that this requirement
for information under Sec. 1.105 is punitive, arbitrary, and
capricious. One comment asserted that a request for admission (with
sanctions for failure to be accurate) is inappropriate, especially
where it is unclear whether a statement is necessary. One comment
questioned whether the Office would require a statement under
Sec. Sec. 1.55 or 1.78 if no statement is made prior to examination,
but it is later determined that a statement should be made regarding
either new subject matter or new claims not supported by a pre-AIA
application for which priority or benefit is claimed. One comment
raised concerns that a practitioner may be forced to choose between
violating state bar rules by making a statement adverse to a client's
interests or violating the Office's rules of practice.
Response: This final rule does not provide that the Office will
issue a requirement for information under Sec. 1.105 as a sanction or
penalty for non-compliance with the statement requirement under
Sec. Sec. 1.55 and 1.78. Rather, the Office is simply indicating that
the Office may issue a requirement for information under Sec. 1.105 if
an applicant takes conflicting positions on whether an application
contains, or contained at any time, a claim to a claimed invention
having an effective filing date on or after March 16, 2013. For
example, the Office may require the applicant to identify where there
is written description support under 35 U.S.C. 112(a) in the pre-AIA
application for each claim to a claimed invention if an applicant
provides a statement under Sec. 1.55 or Sec. 1.78, but later argues
that the application should have been examined as a pre-AIA application
because the application does not actually contain a claim to a claimed
invention having an effective filing date on or after March 16, 2013.
The Office would not issue a requirement for information under Sec.
1.105 simply because of a disagreement with the applicant's statement
under Sec. 1.55 or Sec. 1.78 or the lack of such a statement.
Comment 21: Several comments suggested that the Office provide a
mechanism (e.g., a check box) on the application data sheet to enable
applicants to make the required statements. One comment stated that
stakeholders should be able to identify which law applies with ease and
transparency, and further suggested putting notice on the face of the
patent to indicate whether the patent was issued under pre-AIA law or
AIA law.
Response: The Office is revising the application data sheet to
include a check box to allow applicants to easily indicate whether a
transition application contains or ever contained a claim to a claimed
invention having an effective filing date that is on or after March 16,
2013. The Office plans to indicate in the Office's Patent Application
Locating and Monitoring (PALM) system whether the Office is treating an
application as subject to pre-AIA 35 U.S.C. 102 and 103 (a pre-AIA
application) or AIA 35 U.S.C. 102 and 103 (an AIA application). Members
of the public may access this information via the Patent Application
Information Retrieval (PAIR) system. Furthermore, form paragraphs for
use in Office actions will be developed which will identify whether the
provisions of pre-AIA 35 U.S.C. 102 and 103 or AIA 35 U.S.C. 102 and
103 apply if there is a rejection based upon 35 U.S.C. 102 or 103.
Comment 22: Several comments proposed that the Office initially
examine all applications filed on or after March 16, 2013, as if they
were subject to the post-AIA provisions. Specifically, if an
application is subject to a prior art rejection based on post-AIA
provisions, applicants would have the opportunity to provide evidence
that the application is subject to pre-AIA provisions. One comment
noted that a prior art search conducted under AIA 35 U.S.C. 102 and 103
is broader than a search conducted under pre-AIA 35 U.S.C. 102 and 103,
and therefore would encompass substantially all prior art under pre-AIA
35 U.S.C. 102 and 103, with two possible limited exceptions for
commonly owned or joint research agreement patents and patent
application publications and certain grace period disclosures measured
from the filing date of a foreign priority application (instead of from
the earliest effective U.S. filing). One comment noted that conducting
searches under a single standard would minimize the training burden on
examiners and the confusion that would arise if searches are conducted
under different standards for different applications.
Response: The suggested alternative of treating all applications
filed on or after March 16, 2013, as subject to AIA 35 U.S.C. 102 and
103 (e.g., as AIA applications) entails the risk of issuing patents
containing unpatentable claims. For example, the provision in pre-AIA
35 U.S.C. 103(c) concerning the availability of commonly owned prior
art applies only to pre-AIA 35 U.S.C. 103 for a pre-AIA application,
and thus a claimed invention in a pre-AIA application examined under
AIA 35 U.S.C. 102 and 103 could appear to be patentable where a
rejection under pre-AIA 35 U.S.C. 102(e) on the basis of commonly owned
prior art might be appropriate. In addition, such a practice would also
shift the burden of determining whether an issued patent is really an
AIA patent or a pre-AIA patent to the public.
Comment 23: One comment requested clarification regarding whether a
continuation or a divisional application filed after March 16, 2013,
and having a claim not presented in the prior pre-AIA application, but
not containing new matter, would require a statement to that effect.
Another comment requested clarification as to whether subject matter
not claimed, but fully supported, in a pre-AIA application that is
later claimed in a continuation or divisional filed after March 16,
2013, would make the application subject to AIA 35 U.S.C. 102 and 103.
[[Page 11043]]
Response: The addition of a claim in a transition application that
is directed to subject matter fully supported in a pre-AIA benefit or
priority application would not itself trigger the statement requirement
under Sec. 1.55 or Sec. 1.78 and would not make the application
subject to AIA 35 U.S.C. 102 and 103.
Comment 24: Several comments suggested that the Office should
clarify that an amendment to the claims that lacks support under 35
U.S.C. 112(a) does not convert that application into an AIA
application.
Response: For an application filed on or after March 16, 2013, that
discloses and claims only subject matter also disclosed in a previously
filed pre-AIA application to which the application filed on or after
March 16, 2013, is entitled to priority or benefit under 35 U.S.C. 119,
120, 121, or 365, an amendment (other than a preliminary amendment
filed on the same day as such application) seeking to add a claim to a
claimed invention that is directed to new matter would not convert the
application into an AIA application. 35 U.S.C. 132(a) prohibits the
introduction of new matter into the disclosure and thus an application
may not actually ``contain'' a claim to a claimed invention that is
directed to new matter. The Office notes that the MPEP sets forth the
following process for treating amendments that are believed to contain
new matter: (1) A new drawing should not be entered if the examiner
discovers that the drawing contains new matter (MPEP Sec. 608.02); and
(2) amendments to the written description or claims involving new
matter are ordinarily entered, but the new matter is required to be
cancelled from the written description and the claims directed to the
new matter are rejected under 35 U.S.C. 112(a) (MPEP Sec. 608.04).
This process for treating amendments containing new matter is purely an
administrative process for handling an amendment seeking to introduce
new matter into the disclosure of the invention in violation of 35
U.S.C. 132(a) and resolving disputes between the applicant and an
examiner as to whether a new drawing or amendment to the written
description or claims would actually introduce new matter.
Comment 25: One comment suggested that the rules should provide
recourse in the situation where there has been an inadvertent addition
of a claim, or a specific reference to a prior-filed application, that
causes the application to be subject to AIA 35 U.S.C. 102 and 103. The
comment suggested that the applicant be permitted to file an oath or
declaration asserting such inadvertence, such that the application may
be examined under pre-AIA 35 U.S.C. 102 and 103.
Response: There is no provision in the AIA for an application (or
any patent issuing thereon) that contains, or contained at any time,
such a claim or specific reference to be subject to pre-AIA 35 U.S.C.
102 and 103 instead of AIA 35 U.S.C. 102 and 103 on the basis of the
claim or specific reference being submitted by inadvertence or on the
basis of an oath or declaration asserting that the claim or specific
reference was submitted by inadvertence. As discussed previously,
however, for an application filed on or after March 16, 2013, that
discloses and claims only subject matter also disclosed in a previously
filed pre-AIA application to which the application filed on or after
March 16, 2013, is entitled to priority or benefit under 35 U.S.C. 119,
120, 121, or 365, an amendment (other than a preliminary amendment
filed on the same day as such application) seeking to add a claim to a
claimed invention that is directed to new matter would not convert the
application into an AIA application.
Comment 26: One comment suggested that the Office provide an
applicant with the opportunity to: (1) Cancel any claims to a claimed
invention having an effective filing date before March 16, 2013, from
the application; and/or (2) file a divisional application directed to
the cancelled subject matter to enable applicants to have the claims in
the divisional application examined under pre-AIA 35 U.S.C 102 and 103.
Response: If an application on filing contains at least one claim
having an effective filing date before March 16, 2013, and at least one
claim having an effective filing date on or after March 16, 2013, the
application will be examined under AIA even if the latter claims are
cancelled. However, if a pre-AIA parent application is pending and an
applicant inadvertently files a continuing application with claims
having an effective filing date on or after March 16, 2013, the
applicant could file a continuation or divisional application from the
pre-AIA parent application without any claim to the benefit of the AIA
application and without any claim to a claimed invention having an
effective filing date on or after March 16, 2013. In this situation,
the continuation or divisional application would be examined as a pre-
AIA application under pre-AIA 35 U.S.C. 102 and 103.
Comment 27: One comment suggested that the statements required
under Sec. 1.55 or Sec. 1.78 for transition applications containing a
claim having an effective filing date that is on or after March 16,
2013, that was first presented after the four-month deadline could be
made in an amendment or response during prosecution. One comment
questioned whether the statement could be submitted during the period
set in Sec. 1.53 for reply to a notice to file missing parts of an
application.
Response: Sections 1.55(j), 1.78(a)(6), and (c)(6) set out the time
period within which such a statement (when required) must be submitted.
Such a statement (when required) must be submitted within the later of
four months from the actual filing date of the nonprovisional
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 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
nonprovisional application. The time frame specified in Sec. 1.55 or
Sec. 1.78 is not affected by the issuance of a notice to file missing
parts of an application under Sec. 1.53. In addition, the Office has
enlarged the time period for filing the inventor's oath or declaration,
which should reduce the situations in which it is necessary to issue a
notice to file missing parts of an application under Sec. 1.53. See
Changes To Implement the Inventor's Oath or Declaration Provisions of
the Leahy-Smith America Invents Act, 77 FR 48776, 48779-80 (Aug. 14,
2012). Permitting the statement required by Sec. 1.55 or Sec. 1.78
for certain transition applications to be submitted during the period
set in Sec. 1.53 for reply to a notice to file missing parts of an
application would encourage applicants to file applications that are
not in condition for examination.
C. Prior Inventor Disclosures (Sections 1.130 and 1.77)
Comment 28: One comment suggested that the organization of Sec.
1.130 be improved to clarify the different requirements for a
declaration depending on the applicable circumstances. One comment
suggested that proposed Sec. 1.130 should be revised to remove the
requirement that the ``subject matter disclosed'' be shown to have been
``invented'' by one of the coinventors of the application because such
subject matter may not necessarily correspond to the claimed invention.
The comment further suggested that the rule be revised to conform to
the statute and require instead that the declaration establish that the
subject matter that is disclosed was obtained directly or indirectly
from an inventor of the invention that is claimed. One comment
[[Page 11044]]
expressed concern that the language ``subject matter of the
disclosure'' used in proposed Sec. 1.130 did not track the statutory
language of ``subject matter disclosed.'' Another comment suggested
that the Office take a general approach, similar to that taken in
current affidavit practice under Sec. Sec. 1.131 and 1.132 regarding
the submission of evidence under proposed Sec. 1.130, leaving out the
details regarding the sufficiency of the evidence which will develop on
a case-by-case basis.
Response: Section 1.130 as adopted in this final rule has been
revised to more closely track the language of the statute and has been
streamlined to set forth only the procedural requirements for
submitting a declaration or affidavit of attribution under Sec.
1.130(a) and a declaration or affidavit of prior public disclosure by
the inventor or a joint inventor under Sec. 1.130(b). The rule only
requires the information necessary for the Office to make a decision
(i.e., a copy or description of the prior disclosure where applicable).
The showing required for establishing sufficiency of a declaration or
affidavit under Sec. 1.130 is discussed in the Examination Guidelines
for Implementing the First Inventor To File Provisions of the Leahy-
Smith America Invents Act.
Comment 29: One comment suggested that proposed Sec. 1.130
reallocates the burden of proof to show derivation to the inventor and
is thus substantive.
Response: As discussed above, Sec. 1.130 as adopted in this final
rule simply sets forth the procedural requirements for an affidavit or
declaration under Sec. 1.130.
Comment 30: One comment questioned the requirement in proposed
Sec. 1.130 that a declaration be accompanied by evidence and requested
that the Office clarify whether a later submission of evidence which
supports, but does not initially accompany, a Sec. 1.130 affidavit or
declaration would be rejected.
Response: The submission of evidence with a declaration must be
timely or seasonably filed to be entered and entitled to consideration.
This is the current standard for declaration/affidavit practice under
pre-existing Sec. Sec. 1.131 and 1.132 as set forth in MPEP Sec. Sec.
715.09 and 716.01, respectively. Specifically, affidavits and
declarations and other evidence traversing rejections are considered
timely if submitted: (1) Prior to a final rejection; (2) before appeal
in an application not having a final rejection; (3) after final
rejection, but before or on the same date of filing an appeal, upon a
showing of good and sufficient reasons why the affidavit or other
evidence is necessary and was not earlier presented in compliance with
Sec. 1.116(e); or (4) after the prosecution is closed (e.g., after a
final rejection, after appeal, or after allowance) if applicant files
the affidavit or other evidence with a request for continued
examination (RCE) under Sec. 1.114 in a utility or plant application
filed on or after June 8, 1995, or a continued prosecution application
(CPA) under Sec. 1.53(d) in a design application. See MPEP section
715.09 and 716.01.
Comment 31: One comment requested that declarations submitted under
proposed Sec. 1.130(b) for a Katz-type declaration (an affidavit or
declaration of attribution as discussed in MPEP Sec. 716.10) and under
proposed Sec. 1.130(d) for a showing of derivation be permitted to be
filed confidentially.
Response: Declarations or affidavits filed by an applicant or
patent owner to overcome a rejection or an objection cannot be filed
confidentially because the public needs to know what evidence the
examiner relied upon in determining the patentability of the claims.
Current practice does not provide for the confidential filing of an
affidavit or declaration of attribution or an affidavit or declaration
to show derivation. However, applicants may submit proprietary
information with a petition to expunge under limited circumstances as
explained in MPEP Sec. 724.
Comment 32: One comment suggested that the Office instruct patent
applicants to come forward with any disclosures of which they are aware
that may qualify as a prior art exception under AIA 35 U.S.C. 102(b).
Another comment suggested that the final rules require an applicant's
disclosure of prior secret commercial use of the claimed invention for
more than one year prior to the original filing date given the
ambiguities in the statute.
Response: Section 1.77 permits, but does not require, an applicant
to provide a statement regarding prior disclosures by the inventor or a
joint inventor. An applicant is not ``required'' to identify any prior
disclosures by the inventor or a joint inventor unless the prior
disclosure is not a grace period disclosure and is ``material to
patentability'' or the prior disclosure is a grace period disclosure
and the applicant is seeking to rely upon the prior disclosure to
overcome a rejection. However, 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.
Comment 33: One comment suggested that the Office should not permit
the mere listing of prior disclosures in an application under proposed
Sec. 1.77 but rather by way of affidavit or declaration, unless it is
readily apparent that these prior disclosures originated with the
inventor because the inventor's oath or declaration only attests to the
claims of the application and not to the origin of the prior
disclosures listed in the application.
Response: Sections 1.63(c) and 1.64(c) state that a person may not
execute an inventor's oath or declaration for an application unless
that person has reviewed and understands the contents of the
application, including the claims, and is aware of the duty to disclose
to the Office all information known to the person to be material to
patentability as defined in Sec. 1.56. See Changes To Implement the
Inventor's Oath or Declaration Provisions of the Leahy-Smith America
Invents Act, 77 FR at 48818-19. Therefore, it is not necessary to have
a person executing an inventor's oath or declaration under Sec. 1.63
or 1.64 provide a separate affidavit or declaration attesting to the
statements in the application as filed.
Comment 34: One comment suggested that the Office add a
corroboration requirement to proposed Sec. Sec. 1.130 and 1.131.
Response: The Office does not consider a per se requirement for
corroboration to be necessary in ex parte examination (i.e.,
application examination or ex parte patent reexamination) proceedings.
The need for corroboration in ex parte proceedings is a case-by-case
determination based upon the specific facts of the case.
Comment 35: One comment asserted that there is a difference between
a ``disclosure'' and a ``public disclosure'' from the provision set
forth in proposed Sec. 1.130(c) (which stated that if an 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) and requested clarification in
the MPEP or other materials on what facts are needed to establish a
public disclosure.
Response: The term ``disclosure'' includes disclosures that are not
public. For example, prior filed, later published U.S. patent
applications are considered disclosures on their earliest effective
filing dates, which is not the date on which the disclosure was made
publicly available. The showing required to establish a public
disclosure is discussed in the Examination Guidelines for Implementing
the First
[[Page 11045]]
Inventor To File Provisions of the Leahy-Smith America Invents Act.
Comment 36: One comment suggested revising the last sentences of
proposed Sec. 1.130(c) and (e) to make the standard for evaluating
both non-publications and publications the same and to eliminate the
potentially confusing reference to the language ``the subject matter on
which the rejection is based.''
Response: Section 1.130 as adopted in this final rule does not
include the standard for evaluating the sufficiency of a declaration or
attribution or refer to ``the subject matter on which the rejection is
based.'' The details regarding the showing needed to establish a
successful declaration or affidavit under Sec. 1.130 are discussed in
the Examination Guidelines for Implementing the First Inventor To File
Provisions of the Leahy-Smith America Invents Act.
Comment 37: One comment suggested amending proposed Sec. Sec.
1.130 and 1.131 to indicate that a disclosure on which the rejection is
based is not prior art when the disclosure is based on the public
disclosure or subject matter published by the inventor or joint
inventor.
Response: As discussed previously, Sec. 1.130 has been streamlined
to set forth only the procedural requirements for submitting a
declaration or affidavit of attribution under this section. The showing
required for establishing sufficiency of a declaration or affidavit
under Sec. 1.130 as adopted in this final rule is discussed in the
Examination Guidelines for Implementing the First Inventor To File
Provisions of the Leahy-Smith America Invents Act.
Comment 38: One comment requested an explanation of how the Office
would use statements made in a declaration under proposed Sec. 1.130
in the examination of other applications. The comment further asked
whether the Office would provide a way for the examiners and the public
to search the contents of the declarations.
Response: The Office plans to include information on the cover
sheet of U.S. patents if an affidavit or declaration containing
evidence of a prior public disclosure under Sec. 1.130(b) was filed
during the prosecution of the application for that patent in order to
facilitate search by examiners and the public of prior public
disclosures brought to the Office's attention under Sec. 1.130(b).
D. Proposed Requirement in Sec. 1.130 To Initiate Derivation
Proceedings
Comment 39: Several comments opposed the Office requiring a
petition for a derivation proceeding in proposed Sec. 1.130(f). One
comment asserted that such a requirement would be unduly burdensome and
premature if based on the published claims of an unexamined application
which may not be patentable to the earlier applicant. One comment
stated that there was no basis for requiring the filing of a derivation
petition when an applicant may avoid a rejection in another way such as
by amending the claims. One comment asserted that since derivation
requests are statutorily permissive, the Office should suggest or
recommend, but not require a derivation proceeding. One comment stated
that applicants, not the Office, are in the best position to decide if
a derivation proceeding should be instituted. One comment requested
that the Office establish standards for determining whether an
applicant is required to file a petition for a derivation proceeding.
Response: Section 1.130 as adopted in this final rule does not
include a requirement to file a petition for a derivation proceeding
and instead provides that an applicant or patent owner may file a
petition for a derivation proceeding if the patent or pending
application naming another inventor claims an invention that is the
same or substantially the same as the applicant's or patent owner's
claimed invention.
Comment 40: One comment suggested that instead of requiring the
initiation of a derivation proceeding, the Office should implement a
rule that would allow an AIA 35 U.S.C. 102(b)(2)(A) exception from
prior art to extend only to disclosed but unclaimed subject matter in
an earlier patent filing, and that a patent be permitted to issue on a
claimed invention only if the claims with the earlier effective filing
date are cancelled via a derivation proceeding or post-grant review
proceeding. Another comment questioned whether there are any cases
where the Office would not require the applicant to file a petition for
a derivation proceeding even if the claims are the same and the
inventors are different.
Response: Section 1.130 as adopted in this final rule does not
include a requirement to file a petition for a derivation proceeding.
An applicant or patent owner has the discretion to file a petition for
a derivation proceeding pursuant to Sec. 42.401 et seq. of this title.
In the event that a patent is issued on a later filed application
claiming subject matter disclosed in an earlier filed application, the
applicant in the earlier filed application may request early
publication of the application under Sec. 1.219 and may cite the
resulting patent application publication in the file of the patent on
the later filed application under 35 U.S.C. 301 and Sec. 1.501.
E. Miscellaneous
Comment 41: One comment suggested that the Office implement a rule
wherein claiming in a U.S. application priority to, or the benefit of,
an earlier application is considered an express consent by the
applicant to provide anyone the right to obtain a copy of the priority
document from the applicable patent office upon providing evidence of
the U.S. application and the priority claim to the earlier application
at issue.
Response: The Office does not have jurisdiction to grant or deny
access to patent applications filed in other intellectual property
offices. Access to any patent application is determined by the national
law of each country and cannot be governed by the regulations of
another intellectual property office.
Comment 42: One comment suggested that the proposed rules would be
clearer if the Office consistently used the terms ``benefit claim'' or
``priority claim'' when using the term ``claim'' in the context of the
applicant asserting the benefit of an earlier priority date for a given
claimed invention in order to differentiate the exact same term for two
different purposes.
Response: The Office will endeavor to be consistent with the use of
the terms benefit claim and priority claim where it is necessary for
clarity in the rule.
Comment 43: One comment suggested retaining the provisions
pertaining to pre-AIA applications in the regulations so that the
public is not required to keep old copies of title 37 CFR for the next
twenty years. The comment also suggested changes to the structure of
Sec. 1.55 and Sec. 1.78.
Response: The Office is retaining in the regulations the provisions
pertaining to pre-AIA applications (e.g., Sec. 1.131) or modifying
provisions in the regulations such that they pertain to both or either
AIA or pre-AIA applications (e.g., Sec. Sec. 1.104 and 1.110). Certain
provisions apply to any application filed on or after March 16, 2013,
regardless of whether the application is an AIA or pre-AIA application
(e.g., Sec. Sec. 1.55 and 1.78 apply to any application filed on or
after March 16, 2013). In this situation, the regulations generally do
not include provisions that apply only to applications filed prior to
March 16, 2013. The Office has simplified the structure of Sec. Sec.
1.55 and 1.78 and included paragraph headings for clarity.
Comment 44: Two comments requested that the Office take the
opportunity to clarify what is meant by ``conflicting claims'' in
proposed Sec. 1.78(e) as the rule does not explicitly
[[Page 11046]]
recite the standard. One comment suggested that the standard should be
that the claims are drawn to the same or substantially the same
invention (as required in a derivation proceeding under the AIA or the
pre-AIA interference provisions).
Response: The term ``conflicting claims'' in Sec. 1.78 has been
changed to ``patentably indistinct claims'' in this final rule for
clarity.
Comment 45: One comment suggested deleting the requirement set
forth in proposed Sec. 1.55 to ``identify foreign applications with
the same subject matter having a filing date before that of the
application for which priority is claimed'' because this requirement
appears unnecessarily burdensome and there does not appear to be a need
for this information to determine foreign priority. One comment
asserted that there is an inconsistency between proposed Sec.
1.78(c)(5), which does not permit cross references to applications for
which benefit is not claimed in an application data sheet, and proposed
Sec. 1.55(a)(3), which permits the identification of 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.
Response: The requirement to ``identify foreign applications with
the same subject matter having a filing date before that of the
application for which priority is claimed'' has been removed from Sec.
1.55 in this final rule. The Office also revised Sec. 1.77 to indicate
that cross-references to related applications should appear in the
specification (rather than in an application data sheet).
Comment 46: One comment requested that the Office exercise its
regulatory authority to clarify what kind of grant qualifies as a joint
research agreement and what type of cooperative agreement which is not
a written contract qualifies as a joint research agreement for the
purpose of disqualifying prior art under AIA 35 U.S.C. 102(b)(2)(C) and
(c). Another comment suggested that the Office confirm an expansive or
liberal interpretation of what constitutes a joint research agreement,
so that entities who enter into collaborative agreements without formal
written contracts drafted by legal experts can still rely on the
provisions of AIA 35 U.S.C. 102(b)(2)(C).
Response: AIA 35 U.S.C. 100(h) defines what constitutes a joint
research agreement for purposes of AIA 35 U.S.C. 102. There was no
substantive change to the definition of joint research agreement under
the AIA.
Comment 47: One comment requested that the Office provide a means
for an applicant to confidentially make of record any joint research
agreement, and require that only minimal disclosure of the parties
involved in the joint research agreement in the specification in
accordance with proposed Sec. 1.104. The comment further requested
that the Office permit the amendment of the specification pursuant to
Sec. 1.71(g)(1) regarding the parties involved in the joint research
agreement throughout examination and without a fee because inventorship
is necessarily an on-going determination throughout examination.
Response: AIA 35 U.S.C. 102(c) does not require that a joint
research agreement be made of record in the application, but does
require the application to disclose or be amended to disclose the names
of the parties to the joint research agreement. The Office will not
enter an amendment to the specification regarding the parties involved
in the joint research agreement throughout examination without a fee
because the fee simply recovers the Office's costs of updating the
record of the application.
Comment 48: One comment suggested that a listing of parties to a
joint research agreement be provided for in Sec. 1.77, which concerns
arrangement of application elements.
Response: Section 1.77(b)(4) provides for the disclosure of names
of parties to a joint research agreement.
Comment 49: One comment requested that proposed Sec.
1.104(c)(5)(i) and (ii) specify that those sections apply to a claimed
invention in an application ``pending'' on or after December 10, 2004.
Response: Section 1.104 has been revised in this final rule to
clearly specify which applications and patents are entitled to the
provisions of Sec. 1.104(c)(5)(i) and (ii).
Comment 50: One comment suggested that references to a joint
inventor be added in proposed Sec. Sec. 1.78(a)(2) and 1.110 when the
term inventor is not intended to apply to the entire inventive entity.
Response: Sections 1.78 and 1.110 as adopted in this final rule
refer to the inventor or a joint inventor as appropriate.
Comment 51: One comment requested that the Office explain why the
request for information regarding inventorship and ownership of the
subject matter of individual claims set forth in proposed Sec. 1.110
is not provided for in current Sec. 1.105 (Requirements for
Information).
Response: This specific provision was provided for in Sec. 1.110
before Sec. 1.105 was implemented and was retained for examination
purposes.
Comment 52: One comment suggested that proposed Sec. 1.78(e) would
give the Office the authority to require cancellation of claims and
that the cancellation of claims is substantive.
Response: Section 1.78(e) as adopted in this final rule does not
represent a change in Office practice. See former Sec. 1.78(b)
(``Where two or more applications filed by the same applicant contain
conflicting claims, elimination of such claims from all but one
application may be required in the absence of good and sufficient
reason for their retention during pendency in more than one
application'').
Comment 53: One comment suggested amending proposed Sec. 1.131(b)
to provide an appropriate example to show conception of an invention
with due diligence.
Response: MPEP Sec. 715 et seq. and the case law cited therein
provide guidance regarding conception of an invention and due
diligence.
Comment 54: One comment suggested that the Office take the
opportunity to revise Sec. 1.77(b) to separate out those items of
information currently required under separate headings in a patent
application that are now going to be tracked by the application data
sheet (such as name, citizenship and residence of applicant, related
applications, federally sponsored joint research, joint research
agreements, and the proposed rule for prior disclosures by or for an
inventor under Sec. 1.130). The comment further suggested that since
the timeline for filing the information required by proposed Sec.
1.77(b)(6) is not coextensive with the filing of the application, the
requirement to include this information in the patent application seems
out of place. The comment also suggested that keeping all of this
information tracked and published as part of the application data sheet
available on PAIR, or as part of the cover page of a patent or
published application, would keep the public informed in a more
efficient manner.
Response: The arrangement of the specification as set out in Sec.
1.77 is a suggested and preferred arrangement, but is not an
arrangement that an applicant is required to follow. In addition,
information such as related applications, federally sponsored joint
research, joint research agreements, and prior inventor disclosures are
not provided for in an application data sheet.
Comment 55: One comment suggested that the Office should avoid
using old rule numbers for new rules.
[[Page 11047]]
Response: In general, the Office avoids using old rule numbers. The
Office also prefers to group related rules together. In this instance,
there are no rule numbers available in the vicinity of Sec. Sec.
1.130, 1.131, and 1.132. Furthermore, former Sec. 1.130 has been
rarely invoked. Thus, the potential confusion from relocating the
provisions of former Sec. 1.130 to Sec. 1.131 and using Sec. 1.130
for AIA applications is minimal.
Comment 56: One comment requested that the Office provide a clear
definition in Sec. 1.9 regarding what constitutes a divisional
application.
Response: MPEP Sec. 201.06 indicates that a divisional application
is an application for an independent or distinct invention, carved out
of a pending application and disclosing and claiming only subject
matter disclosed in the earlier or parent application. This definition
of divisional application located in the MPEP is adequate for current
Office proceedings.
Comment 57: One comment suggested that Sec. 1.110 be revised to
include the phrase ``or obligation to assign ownership'' for
completeness.
Response: Section 1.110 as adopted in this final rule includes the
phrase ``or obligation to assign ownership.''
Rulemaking Considerations
A. Administrative Procedure Act
The changes in this final rule do not change the substantive
criteria of patentability. These changes in this final rule involve
rules of agency practice and procedure and/or interpretive rules. See
Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C. 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, published proposed changes and a Regulatory Flexibility Act
certification as it sought the benefit of the public's views on the
Office's proposed implementation of this provision of the AIA.
One comment suggested that the Office's reliance upon Cooper
Technologies is misplaced and that the Federal Circuit's decision in
Tafas v. Kappos, 586 F.3d 1369 (Fed. Cir. 2009) (Tafas IV) requires
notice and comment for all Office rulemakings. The Federal Circuit in
Tafas IV granted the parties' request to dismiss the appeal in the
Tafas litigation as moot and denied GlaxoSmithKline's and the Office's
request to vacate the district court's decision in Tafas v. Dudas, 541
F. Supp. 2d 805 (E.D. Va. 2008) (Tafas II). The Federal Circuit in
Tafas IV did not reach the merits of the district court's decision in
Tafas II and thus is not an ``affirmance'' of that decision. Moreover,
the Federal Circuit in Tafas IV did not discuss its previous decision
in Cooper Technologies. Thus, the Federal Circuit's decision in Tafas
IV cannot reasonably be viewed as casting doubt on its prior statement
in Cooper Technologies 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.'' See Cooper Techs., 536
F.3d at 1336-37; see also Mikkilineni v. Stoll, 410 Fed. Appx. 311, 313
(Fed. Cir. 2010) (Office's 2009 guidelines concerning 35 U.S.C. 101 are
interpretive, rather than substantive, and are thus exempt from the
notice and comment requirements of 5 U.S.C. 553). However, as discussed
previously, the Office published the proposed changes for comment as it
sought the benefit of the public's views on the Office's proposed
implementation of this provision of the AIA.
The comment also stated that the Office did not make the data
(statistics, mathematical or computer models, and assumptions,
including spreadsheets or other models that the Office uses to project
growth and future filing rates) relied upon in the notice of proposed
rulemaking publicly available in a rulemaking docket at the time of the
notice of proposed rulemaking so that the public had fair notice and a
meaningful opportunity to comment and challenge the data forming the
basis for the proposed changes in the notice of proposed rulemaking.
The notice of proposed rulemaking specified the legal authority under
which the changes were proposed, the basis and purpose of the proposed
changes, the terms and substance of the proposed rule changes, and a
description of the subjects and issues involved in the proposed
changes. See Changes To Implement the First Inventor To File Provisions
of the Leahy-Smith America Invents Act, 77 FR at 43742-51. The Office
relied upon the changes to the patent laws in section 3 of the AIA as
opposed to scientific or technical information or data as the basis or
reason for the proposed rule changes. The data pertaining to the
Regulatory Flexibility Act and Paperwork Reduction Act discussion were
from the Office's PALM system and the basis for the Office estimates
was stated in the Regulatory Flexibility Act and the Information
Collection Review submission to OMB (which was made available to the
public). See Changes To Implement the First Inventor To File Provisions
of the Leahy-Smith America Invents Act, 77 FR at 43752, and the
proposed information collection posted on OMB's Information Collection
Review Web page on July 27, 2012, at http://www.reginfo.gov/public/do/PRAViewICR?ref_nbr=201207-0651-008. The Office relied predominately
upon the changes to the patent laws in section 3 of the AIA, and not
these data and estimates published pursuant to the Regulatory
Flexibility Act and Paperwork Reduction Act, as the basis or reason for
the proposed changes or changes being adopted in this final rule. The
public was not deprived of fair notice or a meaningful opportunity to
comment and challenge any data forming the basis for the proposed
changes. Also, the issue of a meaningful opportunity to comment and
challenge data forming the basis for the proposed changes is relevant
only where there is a requirement for prior notice and opportunity for
public comment. As discussed previously, prior notice and opportunity
for public comment are not required pursuant to 5 U.S.C. 553(b) or (c)
(or any other law).
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 the changes in this final rule 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
adopting the following changes to address the
[[Page 11048]]
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 another
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
provisions are comparable to requirements for affidavits and
declarations under 37 CFR 1.132 for an applicant to show that a prior
art disclosure is the applicant's own work (see case law cited in MPEP
sections 716.10 and 2132.01) or that a disclosure was derived from the
applicant (see case law cited in MPEP section 2137). The changes in
this final rule will not result in additional small entities being
subject to the need to submit such an affidavit or declaration.
The Office is also 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, except if: (1) The priority
application was filed in a participating foreign intellectual property
office (or a copy of the foreign application was filed in an
application subsequently filed in a participating foreign intellectual
property office) and the Office either receives a copy of the foreign
application from the participating foreign intellectual property office
or a certified copy of the foreign application within the pendency of
the application and before the patent is granted; or (2) the applicant
provides an interim copy of the original foreign 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,
and files a certified copy of the foreign application within the
pendency of the application and before the patent is granted.
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 (see former 37 CFR 1.55(a)).
The 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). In
addition, this final rule permits applicants to provide an interim copy
of the original foreign application in the event that the applicant
cannot obtain a certified copy of the foreign application from the
foreign patent authority in time to file it within four months from the
actual filing date of the application or sixteen months from the filing
date of the prior foreign application. Based upon the data in the
Office's PALM system, 375,484 (103,976 small entity) nonprovisional
applications were filed in fiscal year (FY) 2012. Of these, 67,790
(8,371 small entity) nonprovisional applications claimed priority to a
foreign priority application, and 68,769 (15,541 small entity)
nonprovisional applications resulted from the entry of an international
application into the national stage.
The Office is also adopting the following requirement for a
nonprovisional application filed on or after March 16, 2013, that
claims priority to or the benefit of the filing date of an earlier
application (i.e., foreign, provisional, or nonprovisional application,
or international application designating the United States) filed prior
to March 16, 2013 (a transition application): If a transition
application 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
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. The Office, however, is also
providing that an applicant is not required to provide such a statement
if the applicant reasonably believes on the basis of information
already known to the individuals designated as having a duty of
disclosure with respect to the application that the transition
application does not, and did not at any time, contain a claim to a
claimed invention that has an effective filing date on or after March
16, 2013. Thus, an applicant is not required to conduct any additional
investigation or analysis to determine the effective filing date of the
claims in their applications.
Based upon the data in the Office's PALM system, of the 375,484
(103,976 small entity) nonprovisional applications filed in FY 2012,
12,246 (7,079 small entity) nonprovisional applications were identified
as continuation-in-part applications; 59,819 (15,024 small entity)
nonprovisional applications were identified as continuation
applications; 22,162 (5,246 small entity) nonprovisional applications
were identified as divisional applications; and 57,591 (28,200 small
entity) nonprovisional applications claimed the benefit of provisional
application. As discussed above, 67,790 (8,371 small entity)
nonprovisional applications claimed priority to a foreign priority
application, and 68,769 (15,541 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 priority to or the benefit of
the filing date of an earlier application do not disclose or claim
subject matter not also disclosed in the earlier 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 addition, one
comment indicated that the number of applicants who file applications
with claims directed to both pre-AIA and AIA subject matter would be
miniscule. 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.
Several comments questioned the statement in the notice of proposed
rulemaking that the changes proposed in the rulemaking will not have a
significant economic impact on a substantial number of small entities.
[[Page 11049]]
One comment questioned this statement on the basis that the conversion
of the U.S. patent system from a ``first to invent'' to a ``first
inventor to file'' system is arguably one of the most comprehensive
overhauls of the U.S. patent system since its inception. Another
comment also cited statements by the AIA's legislative sponsors and
Administration officials and several articles concerning the first
inventor to file system, and argued that the Office in its
implementation of the first inventor to file system has ignored a
number of economic effects, such as: (1) Loss of access to investment
capital; (2) diversion of inventor time into patent applications; (3)
weaker patent protection due to hasty filing; (4) higher patent
prosecution costs due to a hastily-prepared initial application; (5)
higher abandonment rates; and (6) changes in ways of doing business.
One comment questioned this statement on the basis of the translation
costs that will result from the statement required by 37 CFR 1.55.
Section 3 of the AIA amends the patent laws pertaining to the
conditions of patentability to convert the U.S. patent system from a
``first to invent'' system to a ``first inventor to file'' system. This
final rule does not convert the U.S. patent system from a ``first to
invent'' to a ``first inventor to file'' system (i.e., the U.S. patent
system converts from a ``first to invent'' to a ``first inventor to
file'' system by operation of section 3 of the AIA, regardless of the
changes that are adopted in this final rule) or even introduce the
conditions of patentability as provided for in section 3 of the AIA
into the rules of practice. This final rule merely revises the rules of
practice in patent cases for consistency with, and to address the
examination issues raised by, the changes in section 3 of the AIA.
Thus, the discussions of the significance or impacts of section 3 of
the AIA by the AIA's legislative sponsors and Administration officials,
in articles concerning the first inventor to file system, and in the
discussions in the comment relating to the impacts of the adoption of a
first inventor to file system pertain to the changes to the conditions
of patentability provided for in section 3 of the AIA and are not
pertinent to the changes being adopted in this final rule. This final
rule: (1) Requires applicants to provide a statement if a
nonprovisional application filed on or after March 16, 2013, claims
priority to or the benefit of the filing date of an earlier application
(i.e., foreign, provisional, or nonprovisional application, or an
international application designating the United States of America),
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) provides that an applicant may be
required to identify the inventorship and ownership or obligation to
assign ownership, of each claimed invention on its effective filing
date or on its date of invention, as applicable, in an application or
patent with more than one named joint inventor, when necessary for
purposes of an Office proceeding; and (3) provides a mechanism for an
applicant to show that a disclosure was by the inventor or joint
inventor, or was by another 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 another who
obtained the subject matter from the inventor or a joint inventor. For
the reasons discussed previously, the changes that are being adopted in
this final rule will not have a significant economic impact on a
substantial number of small entities.
The change to 37 CFR 1.55 will not result in translation costs for
applicants that would not otherwise exist for applicants claiming
priority to a non-English-language application. Initially, a
nonprovisional application claiming priority to a foreign application
could not be competently prepared without an understanding of the
subject matter disclosed in the foreign application, as a claim in a
nonprovisional is entitled to the benefit of a foreign priority date
only if the foreign application supports the claims in the manner
required by 35 U.S.C. 112(a). See In re Gosteli, 872 F.2d 1008 (Fed.
Cir. 1989). Thus, it is not clear how this requirement would result in
the need for translations not otherwise necessary to competently
prepare a nonprovisional application that claims priority to a foreign
application. Nevertheless, the changes to 37 CFR 1.55 will not increase
translation costs over what these costs would be in the absence of such
a requirement. Pre-existing 35 U.S.C. 119(b)(3) and 37 CFR 1.55 provide
that the Office may require a translation of any non-English-language
priority application when deemed necessary by the examiner. The
examiner would need to require a translation in all nonprovisional
applications filed on or after March 16, 2013, that claim priority to a
non-English-language application that was filed prior to March 16,
2013, to determine whether AIA or pre-AIA 35 U.S.C. 102 and 103 apply
to the application in the absence of information from the applicant.
In addition, it should be noted that a small business concern for
purposes of Regulatory Flexibility Act analysis is a business or other
concern that: (1) Meets the SBA's definition of a ``business concern or
concern'' set forth in 13 CFR 121.105; and (2) meets the size standards
set forth in 13 CFR 121.802 for the purpose of paying reduced patent
fees. See Business Size Standard for Purposes of United States Patent
and Trademark Office Regulatory Flexibility Analysis for Patent-Related
Regulations, 71 FR 67109, 67112 (Nov. 20, 2006). 13 CFR 121.105 defines
a business or other concern as a business entity organized for profit,
with a place of business located in the United States, and which
operates primarily within the United States or which makes a
significant contribution to the U.S. economy through payment of taxes
or use of American products, materials, or labor. See 37 CFR
121.105(a)(1).
Accordingly, the changes in this final rule 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). Several comments suggested
that this rulemaking should be designated as ``economically
significant'' under Executive Order 12866. The comments argued that the
notice of proposed rulemaking indicates that the paperwork burden alone
would be over $100,000,000 per year. One comment (discussed previously)
also cited statements by the AIA's legislative sponsors and
Administration officials and several articles concerning the first
inventor to file system, and argued that the first inventor to file
system will result in: (1) Loss of access to investment capital; (2)
diversion of inventor time into patent applications; (3) weaker patent
protection due to hasty filing; (4) higher patent prosecution costs due
to a hastily prepared initial application; (5) higher abandonment
rates; and (6) changes in ways of doing business.
The notice of proposed rulemaking indicated that this rulemaking
has been determined to be significant for purposes of Executive Order
12866, but that this rulemaking is not economically significant as that
term is defined in Executive Order 12866. See Changes To Implement the
First Inventor To File Provisions of the Leahy-Smith America Invents
Act, 77 FR at 43743 (``This
[[Page 11050]]
rulemaking is not economically significant as that term is defined in
Executive Order 12866''), and 43752 (``This rulemaking has been
determined to be significant for purposes of Executive Order 12866'').
The Paperwork Reduction Act information provided with the notice of
proposed rulemaking indicated that the majority of the burden hour
costs pertain to affidavits and declarations under 37 CFR 1.131 and
1.132, which are provided for in pre-existing regulations to overcome
rejections under pre-AIA 35 U.S.C. 102 and 103. See Changes To
Implement the First Inventor To File Provisions of the Leahy-Smith
America Invents Act, 77 FR at 43753 (``[t]he 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''). While the Office is
providing for the filing of affidavits and declarations under AIA 35
U.S.C. 102(b) in new 37 CFR 1.130, the change from pre-AIA 35 U.S.C.
102 to AIA 35 U.S.C. 102 will not result in an increase in affidavits
and declarations under 37 CFR 1.130, 1.131 and 1.132. Rather, the
change from pre-AIA 35 U.S.C. 102 to AIA 35 U.S.C. 102 should result in
a decrease in such affidavits and declarations as well as a decrease in
the burden hours associated with such affidavits and declarations. In
any event, there are no instances in which an applicant needs to file
an affidavit and declaration under 37 CFR 1.130 in an AIA application
where the applicant would not have needed to file an affidavit and
declaration under 37 CFR 1.131 or under 37 CFR 1.132 in the same
situation in a pre-AIA application. Moreover, the information required
for an affidavit and declaration under 37 CFR 1.130 in an AIA
application to show that a disclosure is the inventor's own work or a
prior disclosure of inventor's own work is significantly less than the
proofs required to show prior invention in a pre-AIA application. Also,
the requirement for a statement in certain applications claiming
priority to or the benefit of a prior foreign, provisional, or
nonprovisional application, or international application designating
the United States of America, will not be an ``annual'' impact. A
nonprovisional application claiming priority to or the benefit of a
foreign or provisional application must be filed not later than twelve
months from the filing date of the foreign or provisional application.
See 35 U.S.C. 119(a) and (e). Thus, a statement should not be required
in any application filed after March 16, 2014, unless the application
is itself a continuation-in-part application. In any event, to avoid
underestimating the respondent estimate for this requirement, the
Paperwork Reduction Act estimate is based upon all applications filed
in a fiscal year that claim priority to or the benefit of a prior
foreign, provisional, or nonprovisional application, or international
application designating the United States of America. The statement,
however, is not required unless the application actually claims an
invention with an effective filing date on or after March 16, 2013.
Thus, the Paperwork Reduction Act burden hour cost estimates pertaining
to these statements overestimate the actual impact of this requirement.
Finally, as discussed previously, this final rule does not convert
the U.S. patent system from a ``first to invent'' to a ``first inventor
to file'' system. The U.S. patent system converts from a ``first to
invent'' to a ``first inventor to file'' system by operation of section
3 of the AIA regardless of the changes that are adopted in this final
rule. This final rule merely revises the rules of practice in patent
cases for consistency with, and to address the examination issues
raised by, the changes in section 3 of the AIA. Thus, the discussions
of the significance or impact of section 3 of the AIA by the AIA's
legislative sponsors and Administration officials, in articles
concerning the first inventor to file system, and in the discussion in
the comment relating to the impacts of the adoption of a first inventor
to file system pertain to the changes in section 3 of the AIA per se
and not to the changes being adopted in this final rule.
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 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
[[Page 11051]]
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 was submitted to OMB for its review
and approval when the notice of proposed rulemaking was published, and
was reviewed and preapproved by OMB under OMB control number 0651-0071
on September 12, 2012. The collection of information submitted to OMB
also included an information collection (i.e., 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 is available at OMB's Information Collection Review
Web site (www.reginfo.gov/public/do/PRAMain).
The Office also published the title, description, and respondent
description of the information collection, with an estimate of the
annual reporting burdens, in the notice of proposed rulemaking, and
indicated that any comments on this information must be submitted by
September 24, 2012. See Changes To Implement the First Inventor To File
Provisions of the Leahy-Smith America Invents Act, 77 FR at 43753-54.
The Office received a comment on the proposed information collection
suggesting that the notice of proposed rulemaking fails to comply with
numerous provisions of the Paperwork Reduction Act. The comment
specifically suggested that: (1) The Office did not submit a proposed
information collection for the notice of proposed rulemaking and the
information provided in the notice of proposed rulemaking does not
supply transparent specific burden estimates (e.g., number of
responses, hours per response, hourly rate, and the underlying
objective support), to permit public comment; (2) the notice of
proposed rulemaking has immense ripple effects in the information to be
collected under OMB control numbers 0651-0031 (patent processing,
updating) and 0651-0032 (initial applications) as the number of newly
filed patent applications is almost certain to increase due to the
ripple effects of the AIA, and requires ``extensive'' ``adjusting [of]
the existing ways to comply with any previously applicable instructions
and requirements;'' and (3) the Office is creating new collections of
information rather than updating existing OMB information collections
under control numbers OMB 0651-0031 and 0651-0032.
The Office submitted a proposed information collection for the
notice of proposed rulemaking providing the specific burden estimates
(e.g., number of responses, hours per response, hourly rate) for each
individual information collection item and the Office's basis for these
estimates. The proposed information collection was posted on OMB's
Information Collection Review Web page on July 27, 2012 (at http://www.reginfo.gov/public/do/PRAViewICR?ref_nbr=201207-0651-008).
The collection of information submitted to OMB with the notice of
proposed rulemaking pertains to the impact resulting from the changes
being proposed by the Office in this rulemaking. The changes in this
rulemaking have no impact on the information to be collected under OMB
control numbers 0651-0031 (patent processing, updating) and 0651-0032
(initial applications). As discussed previously, this final rule does
not convert the U.S. patent system from a ``first to invent'' to a
``first inventor to file'' system. The U.S. patent system converts from
a ``first to invent'' to a ``first inventor to file'' system by
operation of section 3 of the AIA regardless of the changes that are
adopted in this final rule. Section 3 of the AIA amends the patent laws
pertaining to the conditions of patentability to convert the U.S.
patent system from a ``first to invent'' system to a ``first inventor
to file'' system. This final rule merely revises the rules of practice
in patent cases for consistency with, and to address the examination
issues raised by, the changes in section 3 of the AIA. The changes
being adopted in this final rule do not require any ``extensive''
``adjusting [of] the existing ways to comply with any previously
applicable instructions and requirements.''
Finally, the Paperwork Reduction Act does not prohibit the creation
of a new collection of information (rather than updating existing OMB
information collections) to implement a new program. Creation of a new
collection of information for review and approval by OMB when
implementing a new program having Paperwork Reduction Act implications
is an option for agencies to use at their discretion.
This final rule contains provisions for applicants to: (1) Provide
a statement if a nonprovisional application filed on or after March 16,
2013, claims priority to or the benefit of the filing date of an
earlier application (i.e., foreign, provisional, or nonprovisional
application, or an international application designating the United
States of America), 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) identify the
inventorship and ownership or obligation to assign ownership, of each
claimed invention
[[Page 11052]]
on its effective filing date or on its date of invention, as
applicable, in an application or patent with more than one named joint
inventor, when necessary for purposes of an Office proceeding; and (3)
show that a disclosure was by the inventor or joint inventor, or was by
another 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 another 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 priority to or the
benefit of the filing date of an earlier application (i.e., foreign,
provisional, or nonprovisional application, or international
application designating the United States of America), 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 use the identification of the inventorship and ownership or
obligation to assign ownership, of each claimed invention on its
effective filing date (as defined in 37 CFR 1.109), or on its date of
invention, as applicable, 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 AIA 35
U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e). The Office will use
information concerning whether a disclosure was by the inventor or
joint inventor, or was by another 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 another who
obtained the subject matter from the inventor or a joint inventor, to
determine whether the disclosure qualifies as prior art under AIA 35
U.S.C. 102(a)(1) or (a)(2).
The Office is not resubmitting the proposed information collection
requirements under 0651-0071 to OMB. The Office will accept OMB's
September 12, 2012 preapproval. The proposed information collection
requirements under 0651-0071 remain available at the OMB's Information
Collection Review Web site (www.reginfo.gov/public/do/PRAMain).
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 37 CFR part 1 is
amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
0
2. Section 1.9 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.
* * * * *
0
3. Section 1.14 is amended by revising paragraph (f) to read as
follows:
Sec. 1.14 Patent applications preserved in confidence.
* * * * *
(f) Notice to inventor of the filing of an application. The Office
may publish notice in the Official Gazette as to the filing of an
application on behalf of an inventor by a person who otherwise shows
sufficient proprietary interest in the matter.
* * * * *
0
4. Section 1.17 is amended by revising paragraphs (g) and (i) and
removing and reserving paragraphs (n) and (o).
The revisions read as follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(g) For filing a petition under one of the following sections which
refers to this paragraph: $200.00
Sec. 1.12--for access to an assignment record.
Sec. 1.14--for access to an application.
Sec. 1.46--for filing an application on behalf of an inventor by a
person who otherwise shows sufficient proprietary interest in the
matter.
Sec. 1.55(f)--for filing a belated certified copy of a foreign
application.
Sec. 1.59--for expungement of information.
Sec. 1.103(a)--to suspend action in an application.
Sec. 1.136(b)--for review of a request for extension of time when
the provisions of Sec. 1.136(a) are not available.
Sec. 1.377--for review of decision refusing to accept and record
payment of a maintenance fee filed prior to expiration of a patent.
Sec. 1.550(c)--for patent owner requests for extension of time in
ex parte reexamination proceedings.
Sec. 1.956--for patent owner requests for extension of time in
inter partes reexamination proceedings.
Sec. 5.12--for expedited handling of a foreign filing license.
Sec. 5.15--for changing the scope of a license.
Sec. 5.25--for retroactive license.
* * * * *
(i) Processing fee for taking action under one of the following
sections which refers to this paragraph: $130.00
Sec. 1.28(c)(3)--for processing a non-itemized fee deficiency
based on an error in small entity status.
Sec. 1.41(b)--for supplying the name or names of the inventor or
joint inventors in an application without either an application data
sheet or the inventor's oath or declaration, except in provisional
applications.
Sec. 1.48--for correcting inventorship, except in provisional
applications.
Sec. 1.52(d)--for processing a nonprovisional application filed
with a specification in a language other than English.
Sec. 1.53(c)(3)--to convert a provisional application filed under
Sec. 1.53(c) into a nonprovisional application under Sec. 1.53(b).
Sec. 1.55--for entry of a priority claim or certified copy of a
foreign application after payment of the issue fee.
Sec. 1.71(g)(2)--for processing a belated amendment under Sec.
1.71(g).
Sec. 1.103(b)--for requesting limited suspension of action,
continued
[[Page 11053]]
prosecution application for a design patent (Sec. 1.53(d)).
Sec. 1.103(c)--for requesting limited suspension of action,
request for continued examination (Sec. 1.114).
Sec. 1.103(d)--for requesting deferred examination of an
application.
Sec. 1.217--for processing a redacted copy of a paper submitted in
the file of an application in which a redacted copy was submitted for
the patent application publication.
Sec. 1.221--for requesting voluntary publication or republication
of an application.
Sec. 1.291(c)(5)--for processing a second or subsequent protest by
the same real party in interest.
Sec. 3.81--for a patent to issue to assignee, assignment submitted
after payment of the issue fee.
* * * * *
0
5. Section 1.53 is amended by:
0
a. Revising paragraphs (b) introductory text and (c)(2)(ii) and (iii);
0
b. Removing paragraph (c)(2)(iv);
0
c. Revising paragraph (c)(4); and
0
d. Removing paragraph (j).
The revisions read as follows:
Sec. 1.53 Application number, filing date, and completion of
application.
* * * * *
(b) Application filing requirements--Nonprovisional application.
The filing date of an application for patent filed under this section,
except for a provisional application under paragraph (c) of this
section or a continued prosecution application under paragraph (d) of
this section, is the date on which a specification as prescribed by 35
U.S.C. 112 containing a description pursuant to Sec. 1.71 and at least
one claim pursuant to Sec. 1.75, and any drawing required by Sec.
1.81(a) are filed in the Patent and Trademark Office. No new matter may
be introduced into an application after its filing date. A continuing
application, which may be a continuation, divisional, or continuation-
in-part application, may be filed under the conditions specified in 35
U.S.C. 120, 121, or 365(c) and Sec. 1.78(c) and (d).
* * * * *
(c) * * *
(2) * * *
(ii) Payment of the issue fee on the application filed under
paragraph (b) of this section; or
(iii) Expiration of twelve months after the filing date of the
application filed under paragraph (b) of this section.
* * * * *
(4) A provisional application is not entitled to the right of
priority under 35 U.S.C. 119 or 365(a) or Sec. 1.55, or to the benefit
of an earlier filing date under 35 U.S.C. 120, 121, or 365(c) or Sec.
1.78 of any other application. No claim for priority under 35 U.S.C.
119(e) or Sec. 1.78(a) may be made in a design application based on a
provisional application. The requirements of Sec. Sec. 1.821 through
1.825 regarding application disclosures containing nucleotide and/or
amino acid sequences are not mandatory for provisional applications.
* * * * *
0
6. Section 1.55 is revised to read as follows:
Sec. 1.55 Claim for foreign priority.
(a) In general. An applicant in a nonprovisional application may
claim priority to 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) and this section.
(b) Time for filing subsequent application. The nonprovisional
application must be filed not later than twelve months (six months in
the case of a design application) after the date on which the foreign
application was filed, or be entitled to claim the benefit under 35
U.S.C. 120, 121, or 365(c) of an application that was filed not later
than twelve months (six months in the case of a design application)
after the date on which the foreign application was filed. The twelve-
month period is subject to 35 U.S.C. 21(b) (and Sec. 1.7(a)) and PCT
Rule 80.5, and the six-month period is subject to 35 U.S.C. 21(b) (and
Sec. 1.7(a)).
(c) Time for filing priority claim and certified copy of foreign
application in an application entering the national stage under 35
U.S.C. 371. In an international application entering the national stage
under 35 U.S.C., the claim for priority must be made and a certified
copy of the foreign application must be filed within the time limit set
forth in the PCT and the Regulations under the PCT.
(d) Time for filing priority claim in an application filed under 35
U.S.C. 111(a). In an original application filed under 35 U.S.C. 111(a),
the claim for priority must 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)), and must identify the foreign 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 period in this paragraph does not apply in a design
application.
(e) Delayed priority claim in an application filed under 35 U.S.C.
111(a). 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) in an original application filed under 35
U.S.C. 111(a) not presented in an application data sheet (Sec.
1.76(b)(6)) within the time period provided by paragraph (d) of this
section is considered to have been waived. If a claim for priority is
presented after the time period provided by paragraph (d) of this
section, the claim may be accepted if the priority claim 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) must be
accompanied by:
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f) or
365(a) in an application data sheet (Sec. 1.76(b)(6)), identifying the
foreign application for which priority is claimed, by specifying the
application number, country (or intellectual property authority), day,
month, and year of its filing, unless previously submitted;
(2) A certified copy of the foreign application if required by
paragraph (f) of this section, 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 priority
claim was due under paragraph (d) of this section and the date the
priority claim was filed was unintentional. The Director may require
additional information where there is a question whether the delay was
unintentional.
(f) Time for filing certified copy of foreign application in an
application filed under 35 U.S.C. 111(a). In an original application
filed under 35 U.S.C. 111(a), a certified copy of the foreign
application must 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, except as provided in paragraphs
(h) and (i) of this section. If a certified copy of the foreign
application is not 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, and the exceptions in paragraphs
(h) and (i) of this section are not applicable, the certified copy of
the foreign application must be accompanied by a petition including a
showing of good and sufficient cause for the delay and the petition fee
set forth in Sec. 1.17(g). The time period in this paragraph does not
apply in a design application.
[[Page 11054]]
(g) Requirement for filing priority claim, certified copy of
foreign application, and translation in any application. (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 also
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
otherwise provided in 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.
(h) Foreign intellectual property office participating in a
priority document exchange agreement. The requirement in paragraphs
(c), (f), and (g) for a certified copy of the foreign application to be
filed within the time limit set forth therein will be considered
satisfied if:
(1) The foreign application was filed in a foreign intellectual
property office participating with the Office in a bilateral or
multilateral priority document exchange agreement (participating
foreign intellectual property office), or a copy of the foreign
application was filed in an application subsequently filed in a
participating foreign intellectual property office that permits the
Office to obtain such a copy;
(2) The claim for priority is presented in an application data
sheet (Sec. 1.76(b)(6)), identifying the foreign application for which
priority is claimed, by specifying the application number, country (or
intellectual property authority), day, month, and year of its filing,
and the applicant provides the information necessary for the
participating foreign intellectual property office to provide the
Office with access to the foreign application;
(3) The copy of the foreign application is received by the Office
from the participating foreign intellectual property office, or a
certified copy of the foreign application is filed, within the period
specified in paragraph (g)(1) of this section; and
(4) The applicant files a request in a separate document that the
Office obtain a copy of the foreign application from a participating
intellectual property office that permits the Office to obtain such a
copy if the foreign application was not filed in a participating
foreign intellectual property office but a copy of the foreign
application was filed in an application subsequently filed in a
participating foreign intellectual property office that permits the
Office to obtain such a copy. The request must identify the
participating intellectual property office and the subsequent
application by the application number, day, month, and year of its
filing in which a copy of the foreign application was filed. The
request must be filed within the later of sixteen months from the
filing date of the prior foreign application or four months from the
actual filing date of an application under 35 U.S.C. 111(a), within
four months from the later of the date of commencement (Sec. 1.491(a))
or the date of the initial submission under 35 U.S.C. 371 in an
application entering the national stage under 35 U.S.C. 371, or with a
petition under paragraph (e) of this section.
(i) Interim copy. The requirement in paragraph (f) for a certified
copy of the foreign application to be filed within the time limit set
forth therein will be considered satisfied if:
(1) A copy of the original foreign application clearly labeled as
``Interim Copy,'' including the specification, and any drawings or
claims upon which it is based, is filed in the Office together with a
separate cover sheet identifying the foreign application by specifying
the application number, country (or intellectual property authority),
day, month, and year of its filing, and stating that the copy filed in
the Office is a true copy of the original application as filed in the
foreign country (or intellectual property authority);
(2) The copy of the foreign application and separate cover sheet is
filed within the later of sixteen months from the filing date of the
prior foreign application or four months from the actual filing date of
an application under 35 U.S.C. 111(a), or with a petition under
paragraph (e) of this section; and
(3) A certified copy of the foreign application is filed within the
period specified in paragraph (g)(1) of this section.
(j) Requirements for certain applications filed on or after March
16, 2013. If a nonprovisional application filed on or after March 16,
2013, claims priority to 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 nonprovisional
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 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
nonprovisional application. An applicant is not required to provide
such a statement if the applicant reasonably believes on the basis of
information already known to the individuals designated in Sec.
1.56(c) that the nonprovisional application does not, and did not at
any time, contain a claim to a claimed invention that has an effective
filing date on or after March 16, 2013.
(k) Inventor's certificates. An applicant in a nonprovisional
application may under certain circumstances claim priority on the basis
of one or more applications for an inventor's certificate in a country
granting both inventor's certificates and patents. To claim the right
of priority on the basis of an application for an inventor's
certificate in such a country under 35 U.S.C. 119(d), the applicant
when submitting a claim for such right as specified in this section,
must include an affidavit or declaration. The affidavit or declaration
must include a specific statement that, upon an investigation, he or
she is satisfied that to the best of his or her knowledge, the
applicant, when filing the application for the inventor's certificate,
had the option to file an application for either a patent or an
inventor's certificate as to the subject matter of the identified claim
or claims forming the basis for the claim of priority.
[[Page 11055]]
(l) Time periods not extendable. The time periods set forth in this
section are not extendable.
0
7. 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 as defined in Sec.
1.9(e).
* * * * *
0
8. Section 1.76 is amended by revising paragraphs (b)(5) and (6) to
read as follows:
Sec. 1.76 Application data sheet.
* * * * *
(b) * * *
(5) Domestic benefit information. This information includes the
application number, the filing date, the status (including patent
number if available), and relationship of each application for which a
benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c).
Providing this information in the application data sheet constitutes
the specific reference required by 35 U.S.C. 119(e) or 120, and Sec.
1.78.
(6) Foreign priority information. This information includes the
application number, country, and filing date of each foreign
application for which priority is claimed. Providing this information
in the application data sheet constitutes the claim for priority as
required by 35 U.S.C. 119(b) and Sec. 1.55.
* * * * *
0
9. Section 1.77 is amended by revising paragraph (b)(2), redesignating
paragraphs (b)(6) through (12) as paragraphs (b)(7) through (13), and
adding a new paragraph (b)(6) to read as follows:
Sec. 1.77 Arrangement of application elements.
* * * * *
(b) * * *
(2) Cross-reference to related applications.
* * * * *
(6) Statement regarding prior disclosures by the inventor or a
joint inventor.
* * * * *
0
10. 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. An applicant in 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 this section.
(1) 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, or be entitled to claim the benefit under 35 U.S.C. 120, 121, or
365(c) of an application that was 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 the inventor
or a joint inventor named in the later--filed application as the
inventor or a joint inventor. 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)).
(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.
(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, the applicant will be notified and given a
period of time within which to file, in the prior-filed provisional
application, the translation and the statement. If the notice is mailed
in a pending nonprovisional application, a timely reply to such a
notice must include the filing in the nonprovisional application of
either a confirmation that the translation and statement were filed in
the provisional application, or an application data sheet eliminating
the reference under paragraph (a)(3) of this section to the prior-filed
provisional application, or the nonprovisional application will be
abandoned. The translation and statement may be filed in the
provisional application, even if the provisional application has become
abandoned.
(6) If 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 nonprovisional 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 nonprovisional
application. An applicant is not required to provide such a statement
if the applicant reasonably believes on the basis of information
already known to the individuals designated in Sec. 1.56(c) that the
nonprovisional application does not, and did not at any time, contain a
claim to a claimed invention that has an effective filing date on or
after March 16, 2013.
(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
[[Page 11056]]
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 benefit
claim was due under paragraph (a)(4) of this section and the date the
benefit 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. An applicant
in a nonprovisional application (including an international application
entering the national stage under 35 U.S.C. 371) or an international
application designating the United States of America 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, 121,
or 365(c) and this section.
(1) Each prior-filed application must name the inventor or a joint
inventor named in the later-filed application as the inventor or a
joint inventor. 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 (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 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 also must 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.
(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 in a
design application.
(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)).
(6) If a nonprovisional application filed on or after March 16,
2013, claims the benefit of the filing date of a nonprovisional
application or an international application designating the United
States of America 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 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 later-filed application. An applicant is
not required to provide such a statement if either:
(i) The application claims the benefit of a nonprovisional
application in which a statement under Sec. 1.55(j), paragraph (a)(6)
of this section, or this paragraph that the application contains, or
contained at any time, a claim to a claimed invention that has an
effective filing date on or after March 16, 2013 has been filed; or
(ii) The applicant reasonably believes on the basis of information
already known to the individuals designated in Sec. 1.56(c) that the
later filed application does not, and did not at any time, contain a
claim to a claimed invention that has an effective filing date on or
after March 16, 2013.
(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 benefit
claim was
[[Page 11057]]
due under paragraph (c)(3) of this section and the date the benefit
claim was filed was unintentional. The Director may require additional
information where there is a question whether the delay was
unintentional.
(e) Applications containing patentably indistinct claims. Where two
or more applications filed by the same applicant contain patentably
indistinct 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 patentably indistinct 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 (as defined in Sec. 1.109), or on the date of
the invention, as applicable, of the later claimed invention, the
Office may require the applicant to state whether the claimed
inventions were commonly owned or subject to an obligation of
assignment to the same person on such date. Even if the claimed
inventions were commonly owned, or subject to an obligation of
assignment to the same person on the effective filing date (as defined
in Sec. 1.109), or on the date of the invention, as applicable, of the
later claimed invention, the patentably indistinct 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.
0
11. Section 1.84 is amended by revising paragraph (a)(2) introductory
text to read as follows.
Sec. 1.84 Standards for drawings.
(a) * * *
(2) Color. On rare occasions, color drawings may be necessary as
the only practical medium by which to disclose the subject matter
sought to be patented in a utility or design patent application. The
color drawings must be of sufficient quality such that all details in
the drawings are reproducible in black and white in the printed patent.
Color drawings are not permitted in international applications (see PCT
Rule 11.13), or in an application, or copy thereof, submitted under the
Office electronic filing system. The Office will accept color drawings
in utility or design patent applications only after granting a petition
filed under this paragraph explaining why the color drawings are
necessary. Any such petition must include the following:
* * * * *
Sec. 1.103 [Amended]
0
12. Section 1.103 is amended by removing paragraph (g).
0
13. Section 1.104 is amended by revising paragraphs (c)(4) and (5) and
adding paragraph (c)(6) to read as follows:
Sec. 1.104 Nature of examination.
(c) * * *
(4)(i) Subject matter which would otherwise qualify 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
or patent owner provides a statement to the effect that the subject
matter 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 which would otherwise qualify 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:
(A) The applicant or patent owner provides a statement to the
effect that the subject matter 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 filed on or after November 29, 1999, or any
patent issuing thereon, in an application filed before November 29,
1999, but pending on December 10, 2004, or any patent issuing thereon,
or in any 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 or patent owner provides a statement
to the effect that the subject matter 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 pending on or after December 10, 2004, or
in any 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 or patent owner provides a statement to the
effect that the subject matter 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.
* * * * *
0
14. Section 1.109 is added to read as follows:
Sec. 1.109 Effective filing date of a claimed invention under the
Leahy-Smith America Invents Act.
(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 a right of
priority 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.
[[Page 11058]]
0
15. Section 1.110 is revised to read as follows:
Sec. 1.110 Inventorship and ownership of the subject matter of
individual claims.
When one or more joint inventors are named in an application or
patent, the Office may require an applicant or patentee to identify the
inventorship and ownership or obligation to assign ownership, of each
claimed invention on its effective filing date (as defined in Sec.
1.109) or on its date of invention, as applicable, when necessary for
purposes of an Office proceeding. The Office may also require an
applicant or patentee to identify the invention dates of the subject
matter of each claim when necessary for purposes of an Office
proceeding.
0
16. Section 1.130 is revised to read as follows:
Sec. 1.130 Affidavit or declaration of attribution or prior public
disclosure under the Leahy-Smith America Invents Act.
(a) Affidavit or declaration of attribution. 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
disqualify a disclosure as prior art by establishing that the
disclosure was made by the inventor or a joint inventor, or the subject
matter disclosed was obtained directly or indirectly from the inventor
or a joint inventor.
(b) Affidavit or declaration of prior public disclosure. 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 disqualify a disclosure as prior art by establishing
that the subject matter disclosed had, before such disclosure was made
or before such subject matter was effectively filed, 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. An affidavit or declaration under this paragraph
must identify the subject matter publicly disclosed and provide the
date such subject matter was 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.
(1) If the subject matter publicly disclosed on that date was in a
printed publication, the affidavit or declaration must be accompanied
by a copy of the printed publication.
(2) If the subject matter publicly disclosed on that date was not
in a printed publication, the affidavit or declaration must describe
the subject matter with sufficient detail and particularity to
determine what subject matter had been publicly disclosed on that date
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.
(c) When this section is not available. 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 provisions of this section may not be available 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, the patent or pending application claims an invention that is
the same or substantially the same as the applicant's or patent owner's
claimed invention, and the affidavit or declaration contends that an
inventor named in the U.S. patent or U.S. patent application
publication derived the claimed invention from the inventor or a joint
inventor named in the application or patent, in which case an applicant
or a patent owner may file a petition for a derivation proceeding
pursuant to Sec. 42.401 et seq. of this title.
(d) Applications and patents to which this section is applicable.
The provisions of this section 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, 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.
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17. 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. 1.42 or Sec. 1.46, 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) as 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 naming
another inventor which claims interfering subject matter 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 as in effect on March 15,
2013, on a U.S. patent or U.S. patent application publication which is
not prior art under 35 U.S.C. 102(b) as 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
[[Page 11059]]
(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
as in effect on March 15, 2013.
(d) The provisions of this section apply to any application for
patent, and to any patent issuing thereon, that contains, or contained
at any time:
(1) A claim to an 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 an 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) as in effect on March 15, 2013.
Sec. Sec. 1.293 through 1.297 [Removed and Reserved]
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18. Sections 1.293 through 1.297 are removed and reserved.
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19. Section 1.321 is amended by revising paragraph (d) introductory
text 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 was disqualified
as prior art as set forth in either Sec. 1.104(c)(4)(ii) or (c)(5)(ii)
as the result of activities undertaken within the scope of a joint
research agreement, must:
* * * * *
Dated: February 11, 2013.
Teresa Stanek Rea,
Acting Under Secretary of Commerce for Intellectual Property and Acting
Director of the United States Patent and Trademark Office.
[FR Doc. 2013-03453 Filed 2-13-13; 8:45 am]
BILLING CODE 3510-16-P