[Federal Register Volume 61, Number 161 (Monday, August 19, 1996)]
[Rules and Regulations]
[Pages 42790-42807]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 96-21073]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No: 950620162-6014-02]
RIN 0651-AA75
Miscellaneous Changes in Patent Practice
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The Patent and Trademark Office (Office) is amending the rules
of practice in patent cases to implement a number of miscellaneous
changes proposed in the rulemaking entitled ``Changes to Implement 18-
Month Publication of Patent Applications'' (Notice of Proposed
Rulemaking), published in the Federal Register at 60 FR 42352 (August
15, 1995), and in the Patent and Trademark Office Official Gazette 1177
Off. Gaz. Pat. Office 61 (August 15, 1995), that are not directly
related to the 18-month publication of patent applications. While the
proposed rule changes in the Notice of Proposed Rulemaking were
designed primarily to implement the changes in practice related to the
publication of patent applications provided for in H.R. 1733, these
miscellaneous proposed changes clarify current rules of practice,
without regard to the publication of patent applications.
DATES: Effective Date: September 23, 1996.
Applicability Date: Sections 1.52 (a) and (b), 1.58, 1.72 (b), 1.75
(g), (h) and (i), 1.77, 1.84 (c), (f), (g) and (x), 1.96, 1.154, and
1.163 of 37 CFR apply to applications filed on or after September 23,
1996.
FOR FURTHER INFORMATION CONTACT: Stephen G. Kunin by telephone at (703)
305-8850, by facsimile at (703) 305-8825, by electronic mail at
rbahr@uspto.gov, or Jeffrey V. Nase by telephone at (703) 305-9285, or
by mail marked to the attention of Stephen G. Kunin, addressed to the
Assistant Commissioner for Patents, Washington, D.C. 20231. For copies
of the forms discussed in this final rule package, contact the Customer
Service Center of the Office of Initial Patent Examination at (703)
308-1214.
SUPPLEMENTARY INFORMATION: This final rule package is designed to
implement the miscellaneous changes set forth in the proposed
rulemaking entitled ``Changes to Implement 18-Month Publication of
Patent Applications'' (Notice of Proposed Rulemaking) that are not
directly related to 18-month publication of patent applications and
that are considered desirable even in the absence of an 18-month
publication system.
The Notice of Proposed Rulemaking indicated that, in addition to
implementing the 18-month publication of patent applications, the
Office also proposed to: (1) Clarify which applications claiming the
benefit of prior applications, or which prior applications for which a
benefit is claimed in a later application, will be preserved in
confidence; (2) amend the rules pertaining to the format and standards
for application papers and drawings to improve the standardization of
patent applications; (3) provide for those instances in which
inventions of a pending application or patent under reexamination and
inventions of a patent held by a single party are not identical, but
not patentably distinct; (4) clarify the practice for the delivery or
mailing of patents; (5) expedite the entry of international
applications into the national stage; and (6) amend a number of rules
for consistency and clarity. The Notice of Proposed Rulemaking stated
that these proposed rule changes may be adopted as final rules even in
the absence of an 18-month publication system, and advised interested
persons to comment on any proposed rule change, regardless of whether
H.R. 1733 is enacted.
To avoid delays in the implementation of rule changes considered
desirable even in the absence of an 18-month publication system, this
final rule package provides for changes to 37 CFR 1.12(c), 1.14, 1.52
(a) and (b), 1.54, 1.58, 1.62 (e) and (f), 1.72(b), 1.75(g), 1.77, 1.78
(a) and (c), 1.84 (c), (f), (g) and (x), 1.96, 1.97, 1.107, 1.110,
1.131, 1.132, 1.154, 1.163, 1.291, 1.292, 1.315, 1.321 and 1.497, and
adds new Secs. 1.5(f), 1.75 (h) and (i), and 1.130, all of which are
based upon the changes proposed in the Notice of Proposed Rulemaking.
Implementation of 18-Month Publication Held in Abeyance Pending
Congressional Action on H.R. 1733
The Notice of Proposed Rulemaking also proposed changes to 37 CFR
1.4, 1.5(a), 1.9, 1.11, 1.12 (a) and (b), 1.13, 1.16, 1.17, 1.18, 1.19,
1.20, 1.24, 1.51, 1.52(d), 1.53, 1.55, 1.60, 1.78(a), 1.84(j), 1.85,
1.98, 1.108, 1.136, 1.138, 1.492, 1.494, 1.495, 1.701, 1.808, 3.31,
5.1, new Secs. 1.5(g), 1.306 through 1.308 and 5.9,
[[Page 42791]]
and further changes to Secs. 1.14, 1.54, 1.62, 1.107, 1.131, 1.132,
1.291 and 1.292 to implement the 18-month publication of patent
applications as contained in H.R. 1733 and provide procedures for the
treatment of national security classified applications. The adoption of
changes to these rules is held in abeyance pending Congressional action
on H.R. 1733.
The proposed rule changes in the Notice of Proposed Rulemaking to
provide new procedures for the treatment of national security
classified applications are also being held in abeyance. These proposed
rule changes are separable from the implementation of 18-month
publication; however, they are sufficiently related to the
implementation of 18-month publication that they are also being held in
abeyance pending Congressional action on H.R. 1733.
In the event that H.R. 1733 is enacted, a final rule package to
implement this legislation will be published. Final rules to implement
18-month publication of patent applications based upon the Notice of
Proposed Rulemaking and the comments received in response to the Notice
of Proposed Rulemaking may be adopted without either an additional
public hearing or an additional proposal being published for comment.
Implementation of the Miscellaneous Changes Proposed in the Notice of
Proposed Rulemaking
The following paragraphs of this section include: (1) A discussion
of the rules being added or amended in this final rule package, (2) the
reasons for those additions and amendments, and (3) an analysis of the
comments received in response to the Notice of Proposed Rulemaking.
Changes to Proposed Rules
These final rules contain a number of changes to the text of the
rules as proposed for comment. The significant changes are discussed
below. Familiarity with the Notice of Proposed Rulemaking is assumed.
Sections 1.14 (a) and (b) have been re-written for clarity. Section
1.14(a)(1) provides that patent applications are generally preserved in
confidence. Section 1.14(a)(2) sets forth the circumstances under which
status information concerning an application may be supplied, and
Sec. 1.14(a)(3) sets forth the circumstances under which access to, or
copies of, an application may be provided. Section 1.14(b) provides
that abandoned applications may be destroyed after 20 years from their
filing date. The reference to paragraph (b) in Sec. 1.14(e) has been
deleted for consistency with the changes to paragraphs (a) and (b) of
Sec. 1.14.
Section 1.52(a) is being changed to provide that all papers which
are to become a part of the permanent records of the Patent and
Trademark Office must be legibly ``written either by a typewriter or
mechanical printer in permanent dark ink or its equivalent,'' rather
than ``typed in permanent dark ink.'' This change will permit the
filing of papers printed by any computer operated printer, such as a
laser printer which uses toner rather than ink, and will avoid a
conflict between Sec. 1.52(a) and Patent Cooperation Treaty (PCT) Rule
11.9. The phrase ``when required by the Office'' was also added to
Sec. 1.52(a).
Section 1.52(b) is being changed to provide that: (1) The
application papers must be plainly written with each page printed on
only one side of a sheet of paper, with the claim or claims commencing
on a separate sheet and the abstract commencing on a separate sheet;
(2) the lines of the specification, and any amendments to the
specification, must be 1\1/2\ or double spaced; and (3) the pages of
the specification including claims and abstract must be numbered
consecutively, starting with 1, the numbers being centrally located
above or preferably, below, the text. This change will clarify: (1) The
separate sheet requirement for both the claims and abstract, (2) that
the lines of the papers not comprising the specification and amendments
thereto need not be 1\1/2\ or double spaced, and (3) that the
specification, and not the transmittal sheets or other forms, must be
numbered.
Section 1.58 is being changed to provide that chemical and
mathematical formulae and tables must be presented in compliance with
Secs. 1.52 (a) and (b), except that chemical and mathematical formulae
or tables may be placed in a landscape orientation if they cannot be
presented satisfactorily in a portrait orientation. This replaces the
requirement that ``[t]o facilitate camera copying when printing, the
width of formulas and tables as presented should be limited normally to
12.7 cm. (5 inches) so that it may appear as a single column in the
printed patent.'' However, chemical and mathematical formulae and
tables must still otherwise comply with Secs. 1.52 (a) and (b). This
change will avoid a conflict between Sec. 1.58 and PCT Rule 11.10(d).
Section 1.58 is also being changed to require ``0.21 cm.'' rather than
``2.1 mm.'' to ensure consistency.
Section 1.72 is being changed to provide that the abstract must
commence on a separate sheet, preferably following the claims. This
change will avoid renumbering pages of a specification submitted in the
arrangement set forth in Sec. 1.77 when filing the application as an
international application.
Section 1.75(h) is being changed to provide that the claim or
claims must commence on a separate sheet. This change will clarify that
Sec. 1.75 requires that the claim or claims commence or begin on a
separate sheet, rather than requiring that all of the claims must be on
a single separate sheet or that each claim must be on a separate sheet.
Section 1.77 is being changed to position the abstract as element
``(12)'' following the claims, rather than element ``(3)'' prior to the
first page of the specification to conform to Sec. 1.72.
Section 1.78(a)(2) is being changed to replace the reference to
Sec. 1.14(b) with a reference to Sec. 1.14(a).
Section 1.78(c) is being changed to replace the phrase ``[w]here an
application or a patent under reexamination and an application or a
patent'' with the phrase ``[w]here an application or a patent under
reexamination and at least one other application,'' since conflicting
claims between an application or a patent under reexamination and a
patent will be provided for in new Sec. 1.130. Section 1.78(c) is also
being changed to delete the sentence ``[i]n addition to making said
statement, the assignee may also explain why an interference should or
should not be declared,'' since the Office will not, unless good cause
is shown, declare or continue an interference when the application(s)
and patent are owned by a single party.
Section 1.78(d) is removed. The provisions of Sec. 1.78(d), as
proposed, are in new Sec. 1.130(b), since Sec. 1.130 provides for
conflicting claims between an application or a patent under
reexamination and a patent.
Section 1.84(x) is being changed from ``[n]o holes should be
provided in the drawings sheets'' to ``[n]o holes should be made by the
applicant in the drawing sheets'' to clarify that the application
papers, including drawings, should be submitted by the applicant
without holes provided therein, but that the Office will drill holes
through the application papers during the pre-examination processing of
the application.
Section 1.96(b) is being changed to provide that a listing
submitted as part of the specification ``must be direct printouts
(i.e., not copies) from the computer's printer'' for clarity.
Section 1.96(c) is being changed to substitute a reference to 36
CFR Part
[[Page 42792]]
1230 (Micrographics) for the enumerated American National Standards
Institute (ANSI) and National Micrographics Association (NMA)
standards. As 36 CFR Part 1230 sets forth the micrographic requirements
for government records, it is appropriate to reference this provision,
rather than promulgate separate standards for micrographics employed in
patent applications.
Section 1.97 is being changed to delete any reference to a
reexamination proceeding or a patent owner. The submission of an
information disclosure statement during a reexamination proceeding is
governed by Sec. 1.555(a).
Section 1.97(a) is being changed from ``[i]n order for an applicant
for patent or for reissue of a patent to have information considered by
the Office during the pendency of a patent application, an information
disclosure statement in compliance with Sec. 1.98 should be filed in
accordance with this section'' to ``[i]n order for an applicant for a
patent or for a reissue of a patent to have an information disclosure
statement in compliance with Sec. 1.98 considered by the Office during
the pendency of the application, it must satisfy paragraph (b), (c), or
(d) of this section'' for clarity. Sections 1.97 (c) and (d) are also
being changed to clarify the conditions in Sec. 1.97(c) under which a
certification as specified in Sec. 1.97(e) or the fee set forth in
Sec. 1.17(p) is required, and the conditions in Sec. 1.97(d) under
which a certification as specified in Sec. 1.97(e), a petition, and the
petition fee set forth in Sec. 1.17(i) are required.
Section 1.110 is amended to change the reference to Sec. 1.78(d) to
a reference to Sec. 1.130 for consistency.
The proposed addition of a new Sec. 1.131(a)(3) is being withdrawn
in this final rule package. This proposed change, as well as the
provisions of former Sec. 1.78(d), has been re-written as a new
Sec. 1.130. New Sec. 1.130(a) will provide a procedure for the
disqualification of a commonly owned patent claiming a patentably
indistinct but not identical invention. New Sec. 1.130(b) will include
the provisions of former Sec. 1.78(d).
Section 1.131(a) is being changed to replace the phrase ``U.S.
patent to another'' with ``U.S. patent to another or others.''
Section 1.154(a)(7) is being changed to add ``[f]eature'' prior to
``[d]escription,'' and Sec. 1.154(a)(8) is being changed to add ``a
single'' prior to ``claim.''
Section 1.163 is being changed to position the abstract as element
``(11)'' following the claims, rather than element ``(3)'' prior to the
first page of the specification. This change will parallel the change
to Sec. 1.77. In addition, Sec. 1.163(c)(10) is being changed to add
``a single'' prior to ``claim.''
Section 1.497(b)(2) is being changed to provide that ``[i]f the
person making the oath or declaration is not the inventor, the oath or
declaration shall state the relationship of the person to the inventor,
the facts required by Secs. 1.42, 1.43 or 1.47, and, upon information
and belief, the facts which the inventor would have been required to
state'' to better set forth the requirements of an oath or declaration
by a person who is not the inventor. Section 1.497(c) is being changed
to delete the initial phrase ``[t]he oath or declaration must comply
with the requirements of Sec. 1.63; however,'' since it is unnecessary.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1 is amended as
follows:
Section 1.5(f) is added to provide that a paper concerning a
provisional application must identify the application as such and by
the application number.
Section 1.12 is amended to revise paragraph (c) to read ``preserved
in confidence under Sec. 1.14'' for consistency with Sec. 1.14.
Section 1.14 is amended to revise the title and paragraphs (a) and
(e) to read ``preserved in confidence'' for consistency with the
language in 35 U.S.C. 122.
Section 1.14(a) is amended to add a paragraph (a)(1) to provide
that patent applications are generally preserved in confidence pursuant
to 35 U.S.C. 122, and that no information will be given concerning the
filing, pendency, or subject matter of any application for patent, and
no access will be given to, or copies furnished of, any application or
papers relating thereto, except as set forth in Sec. 1.14.
Section 1.14(a) is also amended to add a paragraph (a)(2) to
provide that status may be supplied: (1) Concerning an application or
any application claiming the benefit of the filing date of the
application, if the application has been identified by application
number or serial number and filing date in a published patent document;
(2) concerning the national stage application or any application
claiming the benefit of the filing date of a published international
application, if the United States of America has been indicated as a
Designated State in the international application; or (3) when it has
been determined by the Commissioner to be necessary for the proper
conduct of business before the Office. Status information includes
information such as whether the application is pending, abandoned, or
patented, as well as the application number and filing date. The
inclusion of applications claiming the benefit of the filing date of
applications so identified is to avoid misleading the public in
instances in which the application identified as set forth in
Sec. 1.14(a)(2) is abandoned, but an application claiming the benefit
of the filing date of the identified application (e.g., a continuing
application) is pending.
Section 1.14(a) is also amended to add a new paragraph (a)(3) to
provide that access to, or copies of, an application may be provided:
(1) When the application is open to the public as provided in
Sec. 1.11(b); (2) when written authority in that application from the
applicant, the assignee of the application, or the attorney or agent of
record has been granted; (3) when it has been determined by the
Commissioner to be necessary for the proper conduct of business before
the Office, or (4) to any person on written request, without notice to
the applicant, when the application is abandoned and available and is:
(a) Referred to in a U.S. patent, (b) referred to in an application
open to public inspection, (c) an application which claims the benefit
of the filing date of an application open to public inspection, or (d)
an application in which the applicant has filed an authorization to lay
open the complete application to the public.
Section 1.14(b) is amended to provide that complete applications
(Sec. 1.51(a)) which are abandoned may be destroyed and hence may not
be available for access or copies as permitted by paragraph (a)(3)(iv)
of this section after 20 years from their filing date, except those to
which particular attention has been called and which have been marked
for preservation. The sentence in Sec. 1.14(b) concerning the non-
return of abandoned applications is deleted as duplicative of the
provision in Sec. 1.59, which provides that papers in an application
which has received a filing date will not be returned, and is unrelated
to the preservation of applications in confidence under Sec. 1.14.
Section 1.52(a) is amended to provide that all papers which are to
become a part of the permanent records of the Office must be legibly
written by a typewriter or mechanical printer in permanent dark ink or
its equivalent in portrait orientation on flexible, strong, smooth,
non-shiny, durable and white paper. Section 1.52(a) is further amended
to provide that the application papers must be presented in a form
[[Page 42793]]
having sufficient clarity and contrast between the paper and the
writing thereon to permit electronic reproduction by use of digital
imaging and optical character recognition, as well as the direct
photocopy reproduction currently provided for. Section 1.52(a) is
further amended to provide that substitute typewritten or mechanically
printed papers ``will'' be required if the original application papers
are not of the required quality. As any substitute typewritten or
mechanically printed papers containing the subject matter of the
originally filed application papers would constitute a substitute
specification, the provisions of Sec. 1.125 governing the entry of a
substitute specification would be applicable, and Sec. 1.52(a) is
amended to include a specific reference to Sec. 1.125.
Section 1.52(b) is amended to provide that the claim or claims must
commence on a separate sheet and the abstract must commence on a
separate sheet. Section 1.72(b) provides that the abstract must
commence on a separate sheet, and Sec. 1.75(h) provides that the claim
or claims must commence on a separate sheet. Section 1.52(b) is amended
to provide that the sheets of paper must all be the same size and
either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/
2\ by 11 inches), with a top margin of at least 2.0 cm. (\3/4\ inch), a
left side margin of at least 2.5 cm. (1 inch), a right side margin of
at least 2.0 cm. (\3/4\ inch), and a bottom margin of at least 2.0 cm.
(\3/4\ inch), and that no holes should be made in the submitted paper
sheets. Section 1.52(b) is further amended to provide that the lines of
the specification, and any amendments to the specification, ``must'' be
1\1/2\ or double spaced, and that the pages of the specification
``must'' be numbered consecutively, starting with page one, with the
numbers being centrally located above or below the text. Finally,
Sec. 1.52(b) is amended to specifically reference drawings to clarify
that drawings are part of the application papers, but that the
standards for drawings are set forth in Sec. 1.84.
The proposed changes to Secs. 1.52 (a) and (b), 1.58, 1.72(b), 1.75
(g), (h), and (i), 1.77, 1.84 (c), (f), (g), and (x), 1.96, 1.154, and
1.163 pertaining to the format and standards for application papers and
drawings in the Notice of Proposed Rulemaking are considered desirable,
regardless of whether H.R. 1733 is enacted.
While the vast majority of applications currently comply with
Secs. 1.52 (a) and (b), 1.58, 1.72(b), 1.75(h), 1.84 (c), (f), (g), and
(x), and 1.96 as adopted in this final rule, those applications which
do not comply with Secs. 1.52 (a) and (b), 1.58, 1.84 (c), (f), (g),
and (x), and 1.96 as adopted in this final rule (e.g., applications
containing hand-written papers) create an inordinate administrative
burden on the Office during the initial processing, examination, and
publishing of the application as a patent. In addition, the Office
plans to replace or augment the current microfilming process with
electronic data capture of at least the technical content (i.e., the
specification, abstract, claims and drawings) of the application-as-
filed for internal Office use, regardless of whether H.R. 1733 is
enacted. Therefore, the Office will no longer permit these relatively
few applicants to submit application papers and drawings that do not
meet the standards set forth in Secs. 1.52 (a) and (b), 1.58, 1.84 (c),
(f), (g), and (x), and 1.96 as adopted in this final rule.
The application format set forth in Secs. 1.75 (g) and (i), 1.77,
1.154, and 1.163 as adopted in this final rule merely expresses the
Office's preferences for format of utility, design and plant
applications. They do not set forth mandatory requirements for
application papers and drawings.
Section 1.54(b) is amended to change ``application serial number''
to ``application number'' for consistency with Sec. 1.5(a).
Section 1.58(b) is removed and is reserved as unnecessary in view
of the amendments to Secs. 1.52 (a) and (b).
Section 1.58(c) is amended to provide that chemical and
mathematical formulae and tables must be presented in compliance with
Secs. 1.52 (a) and (b), except that chemical and mathematical formulae
or tables may be placed in a landscape orientation if they cannot be
presented satisfactorily in a portrait orientation. Section 1.58(c) is
further amended to delete the following sentences to conform to the
writing and paper size and orientation limitations in Secs. 1.52 (a)
and (b): (1) ``[t]o facilitate camera copying when printing, the width
of formulas and tables as presented should be limited normally to 12.7
cm. (5 inches) so that it may appear as a single column in the printed
patent''; (2) ``[i]f it is not possible to limit the width of a formula
or table to 5 inches (12.7 cm.), it is permissible to present the
formula or table with a maximum width of 10\3/4\ inches (27.3 cm.) and
to place it sideways on the sheet''; and (3) ``[h]and lettering must be
neat, clean, and have a minimum character height of 0.08 inch (2.1
mm.).'' Section 1.58(c) is further amended to insert ``chosen'' between
``must be'' and ``from a block (nonscript) type font.'' Section 1.58(c)
is further amended to provide metric dimensions with English
equivalents in parentheticals, rather than vice versa.
Section 1.62(e) is amended to change ``application serial number''
to ``application number'' for consistency with Sec. 1.5(a).
Section 1.62(f) is amended to change ``secrecy'' to ``confidence''
as is found in 35 U.S.C. 122 and Sec. 1.14, and change ``37 CFR 1.14''
to ``Sec. 1.14'' for consistency.
Section 1.72(b) is amended to provide that the abstract must
``commence,'' rather than ``be set forth,'' on a separate sheet. This
change will conform the ``separate sheet'' requirement for the abstract
with that for the claims.
Section 1.75 is amended to include an amendment to paragraph (g),
and would add two new paragraphs. Section 1.75(g) is amended to add the
phrase ``[t]he least restrictive claim should be presented as claim
number 1'' to the beginning of the paragraph. Section 1.75(h) is added
to provide that the claim or claims must commence on a separate sheet.
Section 1.75(i) is added to provide that where a claim sets forth a
plurality of elements or steps, each element or step of the claim
should be separated by a line indentation.
Section 1.77 is amended to provide that the elements of the
application, if applicable, should appear in the following order: (1)
Utility Application Transmittal Form; (2) Fee Transmittal Form; (3)
title of the invention; or an introductory portion stating the name,
citizenship, and residence of the applicant, and the title of the
invention; (4) cross-reference to related applications; (5) statement
regarding federally sponsored research or development; (6) reference to
a ``Microfiche appendix; (7) background of the invention; (8) brief
summary of the invention; (9) brief description of the several views of
the drawing; (10) detailed description of the invention; (11) claim or
claims; (12) abstract of the disclosure; (13) drawings; (14) executed
oath or declaration; and (15) sequence listing.
The phrase ``if applicable'' is inserted in the heading, rather
than associated with any particular listed element, to clarify that
Sec. 1.77 does not per se require that an application include all of
the listed elements, but merely provides that any listed element
included in the application should appear in the order set forth in
Sec. 1.77. Section 1.77 is further amended to provide that the (1)
title of the invention; (2) cross-reference to related applications;
(3) statement regarding federally sponsored research or development;
(4) background of the invention; (5) brief summary of the
[[Page 42794]]
invention; (6) brief description of the several views of the drawing;
(7) detailed description of the invention; (8) claim or claims; (9)
abstract of the disclosure; and (10) sequence listing, should appear in
upper case, without underlining or bold type, as section headings, and
if no text follows the section heading, the phrase ``Not Applicable''
should follow the section heading. Finally, Sec. 1.77 is amended to
change the reference to Sec. 1.96(b) in Sec. 1.77(a)(6) to Sec. 1.96(c)
for consistency with Sec. 1.96.
Section 1.78(a)(2) is amended to replace the reference to
Sec. 1.14(b) with a reference to Sec. 1.14(a) for consistency with
Secs. 1.14 (a) and (b) as amended.
Section 1.78(c) is amended to change ``two or more applications, or
an application and a patent'' to ``an application or a patent under
reexamination and at least one other application'' such that the
provisions of Sec. 1.78(c) will also be applicable to a patent under
reexamination. Section 1.78(c) is also amended to correct ``inventors
and owned by the same party contain conflicting claims'' to read
``inventors are owned by the same party and contain conflicting
claims.'' Section 1.78(c) is also amended to delete the sentence ``[i]n
addition to making said statement, the assignee may also explain why an
interference should or should not be declared.''
Section 1.78(d) is removed. The provisions of former Sec. 1.78(d),
as proposed, are in new Sec. 1.130(b).
Section 1.84(c) is amended to provide that a reference to the
application number, or, if an application number has not been assigned,
the inventor's name, may be included in the left-hand corner of the
drawing sheet, provided that reference appears within 1.5 cm. (\9/16\
inch) from the top of the sheet.
Section 1.84(f) is amended to provide that the size of all drawing
sheets in an application must be either 21.0 cm. by 29.7 cm. (DIN size
A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches) to conform to the
requirement in Sec. 1.52(b) concerning papers in an application.
Section 1.84(g) is amended to delete the margin requirements for
the sheet sizes that are no longer acceptable in view of the changes to
Sec. 1.84(f). Section 1.84(g) is further amended to provide that the
sheets should have scan targets (cross-hairs) on two catercorner margin
corners. Finally, Sec. 1.84(g) is amended to increase the bottom and
side margins such that each sheet must include a top margin of at least
2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a
right side margin of at least 1.5 cm. (\9/16\ inch), and a bottom
margin of at least 1.0 cm. (\3/8\ inch), thereby leaving a sight no
greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4)
drawing sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6\15/
16\ by 9\5/8\ inches) on 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inch)
drawing sheets.
Section 1.84(x) is amended to delete the provisions indicating the
proper location for holes in a drawing sheet, and provide that no holes
should be provided in the drawing sheets.
Section 1.96 is amended to designate the text preceding current
paragraph (a) as paragraph (a) ``General,'' and would redesignate
current paragraphs (a) and (b) as paragraphs (b) and (c), respectively.
New Sec. 1.96(a) is further amended to insert a period between
``specification'' and ``[a] computer,'' to change ``these rules'' to
``this section,'' and to change ``may be submitted in patent
applications in the following forms'' to ``may be submitted in patent
applications as set forth in paragraphs (b) and (c) of this section.''
New Sec. 1.96(b) is further amended to: (1) Change the sentences
``[t]he listing may be submitted as part of the specification in the
form of computer printout sheets (commonly 14 by 11 inches in size) for
use as `camera ready copy' when a patent is subsequently printed'' and
``[s]uch computer printout sheets must be original copies from the
computer with dark solid black letters not less than 0.21 cm. high, on
white, unshaded and unlined paper, the printing on each sheet must be
limited to an area 9 inches high by 13 inches wide, and the sheets
should be submitted in a protective cover'' to ``[a]ny listing
submitted as part of the specification must be direct printouts (i.e.,
not copies) from the computer's printer with dark solid black letters
not less than 0.21 cm. high, on white, unshaded and unlined paper, and
the sheets should be submitted in a protective cover''; (2) delete the
sentence ``[w]hen printed in patents, such computer printout sheets
will appear at the end of the description but before the claims and
will usually be reduced about 1/2 in size with two printout sheets
being printed as one patent specification page''; and (3) delete the
phrase ``if the copy is to be used for camera ready copy.'' New
Sec. 1.96(b)(1) provides that the requirements of Sec. 1.84 apply to
computer program listings submitted as sheets of drawings, and new
Sec. 1.96(b)(2) provides that the requirements of Sec. 1.52 apply to
computer program listings submitted as part of the specification.
New Sec. 1.96(c) is amended to: (1) Change the references to
Sec. 1.77(c)(2) in Sec. 1.96(c) to Sec. 1.77(a)(6) for consistency with
Sec. 1.77; (2) change ``may'' and ``should'' to ``must''; (3) delete
the sentence ``[a]ll computer program listings submitted on paper will
be printed as part of the patent''; (4) relocate the phrase ``except as
modified or clarified below'' in subsection (c)(2); (5) change the
phrase ``computer-generated information submitted as an appendix to an
application for patent shall be in the form of microfiche in accordance
with the standards'' to ``computer-generated information submitted as a
`microfiche appendix' to an application shall be in accordance with the
standards'' for clarity; (6) change the references to the specific
American National Standards Institute (ANSI) or National Micrographics
Association (NMA) standards with 36 CFR Part 1230; (7) change ``serial
number'' to ``application number''; and (8) provide metric dimensions
with English equivalents in parentheticals, rather than vice versa.
Section 1.97(a) is amended to include the phrase ``for an applicant
for patent or for reissue of a patent.'' Paragraphs (a)-(d) are amended
to include the phrase ``by the applicant'' to clarify that Sec. 1.97 is
not available for any third party seeking to have information
considered in a pending application. Any third party seeking to have
information considered in a pending application must proceed under
Secs. 1.291 or 1.292. As discussed supra, Secs. 1.97 (a), (c) and (d)
are also being amended for clarity. Section 1.97(c) is further amended
to correct the phrase ``certification as specified in paragraph (3) of
this section'' to read ``certification as specified in paragraph (e) of
this section.''
Section 1.107 is amended to delete the phrase ``and the classes of
inventions.''
Section 1.110 is amended to change the reference to Sec. 1.78(d) to
a reference to Sec. 1.130 for consistency with the removal of
Sec. 1.78(d), and the location of the provisions of former Sec. 1.78(d)
in Sec. 1.130(b).
A new paragraph (a)(3) in Sec. 1.131 was proposed in the Notice of
Proposed Rulemaking to permit a showing of prior invention in a pending
application or patent under reexamination to avoid a rejection under 35
U.S.C. 103 based upon a patent which qualifies as prior art only under
35 U.S.C. 102 (a) or (e), where the application or patent under
reexamination and the patent upon which the rejection is based are both
owned by a single party, so long as the invention claimed in the
pending application or patent under reexamination and in the other
patent are not identical as set forth in 35 U.S.C. 102. Upon further
study, it is considered
[[Page 42795]]
appropriate to disqualify such patents, and provide for the obviation
of judicially created double patenting rejections in an application or
a patent under reexamination by the filing of a terminal disclaimer in
accordance with Sec. 1.321(c), in a separate Sec. 1.130.
New Sec. 1.130(a) provides that when any claim of an application or
a patent under reexamination is rejected under 35 U.S.C. 103 on a U.S.
patent to another or others which is not prior art under 35 U.S.C.
102(b), and the inventions defined by the claims in the application or
patent under reexamination and by the claims in the patent are
patentably indistinct but not identical as set forth in 35 U.S.C. 101,
and the inventions are owned by the same party, the applicant or owner
of the patent under reexamination may disqualify the patent as prior
art. Section 1.130(a) specifically provides that the patent can be
disqualified as prior art by submission of: (1) A terminal disclaimer
in accordance with Sec. 1.321(c), and (2) an oath or declaration
stating that the application or patent under reexamination and the
patent 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.
Where inventions defined by the rejected claims in the application
or a patent under reexamination and by the claims in the patent upon
which the rejection is based are patentably distinct, the rejection may
be overcome pursuant to Sec. 1.131. Since Sec. 1.130 applies only when
inventions defined by the claims in an application or a patent under
reexamination and by the claims in the patent are patentably
indistinct, Sec. 1.130 expressly provides that an oath or declaration
submitted pursuant to Sec. 1.130 to disqualify a patent must be
accompanied by a terminal disclaimer in accordance with Sec. 1.321(c).
As the conflict between two pending applications can be avoided by
filing a continuation-in-part application merging the conflicting
inventions into a single application, Sec. 1.130 is limited to
rejections based upon a patent.
New Sec. 1.130(b) includes the provisions of former Sec. 1.78(d),
as proposed in the Notice of Proposed Rulemaking. Former Sec. 1.78(d)
was proposed to be amended to change ``obviousness-type double
patenting rejection'' to ``non-statutory double patenting rejections''
as current examining procedures authorize non-obviousness-type double
patenting rejections, as well as obviousness-type double patenting
rejections (See section 804(II) of the Manual of Patent Examining
Procedure (MPEP)), and either may be obviated by filing a terminal
disclaimer in accordance with Sec. 1.321(c). The phrase ``non-statutory
double patenting rejection,'' however, is being replaced with
``judicially created double patenting rejection'' to better set forth
the legal basis for the rejection.
Section 1.78(d) was also proposed to be amended to change each
instance of ``application'' to ``application or a patent under
reexamination'' for consistency with Sec. 1.321 and to clarify that
double patenting is a proper consideration in reexamination (Ex parte
Obiaya, 227 USPQ 58, 60-61 (Bd. Pat. App. & Inter. 1985)), and that a
judicially created double patenting rejection in a patent under
reexamination may be obviated by filing a terminal disclaimer in
accordance with Sec. 1.321(c).
New Sec. 1.130(b) specifically provides that where an application
or a patent under reexamination claims an invention which is not
patentably distinct from an invention claimed in a commonly owned
patent with the same or a different inventive entity, a double
patenting rejection will be made in the application or a patent under
reexamination, and that a judicially created double patenting rejection
may be obviated by filing a terminal disclaimer in accordance with
Sec. 1.321(c).
Section 1.131 is amended to change ``U.S. patent to another'' to
``U.S. patent to another or others'' to parallel the language in 35
U.S.C. 102(a), as well as 35 U.S.C. 102(e).
Section 1.132 is amended to change ``domestic patent'' to ``U.S.
patent,'' and ``does not claim the invention'' to ``does not claim the
same patentable invention, as defined in Sec. 1.601(n)'' for
consistency with Sec. 1.131.
Section 1.154 is amended to provide that the elements of a design
application, if applicable, should appear in the following order: (1)
Design Application Transmittal Form; (2) Fee Transmittal Form; (3)
preamble, stating name of the applicant and title of the design; (4)
cross-reference to related applications; (5) statement regarding
federally sponsored research or development; (6) description of the
figure or figures of the drawing; (7) feature description; (8) a single
claim; (9) drawings or photographs; and (10) executed oath or
declaration. The phrase ``[t]he following order of arrangement should
be observed in framing design specifications'' is changed to ``[t]he
elements of the design application, if applicable, should appear in the
following order'' to clarify that Sec. 1.154 does not per se require
that an application include all of the listed elements, but merely
provides that any listed element included in the application should
appear in the order set forth in Sec. 1.154. This amendment to
Sec. 1.154, however, does not modify the current requirement that an
application for a design patent have but a single claim.
A new Sec. 1.163(c) is added to provide that the elements of a
plant application, if applicable, should appear in the following order:
(1) Plant Application Transmittal Form; (2) Fee Transmittal Form; (3)
title of the invention; (4) cross-reference to related applications;
(5) statement regarding federally sponsored research or development;
(6) background of the invention; (7) brief summary of the invention;
(8) brief description of the drawing; (9) detailed botanical
description; (10) a single claim; (11) abstract of the disclosure; (12)
drawings (in duplicate); (13) executed oath or declaration; and (14)
Plant Color Coding Sheet. The phrase ``if applicable'' is included in
the heading, rather than associated with any particular listed element,
to clarify that Sec. 1.163 does not per se require that an application
include all of the listed elements, but merely provides that any listed
element included in the application should appear in the order set
forth in Sec. 1.163. This amendment to Sec. 1.163, however, does not
modify the current requirement that an application for a plant patent
have but a single claim.
A new Sec. 1.163(d) is added to define a plant color coding sheet.
A plant color coding sheet is a sheet that specifies a color coding
system as designated in a color dictionary, and lists every plant
structure to which color is a distinguishing feature and the
corresponding color code which best represents that plant structure.
The plant color coding sheet will provide a means for applicants to
uniformly convey detailed color characteristics of the plant. Providing
this information in a systematic manner will facilitate the examination
of the application.
Section 1.291 is amended to provide that a protest must be filed
prior to the mailing of a Notice of Allowance to be considered timely.
As a protest cannot be considered subsequent to issuance of the
application as a patent, Sec. 1.291(b) is amended to provide that the
protest will be considered if the application is still pending when the
protest and application file are provided to the examiner (i.e., that
the application was pending at the time the protest was filed would be
immaterial to its ultimate consideration). Finally, the sentences
[[Page 42796]]
``[p]rotests raising fraud or other inequitable conduct issues will be
entered in the application file, generally without comment on those
issues'' and ``[p]rotests which do not adequately identify a pending
patent application will be disposed of and will not be considered by
the Office'' in Sec. 1.291 are changed to ``[p]rotests raising fraud or
other inequitable conduct issues will be entered in the application
file, generally without comment on those issues'' and ``[p]rotests
which do not adequately identify a pending patent application will be
returned to the protestor and will not be further considered by the
Office,'' respectively, and are located in paragraph (b). The Office
will acknowledge protests prior to their entry into the application
file or return to the protestor, as appropriate.
Section 1.292 is amended to delete the phrase ``is filed by one
having information of the pendency of an application'' as unnecessary,
and would move the requirement for the fee set forth in Sec. 1.17(j)
from paragraph (a) to paragraph (b) where the conditions for entry of a
petition for the institution of public use proceedings are set forth.
Section 1.292 is amended to further require that any petition be served
on the applicant in accordance with Sec. 1.248, or be filed with the
Office in duplicate in the event that service on the applicant is not
possible. Finally, Sec. 1.292 is amended to provide that a petition to
institute public use proceedings to be considered timely must be filed
prior to the mailing of a Notice of Allowance.
Section 1.315 is amended to change ``the attorney or agent of
record, if there be one; or if the attorney or agent so request, to the
patentee or assignee of an interest therein; or, if there be no
attorney or agent, to the patentee or to the assignee of the entire
interest, if he so request'' to ``the correspondence address of record.
See Sec. 1.33(a).'' This change is to simplify Sec. 1.315, and because
patents are currently mailed to the patentee at the correspondence
address of record.
Section 1.321(c) is amended to change ``double patenting
rejection'' to ``judicially created double patenting rejection'' for
consistency with Sec. 1.78(c) and to clarify that the filing of a
terminal disclaimer is ineffective to overcome a statutory double
patenting rejection.
Section 1.497(a) is amended to provide that an applicant in an
international application must file an oath or declaration that: (1) Is
executed in accordance with either Secs. 1.66 or 1.68, (2) identifies
the specification to which it is directed, (3) identifies each inventor
and the country of citizenship of each inventor, and (4) states that
the person making the oath or declaration believes the named inventor
or inventors to be the original and first inventor or inventors of the
subject matter which is claimed and for which a patent is sought,
rather than an oath or declaration in accordance with Sec. 1.63, to
enter the national stage pursuant to Secs. 1.494 or 1.495. Currently,
the failure to file an oath or declaration in strict compliance with
Sec. 1.63 results in non-compliance with Sec. 1.497, and thus 35 U.S.C.
371, which in turn delays the entry of the international application
into the national stage. To expedite the entry of international
applications into the national stage, Sec. 1.497(a) is amended to
require only an oath or declaration that is properly executed,
identifies the specification to which it is directed, and, as required
by 35 U.S.C. 115, identifies each inventor and the country of
citizenship of each inventor and states that the person making the oath
or declaration believes the named inventor or inventors to be the
original and first inventor or inventors of the subject matter which is
claimed and for which a patent is sought.
Section 1.497(b) is subdivided into paragraphs (b)(1) and (b)(2).
Section 1.497(b)(1) is amended to provide that the oath or declaration
must be made by all of the actual inventors except as provided for in
Secs. 1.42, 1.43 or 1.47. Section 1.497(b)(2) is amended to change
``[i]f the international application was made as provided in
Secs. 1.422, 1.423 or 1.425, the applicant shall state his or her
relationship to the inventor and, upon information and belief, the
facts which the inventor is required by Sec. 1.63 to state'' to ``[i]f
the person making the oath or declaration is not the inventor, the oath
or declaration shall state the relationship of the person to the
inventor, the facts required by Secs. 1.42, 1.43 or 1.47, and, upon
information and belief, the facts which the inventor would have been
required to state.''
Section 1.497(c) is added to provide that the oath or declaration
must comply with the requirements of Sec. 1.63. Section 1.497(c)
further provides that in instances where the oath or declaration does
not comply with Sec. 1.63, but meets the requirements of Sec. 1.497 (a)
and (b), the oath or declaration will be accepted as complying with 35
U.S.C. 371(c)(4) and Secs. 1.494(c) or 1.495(c), thus permitting the
application to enter the national stage and the assignment of dates
under 35 U.S.C. 102(e) and 371(c). A supplemental oath or declaration
in compliance with Sec. 1.63, however, will be required in accordance
with Sec. 1.67.
Response to Comments
Two hundred and forty-two written comments were received in
response to the Notice of Proposed Rulemaking. A public hearing was
held on September 19, 1995. Eight persons testified at the public
hearing.
The written comments, and the testimony at the public hearing, have
been analyzed. In the event that H.R. 1733 is enacted, the comments
directed to the proposed changes to the rules of practice to implement
the 18-month publication of patent applications will be considered and
addressed in the final rule package to implement 18-month publication.
Responses to the comments germane to the changes in this final rule
package follow.
Comment (1): One comment suggested that, in the absence of an 18-
month publication system, the proposed rules relating to application
format and standardization of applications be republished to give the
public an opportunity to comment on the desirability of these changes
in the absence of an 18-month publication system.
Response: The Notice of Proposed Rulemaking specifically stated
that the proposed rules relating to application format and
standardization of applications may be adopted as final rules even in
the absence of an 18-month publication system, and specifically advised
interested members of the public to comment on the advisability of the
proposed rules relating to application format and standardization of
applications, regardless of the legislative action on H.R. 1733. Thus,
the public was given an opportunity to comment on the desirability of
these changes in the absence of an 18-month publication system. Because
the standardization of applications is generally favored and will
substantially improve the Office's ability to efficiently and
effectively process applications, delaying their adoption as final
rules is not justified.
Comment (2): One comment stated that the Office has the authority
to require that applications be submitted in computer-readable form,
and in fact requires sequence listings to be submitted in such form.
The comment suggested that the cost of electronically scanning
application papers, as well as errors in scanning the application
papers, can be avoided by requiring applicants to provide the
specification in computer-readable form. Another comment stated that
the Office has the authority to permit electronic filing, and
electronic filing should be permitted. Several other comments indicated
that
[[Page 42797]]
scanning an application into a data base, rather than permitting
applicants to provide a copy of the application on an electronic
medium, is more costly, and is further more likely to introduce errors
that could render text searching unreliable. And, several comments
suggested that the scanning and typesetting costs associated with the
current publication process for issued patents could be reduced by the
acceptance of electronic media in place of or in addition to the paper
medium currently provided for in the rules of practice. These comments
further suggested that the Office should establish fees that reflect
the reduced cost to the Office when a copy of an application is
provided on an electronic medium (i.e., should establish reduced fees
for those who submit a copy of their application on an electronic
medium), which fee structure would provide an incentive to supply a
copy of an application on an electronic medium.
Response: As discussed in the Notice of Proposed Rulemaking, while
the Office is considering the legislative and regulatory changes that
would be necessary to permit purely electronic filing of application
papers, it does not currently have in place an automated system for the
acceptance and processing of application papers in electronic form,
other than for sequence listings. Moreover, the Office does not
currently have the statutory authority to rebate statutory patent
filing fees to reflect any reduced cost to the Office due to the
submission of a copy of an application on an electronic medium. The
Office will give the comments further consideration as it designs and
develops the Patent Application Management (PAM) system.
Comment (3): Several comments noted that Secs. 1.52 (a) and (b)
impose a standard on applicants not currently observed by the Office,
and questioned whether papers in the application file prepared by the
Office will comply with Secs. 1.52 (a) and (b).
Response: Sections 1.52 (a) and (b) apply to the application
papers, and amendments or corrections thereto. As such, Secs. 1.52 (a)
and (b) do not apply to those papers in the application file prepared
by the Office, since they do not become part of the printed patent.
Comment (4): One comment noted that proposed Sec. 1.52 appears to
be neutral with regard to numbering the lines (e.g., a line number
every five lines) of the specification, and suggested that line
numbering is a beneficial practice which should be permitted, and even
encouraged.
Response: Section 1.52 neither requires nor prohibits line
numbering. Applicants are encouraged, but not required, to number the
lines of the specification. The Office will give the suggestion further
study and consideration in future rulemaking.
Comment (5): One comment noted that when paragraphs are separated
by a blank line only (i.e., no indentation) and end between pages, it
is not possible to tell that a paragraph break occurred. The comment
suggested that the application format requirements should additionally
require an indentation at the beginning of each new paragraph.
Response: It is desirable that a specification include an
indentation at the beginning of a new paragraph. This requirement,
however, was not proposed for comment in the Notice of Proposed
Rulemaking. In addition, PCT Rule 11 does not require that the
beginning of each new paragraph in the specification be indented.
Comment (6): One comment noted that Sec. 1.52(a) would prohibit
handwriting or hand-printing on papers which are to become permanent
Office records. The comment questioned whether this requirement would
also apply to papers issued in the Office. The comment suggested
revising Office practice to prohibit an examiner from handwriting
comments on official papers (e.g., advisory actions or interview
summary records) because: (1) The handwriting is not always
decipherable, and (2) the handwriting as it comes through on the carbon
copies furnished to applicants is frequently too light at least in part
to be decipherable.
Response: The Office's goal is to create a readable administrative
record of the prosecution of every application. The Office is currently
designing, testing and implementing electronic forms and Office action
writing software to avoid or minimize the need for hand-writing/
printing in Office communications. Any applicant receiving an Office
communication in which the handwriting is not decipherable, or does not
adequately appear on the carbon copies to be decipherable, should
request a legible copy of such communication from the Office.
Comment (7): Several comments noted that the limitations in
Sec. 1.52 (a) and (b) regarding ``typed'' and ``ink'' appear to exclude
computer and laser printers, as well as commercially or mechanically
printed papers such as declaration forms. Another comment noted that
the limitations in Secs. 1.52 (a) and (b) regarding ``typed'' and
``ink'' are more restrictive than PCT Rule 11.9 (a) and (d).
Response: The phrase ``printed'' was proposed to be deleted since
it could be read to mean that hand-printing is acceptable. Section
1.52(a) will require, in part, that ``[a]ll papers which are to become
a part of the permanent records of the Patent and Trademark Office must
be legibly written either by a typewriter or mechanical printer in
permanent dark ink or its equivalent in portrait orientation on
flexible, strong, smooth, non-shiny, durable, and white paper.'' This
will clarify that papers printed by a computer-operated laser, or any
mechanical printer are acceptable, but that hand-printed papers are
not. This change will also avoid inconsistencies with the requirements
of PCT Rule 11.9.
Comment (8): One comment noted that the proposed changes to
Sec. 1.52(a) did not include any limitations regarding permissible type
fonts. The comment questioned, since the purpose of the proposed rule
change was to permit optical character recognition (OCR) scanning of
the application papers, whether script fonts would be permissible.
Response: Section 1.52(a) does not include any express prohibition
against the use of script fonts. Nevertheless, Sec. 1.52(a) requires
that ``the application papers must be presented in a form having
sufficient clarity and contrast between the paper and the writing
thereon to permit * * * electronic reproduction by use of digital
imaging and optical character recognition.'' Any application papers,
including application papers containing a script font, that are not in
a form having sufficient clarity and contrast between the paper and the
writing thereon to permit electronic reproduction by use of digital
imaging and optical character recognition will be objected to as not in
compliance with Sec. 1.52(a). Therefore, the Office cautions applicants
not to submit application papers having script fonts.
Comment (9): One comment noted that Sec. 1.52(b) would require that
all papers (including drawings per proposed Sec. 1.84) be limited to
either DIN size A4 or 8\1/2\ by 11 inches, which would eliminate the
currently allowed paper sizes of 8\1/2\ by 13 or 14 inches. The comment
questioned whether this would also apply to the official papers issued
by the Office, noting that the Office currently issues papers having a
paper size mix of 8\1/2\ by 11, 13, and 14 inches, which presents
problems for applicants. The comment suggested that the Office should
not issue papers of a size not permitted in Sec. 1.52.
Response: The Office is currently in the process of standardizing
to either
[[Page 42798]]
21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by
11 inches).
Comment (10): One comment suggested that the Office should not
issue papers with writing on the back side in accordance with
Sec. 1.52(b).
Response: The Office currently includes informational language on
the back side of certain forms. The alternatives to issuing such forms
with writing on the back side are: (1) Not providing this information
to applicants, (2) reducing the print size to permit all of the
information to be located on the front of the form, or (3) routinely
providing multiple page forms. Since none of the alternatives are
preferable to simply including informational language on the back side
of certain forms, the Office will continue to include information
language on the back of papers issued by the Office, until it fully
transforms all of its forms to electronically generated forms.
Comment (11): One comment questioned whether the phrase ``claims on
a separate sheet'' in Sec. 1.52(b) means that: (1) All of the claims
must appear on a single separate sheet, (2) each claim must appear on a
separate sheet, or (3) the claims (claim 1) must begin or commence on a
separate sheet. The comment suggested the PCT wording that the claims
shall commence on a separate sheet if the rule is intended to require
that the claims (claim 1) must begin or commence on a separate sheet.
Response: The phrase has been changed to ``the claim or claims
commencing on a separate sheet'' to clarify that the claims must begin
or commence on a separate sheet to parallel PCT requirements. Thus,
Secs. 1.52(b) and 1.75(h) require that the claims (claim 1) must begin
or commence on a separate sheet. Sections 1.52(b) and 1.75(h) do not
require that all of the claims be set forth on a single sheet, or that
each claim be set forth on a separate sheet.
Comment (12): One comment questioned whether the phrase ``abstract
and claims on a separate sheet'' in Sec. 1.52(b) means that the
abstract is to be on one separate sheet, and the claims are to be (or
commence) on another separate sheet.
Response: The phrase has been changed to ``the claim or claims
commencing on a separate sheet and abstract commencing on a separate
sheet'' to clarify that the claims must commence on one separate sheet
and the abstract must commence on another separate sheet.
Comment (13): One comment noted that the requirement in
Sec. 1.52(b), as proposed, will require that the lines in the oath or
declaration, as well as quotations from the rules, the MPEP, and court
decisions in subsequently filed amendments, be 1\1/2\ or double spaced,
and is inconsistent with the forms included for comment with the Notice
of Proposed Rulemaking.
Response: Section 1.52(b) has been changed to require, inter alia,
that ``[t]he lines of the specification, and any amendments to the
specification, must be 1\1/2\ or double spaced.'' The requirement for
1\1/2\ or double spacing will not apply to oaths or declarations, pre-
printed forms, or all of the statements in the ``Remarks'' section of
an amendment. Applicants are nevertheless requested to submit papers
with lines 1\1/2\ or double spaced, except in standardized forms or
where single-spacing may be stylistically necessary (e.g., block
quotations).
Comment (14): One comment questioned whether the requirement in
Sec. 1.52(b), as proposed, that papers have lines 1\1/2\ or double
spaced will apply to Office actions. The comment suggested that not
placing block quotations from the statutes and regulations in single
spacing will decrease the readability of Office actions.
Response: As discussed supra, Secs. 1.52 (a) and (b) are designed
to facilitate patent printing and do not apply to Office actions.
Section 1.52(b) has been changed to require, inter alia, that ``[t]he
lines of the specification, and any amendments to the specification,
must be 1\1/2\ or double spaced.'' Therefore, the requirement for 1\1/
2\ or double spaced lines will not apply to Office actions.
Comment (15): Several comments objected to the requirement that
tables be in portrait orientation as inconsistent with PCT rules, and
as causing tables to be split over multiple pages.
Response: The suggestions are adopted. Section 1.58 will state that
``[c]hemical and mathematical formulae and tables must be presented in
compliance with Secs. 1.52 (a) and (b), except that chemical and
mathematical formulae or tables may be placed in a landscape
orientation if they cannot be presented satisfactorily in a portrait
orientation,'' rather than ``[t]o facilitate camera copying when
printing, the width of formulae and tables as presented should be
limited normally to 12.7 cm. (5 inches) so that it may appear as a
single column in the printed patent.''
Comment (16): One comment stated that Sec. 1.72 is contrary to PCT
Rule 11.4(a), and will require renumbering of the application pages for
later filing of that application in the European Patent Office (EPO) or
under the PCT.
Response: Section 1.72, as proposed in the Notice of Proposed
Rulemaking, provided that the abstract be ``preferably prior to the
first page of the specification,'' and, as such, merely expressed the
Office's preference for the location of the abstract as prior to the
first page of the specification. Nevertheless, to avoid the undesirable
result of requiring an applicant who submitted an application in the
format set forth in Sec. 1.77 to renumber the specification pages for
filing that application in the EPO or under the PCT, Sec. 1.72 is
changed to state that the preferable location of the abstract is
following the claims.
Comment (17): One comment stated that requiring that the rarely
used section headings (e.g., statement regarding federally sponsored
research and development) be followed by the phrase ``not-applicable''
is confusing.
Response: Section 1.77 is permissive rather than mandatory. As
such, any applicant finding the format suggested therein to be
confusing is at liberty to simply include those section headings
applicable to the particular application. The use of each section
heading, even when the section is ``not-applicable,'' is desirable in
that it apprises the Office that the section at issue has been
considered and deemed inapplicable. Simply not providing a section
heading is ambiguous as to whether the applicant considers the section
inapplicable or has not considered whether the section is applicable to
the application. In addition, the use of such section headings will be
of greater benefit when the Office implements procedures to permit the
electronic filing of patent applications.
Comment (18): One comment stated that the requirements set forth in
Sec. 1.77 are in addition to those required by the PCT. The comment
argued that the Office cannot require international applications
entering the national stage under 35 U.S.C. 371 to comply with these
requirements.
Response: As discussed supra, Sec. 1.77 merely expresses the
Office's preference for the arrangement of the application elements.
The Office may advise an applicant that the application does not comply
with the format set forth in Sec. 1.77, and suggest this format for the
applicant's consideration; however, the Office will not require any
application to comply with the format set forth in Sec. 1.77.
Therefore, there is no conflict between Sec. 1.77 and the PCT.
Comment (19): One comment noted that Secs. 1.154 and 1.163 apply to
design and plant applications, and, as such, they are not in conflict
with PCT Rules. The comment suggested that it would,
[[Page 42799]]
however, be preferable that all types of U.S. applications maintain the
same order of application elements, and that this order be the order
set forth by the PCT Rules.
Response: As discussed supra, the arrangement of the elements of an
application set forth in Sec. 1.77 is not mandatory, and, as such,
Sec. 1.77 is not in conflict with the PCT or PCT Rules. Section 1.77
merely expresses the Office's preference for the arrangement of the
elements of an application. The Office's preference for the format of
design applications (Sec. 1.154) and plant applications (Sec. 1.163) is
the same as the Office's preference for utility applications
(Sec. 1.77).
Comment (20): One comment stated that in the absence of statutory
requirements for the application elements proposed in Secs. 1.77,
1.154, and 1.163, the rule should clearly state that these application
elements or arrangements are preferred but not mandatory.
Response: Sections 1.77, 1.154, and 1.163 employ the phrase
``should'' rather than ``must,'' which is the language of a precatory
statement. Therefore, Secs. 1.77, 1.154, and 1.163 currently state that
these application elements or arrangements are preferred, but are not
mandatory.
Comment (21): One comment questioned whether the Application
Transmittal Form, and Fee Transmittal Form set forth in Sec. 1.77
should be numbered pages 1 and 2 pursuant to Sec. 1.52, and further
questioned where the drawings and oath or declaration are to be
numbered.
Response: Section 1.52 has been changed to provide that the pages
of the specification, not the application, should be consecutively
numbered beginning with page 1. The Application Transmittal Form, and
Fee Transmittal Form set forth in Sec. 1.77 are not part of the
specification. As such, they should not be numbered as pages 1 and 2,
respectively. Likewise, the drawings and oath or declaration are not
part of the specification, and need not be numbered.
Comment (22): One comment stated that the failure to include the
phrase ``not applicable'' by all of the application elements not
required by statute or regulation rendered it unclear as to whether the
Office would object to the lack of an application element for which the
phrase ``not applicable'' is not included.
Response: The Office anticipates that an applicant choosing to use
the Transmittal forms provided by the Office will arrange his or her
application in the format suggested by the Office. The patent statutes
and regulations set forth the requirements for a complete application,
as well as the requirements for obtaining a filing date in an
application. Applications are examined for compliance with the patent
statutes and regulations, not for consistency with any particular
transmittal form.
Comment (23): One comment noted, in regard to Sec. 1.84(c), that
the drawings of an international application, which are often used for
processing in the Office, will have the World Organization (WO)
publication number and International Bureau (IB) publication date on
the top of the drawing.
Response: The WO publication number and IB publication date placed
on the top of the drawing of an international application is not
objectionable under Sec. 1.84(c).
Comment (24): One comment stated that the scan target points
conflict with PCT Rule 11.6(e). As such, the scan target points would
have to be removed from applications to be filed as an international
application. The comment further stated that these target points are
unnecessary in view of the paper size and margin requirements.
Response: Section 1.84(g) states that drawings ``should,'' and not
``must,'' have scan target points printed on two catercorner margin
corners. Thus, Sec. 1.84(g) merely expresses the Office's preference
for scan target points on the drawings for filming and printing
purposes, which are considered desirable due to the different sights on
21.0 cm. by 29.7 cm. (DIN size A4) and 21.6 cm. by 27.9 cm. (8\1/2\ by
11 inch) drawing sheets. An applicant wishing to provide scan target
points on drawings that will later be filed in the EPO may simply copy
the drawings to be filed in the EPO, place the scan target points only
on the Office copy of the drawings, and submit the copy of the drawings
containing the scan target points to the Office. Likewise, applicants
filing drawings that were previously filed in the EPO should simply add
scan target points only to the copy of the drawings to be filed in the
Office. Nevertheless, as Sec. 1.84(g) merely expresses a preference for
scan target points for Office filming and printing purposes, an
applicant intending to later file the application in the EPO, or any
applicant, is at liberty to not include such scan target points on the
drawings. The Office will not object to the absence of scan target
points on any drawings filed in the Office. Therefore, Sec. 1.84(g)
does not include a requirement in excess of, or inconsistent, with PCT
Rules.
Comment (25): One comment stated that the term ``catercorner'' is
slang, and suggested that it be replaced in Sec. 1.84(g) with a phrase
such as ``diagonally opposite.''
Response: The term ``catercorner'' is not slang. While there are a
number of acceptable English phrases to denote diagonally opposite, the
term ``catercorner'' was selected to avoid using a multiple word phrase
where a single word will suffice.
Comment (26): One comment stated that the language proposed to be
added to Sec. 1.97 regarding a reexamination or patent owner is
inconsistent with Sec. 1.533 and suggested that it be deleted.
Response: The suggestion is adopted.
Comment (27): One comment stated that Sec. 1.131 does not specify
whether the phrase ``application'' includes provisional applications.
The comment suggested that Sec. 1.131 be amended to state ``unless the
date of such patent or publication is more than one year prior to the
earliest date on which the inventor's or patent owner's application or
provisional application from which that application claims priority
therefrom was filed in this country.''
Response: The proposed change to Sec. 1.131 is not adopted. It is
well established that the filing date of any abandoned application co-
pending with and referred to in a patent is the effective date of the
patent with respect to the common subject matter disclosed in the
patent and abandoned application. See In re Switzer, 166 F.2d 827, 77
USPQ 156 (CCPA 1948). Section 1.131 does not make a specific reference
to nonprovisional applications for which a benefit is claimed under 35
U.S.C. 120; however, it is understood that the effective date of any
patent sought to be antedated pursuant to Sec. 1.131 is the earliest
filing date of any application to which the patent is entitled to under
35 U.S.C. 120 with respect to the common subject matter disclosed in
the patent and the application. The provisions of title 35, except for
35 U.S.C. 115, 131, 135 and 157, apply to provisional applications. 35
U.S.C. 111(b)(8). It is therefore likewise unnecessary to specifically
reference provisional applications in Sec. 1.131.
Comment (28): Several comments objected to Secs. 1.291 and 1.292 as
pre-grant opposition, especially in view of the pre-grant publication
of pending applications that would be provided for in H.R. 1733, if
enacted, and the expanded reexamination that would be provided for in
H.R. 1732, if enacted. The comments either suggested that the protest
and public use proceeding
[[Page 42800]]
provisions of Secs. 1.291 and 1.292 be severely limited or abolished.
Response: The changes to Secs. 1.291 and 1.292 place greater
obligations on third parties seeking to use these sections. As such,
this rule change does not add to any third party's ability to
participate in the prosecution of a pending application. Nevertheless,
as neither H.R. 1732 nor H.R. 1733 has presently been enacted, analysis
of whether modification of Secs. 1.291 and 1.292 in addition to that
proposed in the Notice of Proposed Rulemaking is desirable in a pre-
grant publication or expanded reexamination system is held in abeyance
pending enactment of H.R. 1733 or 1732.
Comment (29): One comment noted that any standardization of patent
applications should not include pre-printed forms taking eleven hours
to complete. The comment further suggested that word-processor versions
of any collection of information, rather than pre-printed forms, would
be of greater assistance to members of the public.
Response: Initially, the Notice of Proposed Rulemaking indicated
that the initial patent application (e.g., the specification, drawings,
as well as the standard forms), not merely the proposed standardized
forms, is a collection of information estimated to average eleven hours
to complete. The Notice of Proposed Rulemaking stated that the public
reporting burden for these collections of information is estimated to
average: (1) Twelve minutes per response for the Fee Transmittal form,
(2) twelve minutes per response for the Utility Patent Application
Transmittal form, (3) twelve minutes per response for the Design Patent
Application Transmittal form, (4) twelve minutes per response for the
Plant Patent Application Transmittal form, (5) twelve minutes per
response for the Plant Color Coding Sheet, (6) twenty-four minutes per
response for the Declaration form, and (7) twenty-four minutes per
response for the Plant Patent Application Declaration. Nevertheless,
the final rules do not require the use of any standardized form. The
Office publishes standardized forms only as an aid to practitioners and
applicants.
Comment (30): One comment questioned whether use of the
standardized versions of the various forms would be required. Another
comment stated that the Office has no authority to require the use of
the published forms in the absence of statutory authority.t
Response: Use of the forms included for comment with the Notice of
Proposed Rulemaking is not mandatory. That is, an applicant need not
use the standardized versions of the Fee Transmittal form, Utility
Patent Application Transmittal form, Design Patent Application
Transmittal form, Plant Patent Application Transmittal form, Plant
Color Coding Sheet, Declaration form and Plant Patent Application
Declaration form, and need not use any fee transmittal form,
application transmittal form, or plant color coding sheet. These forms
were created to assist applicants in filing a patent application and to
help ensure the filing of a complete application accompanied by the
appropriate fees, thereby avoiding unnecessary delays in the
examination of the application.
Comment (31): One comment stated that the Office should not require
the use of mandated forms, and if the Office requires the use of
mandated forms, the Office should revise the forms to render them
readily reproducible by conventional software, and should arrange for
versions of these forms in various formats to be distributed by the
Internet, bulletin board, or floppy disk. Another comment suggested
that the Office should make its form or templates available for
electronic copying.
Response: Copies of the standard forms provided by the Office may
be obtained by contacting the Customer Service Center of the Office of
Initial Patent Examination at (703) 308-1214. Also, many standardized
forms have been loaded on the Office's Internet Website and may be
electronically copied via the Internet through anonymous file transfer
protocol (ftp) (address: ftp.uspto.gov). Nevertheless, use of the forms
included for comment with the Notice of Proposed Rulemaking is not
mandatory.
Comment (32): One comment questioned why there is a box with an
instruction to type a plus sign in the box at the very top of the
standardized forms.
Response: As discussed supra, the Office plans to replace or
augment the current microfilming process with an electronic data base
which captures at least the technical content of the application-as-
filed for internal Office use. Typing a plus sign (+) into this box
will facilitate the image scanner in aligning the remaining typing on
the form during the scanning process.
Comment (33): One comment questioned: (1) Why the application
transmittal forms do not have a place for applicant to indicate the
type of new utility application being transmitted (e.g., a provisional,
original, continuation, division, continuation-in-part, reissue), and
(2) how the Office official will obtain this information for entry in
the official use ``application type'' box.
Response: The Utility Patent Application Transmittal form sets
forth instructions for filing utility applications under Sec. 1.53 in
the arrangement set forth in Sec. 1.77. All non-reissue, nonprovisional
utility applications (i.e., original, continuation, divisional, and
continuation-in-part applications) filed under Sec. 1.53 should be
submitted using the Utility Patent Application Transmittal form. The
Design Patent Application Transmittal form sets forth instructions for
filing design applications in the arrangement set forth in Sec. 1.154.
All non-reissue design applications should be submitted using the
Design Patent Application Transmittal form. The Plant Patent
Application Transmittal form sets forth instructions for filing plant
applications in the arrangement set forth in Sec. 1.163. All non-
reissue, nonprovisional plant applications should be submitted using
the Plant Patent Application Transmittal form.
A Reissue Patent Application Transmittal form is also available,
and all applications for the reissue of a patent should be submitted
using the Reissue Patent Application Transmittal form. The cover sheet
provided for in Sec. 1.53(b)(2)(i) for a provisional application
functions as a transmittal sheet for a provisional application. As
such, the standardized Provisional Application Cover Sheet is the
transmittal form for a provisional application. The provisional
application cover sheet was published in the rulemaking entitled
``Changes to Implement 20-Year Patent Term and Provisional
Applications,'' in the Federal Register at 60 FR 20230-31 (April 25,
1995), and in the Patent and Trademark Office Official Gazette at 1174
Off. Gaz. Pat Office 45-46 (May 2, 1995).
To provide a place on the Application Transmittal form for claims
under 35 U.S.C. 119, 120, or 121 would require the use of an
unacceptably smaller font on the Application Transmittal form. The
Declaration forms provide a place for stating claims under 35 U.S.C.
119, 120 or 121. The inclusion on filing of an executed or unexecuted
Declaration form containing this information would assist the Office in
ascertaining whether the application is an original, continuation,
divisional, or continuation-in-part application. In addition, in the
event that H.R. 1733 is enacted, and the proposed changes to
Secs. 1.55(a) and 1.78(a)(2) are adopted substantially as proposed, the
routine
[[Page 42801]]
inclusion of claims for priority under 35 U.S.C. 119, 120, or 121 in an
executed or unexecuted declaration form accompanying the application
papers would be an excellent mechanism for avoiding an inadvertent
failure to timely submit a claim for priority under 35 U.S.C. 119, 120,
or 121.
Comment (34): One comment noted that the heading ``DECLARATION''
does not state the types of applications with which the declaration
form could be used. The comment questioned whether it is intended to be
used with any type of nonprovisional application except plant
applications for which a separate form is proposed.
Response: The declaration form containing the heading
``DECLARATION'' is intended to be used with any type of nonprovisional
application except plant applications, for which a separate Plant
Declaration form is provided.
Comment (35): One comment suggested that in the foreign priority
claim section of the Declaration form, the last line, the phrase
``having a filing date before that of the application on which priority
is claimed'' should be changed to ``for which priority is not
claimed,'' to cover those foreign applications which have a filing date
after that of the application on which priority is claimed and the
benefit of which applicant does not want to claim. The comment also
indicated that, frequently, an application is filed after the
Convention Year.
Response: The suggestion is not adopted. Section 1.63(c) requires
that an oath or declaration in any application in which a claim for
priority is made pursuant to Sec. 1.55 identify * * * ``any foreign
application having a filing date before that of the application on
which priority is claimed, by specifying the application number,
country, day, month, and year of its filing.'' Thus, the language in
the Declaration form aids applicants in submitting a declaration in
compliance with Sec. 1.63(c). Any foreign application having a filing
date before that of the application on which priority is claimed is, by
definition, a foreign application for which priority is not claimed.
Comment (36): One comment suggested that in the foreign priority
claim section, the right hand columns, the heading should be corrected
to ``Certified Copy Attached'' since the Office does not routinely want
uncertified copies.
Response: The suggestion is adopted. The Declaration form has been
modified accordingly.
Comment (37): One comment noted that the Fee Calculation and
Application Transmittal are currently on a single sheet/form, where the
proposed forms provide a separate sheet/form for each. The comment also
noted that the current Declaration form is a single sheet, where the
proposed Declaration form contains multiple sheets.
Response: The Office currently receives application transmittals,
fee calculations/transmittals and declarations in a variety of forms
and in a multitude of formats. The proposed forms were developed as a
result of an analysis of the current practices and requirements of
applicants, as well as the Office's plans to scan application data from
these forms into an electronic data base. The Fee Transmittal form was
created to aid applicants in submitting the fees due on filing a new
patent application, as well as the fees that may be due throughout the
prosecution of the application. The Application Transmittal serves to
both aid applicants in filing a complete application, and simplify the
pre-examination processing of the application. To permit the inclusion
of additional fee calculation and application transmittal information
on the standardized forms, and to provide a Fee Transmittal form for
use throughout the prosecution of the application, a separate Fee
Transmittal form and Application Transmittal form were developed. A
multi-page Declaration form is necessary to accommodate the Office's
plans to scan application data from this Declaration form into an
electronic data base.
Comment (38): One comment indicated that the meaning or purpose of
``suffix'' in the inventor signature block is unclear, and requested an
explanation as to whether it refers to ``Jr.'' or ``II,'' or whether it
is a place to put the mother's name for those inventors whose family
name is followed by their mother's name.
Response: The field on the Declaration form labeled (inventor)
``suffix'' is intended to provide the applicant with an option to
indicate family position relative to age. Examples of an inventor's
suffix are: Jr., Sr., and III. This information is tracked by the
Office and is necessary to print patents which accurately reflect
bibliographic information about the inventor. The use of this field and
the data expected will be clarified and specified in the form
instructions.
Comment (39): One comment questioned the meaning or purpose of
``Applicant Authority'' in the last line of the inventor data block.
Response: The phrase ``Applicant Authority'' indicates the
authority that the applicant has in executing the application (e.g.,
inventor, executor (Sec. 1.42), assignee (Sec. 1.47(b)). This field is
an optional field for the applicant to complete. The electronic
versions of the proposed standard declaration forms would provide the
applicant with directions and a list of valid codes that correspond
with a specific identification of the authority the applicant retains
(e.g., the Authority Code for an executor will be ``04'').
Comment (40): One comment stated that due to the spacing and small
fonts on the fee transmittal form, this sheet cannot be used with a
conventional word processor.
Response: To accommodate all the fee descriptions on a one-page fee
transmittal it was necessary to use smaller fonts in the form's design.
These fonts are available in Word and WordPerfect. An electronic
version of the fee transmittal will be available from the Office soon.
Comment (41): One comment stated that the ``one form fits all''
mentality of the fee transmittal form should be reconsidered since
certain fees are submitted only once during the prosecution of an
application.
Response: The proposed standard one-page fee form is primarily to
facilitate and simplify the fee payment process. The one-page fee
transmittal is intended to aid applicants in providing complete fee
information to the Office for each application and paper submission.
This will enable the Office to more efficiently process and record fee
payments, which will avoid delays in the prosecution of an application.
Other Considerations
This final rule change is in conformity with the requirements of
the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order
12612, and the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et seq.
It has been determined that this final rule is not significant for the
purposes of Executive Order 12866.
The Assistant General Counsel for Legislation and Regulation of the
Department of Commerce has certified to the Chief Counsel for Advocacy,
Small Business Administration, that this rule change will not have a
significant economic impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The principal effect of
this rule change is to simplify and clarify the rules governing the
form of patent application papers.
The Office has also determined that this notice has no Federalism
implications affecting the relationship between the National Government
and
[[Page 42802]]
the States as outlined in Executive Order 12612.
Notwithstanding any other provision of law, no person is required
to respond to nor shall any 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.
This final rule package contains a collection of information
subject to the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et seq.
This collection of information is currently approved by the Office of
Management and Budget under Control No. 0651-0032. This collection of
information includes the initial patent application filing, the Fee
Transmittal form, the Utility Patent Application Transmittal form, the
Design Patent Application Transmittal form, the Plant Patent
Application Transmittal form, the Plant Color Coding Sheet, the
Declaration form, and the Plant Patent Application Declaration form.
The above-mentioned forms will reduce the burden and uncertainty
associated with the submission of an application and related
information, and enhance the Office's ability to use standardized
automation techniques (optical character recognition, etc.) to record
and process information concerning applications. The public reporting
burden for these collections of information is estimated to average:
(1) Ten hours per response for the specification and drawings of an
application, (2) twelve minutes per response for the Fee Transmittal
form, (3) twelve minutes per response for the Utility Patent
Application Transmittal form, (4) twelve minutes per response for the
Design Patent Application Transmittal form, (5) twelve minutes per
response for the Plant Patent Application Transmittal form, (6) twelve
minutes per response for the Plant Color Coding Sheet, (7) twenty-four
minutes per response for the Declaration form, and (8) twenty-four
minutes per response for the Plant Patent Application Declaration.
These estimates include the time for reviewing instructions, searching
existing data sources, gathering and maintaining the data needed, and
completing and reviewing the collections of information.
Send comments regarding this burden estimate or any other aspect of
this collection of information, including suggestions for reducing this
burden to the Office of System Quality and Enhancement, Data
Administration Division, Patent and Trademark Office, Washington, DC
20231, and to the Office of Information and Regulatory Affairs, Office
of Management and Budget, Washington, DC 20503 (ATTN: Paperwork
Reduction Act Project 0651-0032).
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR Part 1 is amended
as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. Section 1.5 is amended by adding paragraph (f) to read as
follows:
Sec. 1.5 Identification of application, patent or registration.
* * * * *
(f) When a paper concerns a provisional application, it should
identify the application as such and include the application number.
3. Section 1.12 is amended by revising paragraph (c) to read as
follows:
Sec. 1.12 Assignment records open to public inspection.
* * * * *
(c) Any request by a member of the public seeking copies of any
assignment records of any pending or abandoned patent application
preserved in confidence under Sec. 1.14, or any information with
respect thereto, must:
(1) Be in the form of a petition accompanied by the petition fee
set forth in Sec. 1.17(i); or
(2) Include written authority granting access to the member of the
public to the particular assignment records from the applicant or
applicant's assignee or attorney or agent of record.
* * * * *
4. Section 1.14 is amended by revising the section heading and
paragraphs (a), (b), and (e) to read as follows:
Sec. 1.14 Patent applications preserved in confidence.
(a) (1) Patent applications are generally preserved in confidence
pursuant to 35 U.S.C. 122. No information will be given concerning the
filing, pendency, or subject matter of any application for patent, and
no access will be given to, or copies furnished of, any application or
papers relating thereto, except as set forth in this section.
(2) Status information, which includes information such as whether
the application is pending, abandoned, or patented, as well as the
application number and filing date, may be supplied:
(i) Concerning an application or any application claiming the
benefit of the filing date of the application, if the application has
been identified by application number or serial number and filing date
in a published patent document,
(ii) Concerning the national stage application or any application
claiming the benefit of the filing date of a published international
application, if the United States of America has been indicated as a
Designated State in the international application, or
(iii) When it has been determined by the Commissioner to be
necessary for the proper conduct of business before the Office.
(3) Access to, or copies of, an application may be provided:
(i) When the application is open to the public as provided in
Sec. 1.11(b),
(ii) When written authority in that application from the applicant,
the assignee of the application, or the attorney or agent of record has
been granted,
(iii) When it has been determined by the Commissioner to be
necessary for the proper conduct of business before the Office, or
(iv) To any person on written request, without notice to the
applicant, when the application is abandoned and available and is:
(A) Referred to in a U.S. patent,
(B) Referred to in an application open to public inspection,
(C) An application which claims the benefit of the filing date of
an application open to public inspection, or
(D) An application in which the applicant has filed an
authorization to lay open the complete application to the public.
(b) Complete applications (Sec. 1.51(a)) which are abandoned may be
destroyed and hence may not be available for access or copies as
permitted by paragraph (a)(3)(iv) of this section after 20 years from
their filing date, except those to which particular attention has been
called and which have been marked for preservation.
* * * * *
(e) Any request by a member of the public seeking access to, or
copies of, any pending or abandoned application preserved in confidence
pursuant to paragraph (a) of this section, or any papers relating
thereto, must:
[[Page 42803]]
(1) Be in the form of a petition and be accompanied by the petition
fee set forth in Sec. 1.17(i); or
(2) Include written authority granting access to the member of the
public in that particular application from the applicant or the
applicant's assignee or attorney or agent of record.
5. Section 1.52 is amended by revising paragraphs (a) and (b) to
read as follows:
Sec. 1.52 Language, paper, writing, margins.
(a) The application, any amendments or corrections thereto, and the
oath or declaration must be in the English language except as provided
for in Sec. 1.69 and paragraph (d) of this section, or be accompanied
by a verified translation of the application and a translation of any
corrections or amendments into the English language. All papers which
are to become a part of the permanent records of the Patent and
Trademark Office must be legibly written either by a typewriter or
mechanical printer in permanent dark ink or its equivalent in portrait
orientation on flexible, strong, smooth, non-shiny, durable, and white
paper. All of the application papers must be presented in a form having
sufficient clarity and contrast between the paper and the writing
thereon to permit the direct reproduction of readily legible copies in
any number by use of photographic, electrostatic, photo-offset, and
microfilming processes and electronic reproduction by use of digital
imaging and optical character recognition. If the papers are not of the
required quality, substitute typewritten or mechanically printed papers
of suitable quality will be required. See Sec. 1.125 for filing
substitute typewritten or mechanically printed papers constituting a
substitute specification when required by the Office.
(b) Except for drawings, the application papers (specification,
including claims, abstract, oath or declaration, and papers as provided
for in this part and also papers subsequently filed, must have each
page plainly written on only one side of a sheet of paper, with the
claim or claims commencing on a separate sheet and the abstract
commencing on a separate sheet. See Secs. 1.72(b) and 1.75(h). The
sheets of paper must be the same size and either 21.0 cm. by 29.7 cm.
(DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches). Each sheet
must include a top margin of at least 2.0 cm. (\3/4\ inch), a left side
margin of at least 2.5 cm. (1 inch), a right side margin of at least
2.0 cm. (\3/4\ inch), and a bottom margin of at least 2.0 cm. (\3/4\
inch), and no holes should be made in the sheets as submitted. The
lines of the specification, and any amendments to the specification,
must be 1\1/2\ or double spaced. The pages of the specification
including claims and abstract must be numbered consecutively, starting
with 1, the numbers being centrally located above or preferably, below,
the text. See Sec. 1.84 for drawings.
* * * * *
6. Section 1.54 is amended by revising paragraph (b) to read as
follows:
Sec. 1.54 Parts of application to be filed together; filing receipt.
* * * * *
(b) Applicant will be informed of the application number and filing
date by a filing receipt.
7. Section 1.58 is amended by removing and reserving paragraph (b)
and revising the section heading and paragraph (c) to read as follows:
Sec. 1.58 Chemical and mathematical formulae and tables.
* * * * *
(b) [Reserved]
(c) Chemical and mathematical formulae and tables must be presented
in compliance with Sec. 1.52 (a) and (b), except that chemical and
mathematical formulae or tables may be placed in a landscape
orientation if they cannot be presented satisfactorily in a portrait
orientation. Typewritten characters used in such formulae and tables
must be chosen from a block (nonscript) type font or lettering style
having capital letters which are at least 0.21 cm. (0.08 inch) high
(e.g., elite type). A space at least 0.64 cm. (\1/4\ inch) high should
be provided between complex formulae and tables and the text. Tables
should have the lines and columns of data closely spaced to conserve
space, consistent with a high degree of legibility.
8. Section 1.62 is amended by revising paragraphs (e) and (f) to
read as follows:
Sec. 1.62 File wrapper continuing procedure.
* * * * *
(e) An application filed under this section will utilize the file
wrapper and contents of the prior application to constitute the new
continuation, continuation-in-part, or divisional application but will
be assigned a new application number. Changes to the prior application
must be made in the form of an amendment to the prior application as it
exists at the time of filing the application under this section. No
copy of the prior application or new specification is required. The
filing of such a copy or specification will be considered improper, and
a filing date as of the date of deposit of the request for an
application under this section will not be granted to the application
unless a petition with the fee set forth in Sec. 1.17(i) is filed with
instructions to cancel the copy or specification.
(f) The filing of an application under this section will be
construed to include a waiver of confidence by the applicant under 35
U.S.C. 122 to the extent that any member of the public who is entitled
under the provisions of Sec. 1.14 to access to, or information
concerning either the prior application or any continuing application
filed under the provisions of this section may be given similar access
to, or similar information concerning, the other application(s) in the
file wrapper.
* * * * *
9. Section 1.72 is amended by revising paragraph (b) to read as
follows:
Sec. 1.72 Title and abstract.
* * * * *
(b) A brief abstract of the technical disclosure in the
specification must commence on a separate sheet, preferably following
the claims, under the heading ``Abstract of the Disclosure.'' The
purpose of the abstract is to enable the Patent and Trademark Office
and the public generally to determine quickly from a cursory inspection
the nature and gist of the technical disclosure. The abstract shall not
be used for interpreting the scope of the claims.
10. Section 1.75 is amended by revising paragraph (g) and adding
paragraphs (h) and (i) to read as follows:
Sec. 1.75 Claim(s).
* * * * *
(g) The least restrictive claim should be presented as claim number
1, and all dependent claims should be grouped together with the claim
or claims to which they refer to the extent practicable.
(h) The claim or claims must commence on a separate sheet.
(i) Where a claim sets forth a plurality of elements or steps, each
element or step of the claim should be separated by a line indentation.
11. Section 1.77 is revised to read as follows:
Sec. 1.77 Arrangement of application elements.
(a) The elements of the application, if applicable, should appear
in the following order:
(1) Utility Application Transmittal Form.
(2) Fee Transmittal Form.
(3) Title of the invention; or an introductory portion stating the
name, citizenship, and residence of the applicant, and the title of the
invention.
[[Page 42804]]
(4) Cross-reference to related applications.
(5) Statement regarding federally sponsored research or
development.
(6) Reference to a ``Microfiche appendix.'' (See Sec. 1.96 (c)).
The total number of microfiche and total number of frames should be
specified.
(7) Background of the invention.
(8) Brief summary of the invention.
(9) Brief description of the several views of the drawing.
(10) Detailed description of the invention.
(11) Claim or claims.
(12) Abstract of the Disclosure.
(13) Drawings.
(14) Executed oath or declaration.
(15) Sequence Listing (See Secs. 1.821 through 1.825).
(b) The elements set forth in paragraphs (a)(3) through (a)(5),
(a)(7) through (a)(12) and (a)(15) of this section should appear in
upper case, without underlining or bold type, as section headings. If
no text follows the section heading, the phrase ``Not Applicable''
should follow the section heading.
12. Section 1.78 is amended by removing paragraph (d) and revising
paragraphs (a)(2) and (c) to read as follows:
Sec. 1.78 Claiming benefit of earlier filing date and cross references
to other applications.
(a) * * *
(2) Any nonprovisional application claiming the benefit of one or
more prior filed copending nonprovisional applications or international
applications designating the United States of America must contain or
be amended to contain in the first sentence of the specification
following the title a reference to each such prior application,
identifying it by application number (consisting of the series code and
serial number) or international application number and international
filing date and indicating the relationship of the applications. Cross-
references to other related applications may be made when appropriate.
(See Sec. 1.14(a)).
* * * * *
(c) Where an application or a patent under reexamination and at
least one other application naming different inventors are owned by the
same party and contain conflicting claims, and there is no statement of
record indicating that the claimed inventions were commonly owned or
subject to an obligation of assignment to the same person at the time
the later invention was made, the assignee may be called upon to state
whether the claimed inventions were commonly owned or subject to an
obligation of assignment to the same person at the time the later
invention was made, and if not, indicate which named inventor is the
prior inventor.
13. Section 1.84 is amended by revising paragraphs (c), (f), (g),
and (x) to read as follows:
Sec. 1.84 Standards for drawings.
* * * * *
(c) Identification of drawings. Identifying indicia, if provided,
should include the application number or the title of the invention,
inventor's name, docket number (if any), and the name and telephone
number of a person to call if the Office is unable to match the
drawings to the proper application. This information should be placed
on the back of each sheet of drawings a minimum distance of 1.5 cm.
(\5/8\ inch) down from the top of the page. In addition, a reference to
the application number, or, if an application number has not been
assigned, the inventor's name, may be included in the left-hand corner,
provided that the reference appears within 1.5 cm. (\9/16\ inch) from
the top of the sheet.
* * * * *
(f) Size of paper. All drawing sheets in an application must be the
same size. One of the shorter sides of the sheet is regarded as its
top. The size of the sheets on which drawings are made must be:
(1) 21.0 cm. by 29.7 cm. (DIN size A4), or
(2) 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches).
(g) Margins. The sheets must not contain frames around the sight;
i.e., the usable surface, but should have scan target points, i.e.,
cross-hairs, printed on two catercorner margin corners. Each sheet must
include a top margin of at least 2.5 cm. (1 inch), a left side margin
of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm.
(\9/16\ inch), and a bottom margin of at least 1.0 cm. (\3/8\ inch),
thereby leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0
cm. by 29.7 cm. (DIN size A4) drawing sheets, and a sight no greater
than 17.6 cm. by 24.4 cm. (6\15/16\ by 9\5/8\ inches) on 21.6 cm. by
27.9 cm. (8\1/2\ by 11 inch) drawing sheets.
* * * * *
(x) Holes. No holes should be made by applicant in the drawing
sheets. (See Sec. 1.152 for design drawings, Sec. 1.165 for plant
drawings, and Sec. 1.174 for reissue drawings.)
14. Section 1.96 is revised to read as follows:
Sec. 1.96 Submission of computer program listings.
(a) General. Descriptions of the operation and general content of
computer program listings should appear in the description portion of
the specification. A computer program listing for the purpose of this
section is defined as a printout that lists in appropriate sequence the
instructions, routines, and other contents of a program for a computer.
The program listing may be either in machine or machine-independent
(object or source) language which will cause a computer to perform a
desired procedure or task such as solve a problem, regulate the flow of
work in a computer, or control or monitor events. Computer program
listings may be submitted in patent applications as set forth in
paragraphs (b) and (c) of this section.
(b) Material which will be printed in the patent. If the computer
program listing is contained on ten printout pages or less, it must be
submitted either as drawings or as part of the specification.
(1) Drawings. If the listing is submitted as drawings, it must be
submitted in the manner and complying with the requirements for
drawings as provided in Sec. 1.84. At least one figure numeral is
required on each sheet of drawing.
(2) Specification. (i) If the listing is submitted as part of the
specification, it must be submitted in accordance with the provisions
of Sec. 1.52, at the end of the description but before the claims.
(ii) Any listing submitted as part of the specification must be
direct printouts (i.e., not copies) from the computer's printer with
dark solid black letters not less than 0.21 cm. high, on white,
unshaded and unlined paper, and the sheets should be submitted in a
protective cover. Any amendments must be made by way of submission of
substitute sheets.
(c) As an appendix which will not be printed. If a computer program
listing printout is eleven or more pages long, applicants must submit
such listing in the form of microfiche, referred to in the
specification (see Sec. 1.77(a)(6)). Such microfiche filed with a
patent application is to be referred to as a ``microfiche appendix.''
The ``microfiche appendix'' will not be part of the printed patent.
Reference in the application to the ``microfiche appendix'' must be
made at the beginning of the specification at the location indicated in
Sec. 1.77(a)(6). Any amendments thereto must be made by way of revised
microfiche.
(1) Availability of appendix. Such computer program listings on
[[Page 42805]]
microfiche will be available to the public for inspection, and
microfiche copies thereof will be available for purchase with the file
wrapper and contents, after a patent based on such application is
granted or the application is otherwise made publicly available.
(2) Submission requirements. Except as modified or clarified in
this paragraph (c)(2), computer-generated information submitted as a
``microfiche appendix'' to an application shall be in accordance with
the standards set forth in 36 CFR part 1230 (Micrographics).
(i) Film submitted shall be a first generation (camera film)
negative appearing microfiche (with emulsion on the back side of the
film when viewed with the images right-reading).
(ii) Reduction ratio of microfiche submitted should be 24:1 or a
similar ratio where variation from said ratio is required in order to
fit the documents into the image area of the microfiche format used.
(iii) At least the left-most third (50 mm. x 12 mm.) of the header
or title area of each microfiche submitted shall be clear or positive
appearing so that the Patent and Trademark Office can apply an
application number and filing date thereto in an eye-readable form. The
middle portion of the header shall be used by applicant to apply an
eye-readable application identification such as the title and/or the
first inventor's name. The attorney's docket number may be included.
The final right-hand portion of the microfiche shall contain sequence
information for the microfiche, such as 1 of 4, 2 of 4, etc.
(iv) Additional requirements which apply specifically to microfiche
of filmed paper copy:
(A) The first frame of each microfiche submitted shall contain a
test target.
(B) The second frame of each microfiche submitted must contain a
fully descriptive title and the inventor's name as filed.
(C) The pages or lines appearing on the microfiche frames should be
consecutively numbered.
(D) Pagination of the microfiche frames shall be from left to right
and from top to bottom.
(E) At a reduction of 24:1, resolution of the original microfilm
shall be at least 120 lines per mm. (5.0 target).
(F) An index, when included, should appear in the last frame (lower
right-hand corner when data is right-reading) of each microfiche.
(v) Microfiche generated by Computer Output Microfilm.
(A) The first frame of each microfiche submitted should contain a
resolution test frame.
(B) The second frame of each microfiche submitted must contain a
fully descriptive title and the inventor's name as filed.
(C) The pages or lines appearing on the microfiche frames should be
consecutively numbered.
(D) It is preferred that pagination of the microfiche frames be
from left to right and top to bottom but the alternative, i.e., from
top to bottom and from left to right, is also acceptable.
(E) An index, when included, should appear on the last frame (lower
right-hand corner when data is right-reading) of each microfiche.
15. Section 1.97 is amended by revising paragraphs (a) through (d)
to read as follows:
Sec. 1.97 Filing of information disclosure statement.
(a) In order for an applicant for a patent or for a reissue of a
patent to have an information disclosure statement in compliance with
Sec. 1.98 considered by the Office during the pendency of the
application, it must satisfy paragraph (b), (c), or (d) of this
section.
(b) An information disclosure statement shall be considered by the
Office if filed by the applicant:
(1) Within three months of the filing date of a national
application;
(2) Within three months of the date of entry of the national stage
as set forth in Sec. 1.491 in an international application; or
(3) Before the mailing date of a first Office action on the merits,
whichever event occurs last.
(c) An information disclosure statement shall be considered by the
Office if filed by the applicant after the period specified in
paragraph (b) of this section, provided that the statement is
accompanied by either a certification as specified in paragraph (e) of
this section or the fee set forth in Sec. 1.17(p), and is filed before
the mailing date of either:
(1) A final action under Sec. 1.113; or
(2) A notice of allowance under Sec. 1.311, whichever occurs first.
(d) An information disclosure statement shall be considered by the
Office if filed by the applicant after the period specified in
paragraph (c) of this section, provided that the statement is filed on
or before payment of the issue fee and is accompanied by:
(1) A certification as specified in paragraph (e) of this section;
(2) A petition requesting consideration of the information
disclosure statement; and
(3) The petition fee set forth in Sec. 1.17(i).
* * * * *
16. Section 1.107 is amended by revising paragraph (a) to read as
follows:
Sec. 1.107 Citation of references.
(a) If domestic patents are cited by the examiner, their numbers
and dates, and the names of the patentees must be stated. If foreign
published applications or patents are cited, their nationality or
country, numbers and dates, and the names of the patentees must be
stated, and such other data must be furnished as may be necessary to
enable the applicant, or in the case of a reexamination proceeding, the
patent owner, to identify the published applications or patents cited.
In citing foreign published applications or patents, in case only a
part of the document is involved, the particular pages and sheets
containing the parts relied upon must be identified. If printed
publications are cited, the author (if any), title, date, pages or
plates, and place of publication, or place where a copy can be found,
shall be given.
* * * * *
17. Section 1.110 is revised to read as follows:
Sec. 1.110 Inventorship and date of invention of the subject matter of
individual claims.
When more than one inventor is named in an application or patent,
the Patent and Trademark Office, when necessary for purposes of an
Office proceeding, may require an applicant, patentee, or owner to
identify the inventive entity of the subject matter of each claim in
the application or patent. Where appropriate, the invention dates of
the subject matter of each claim and the ownership of the subject
matter on the date of invention may be required of the applicant,
patentee or owner. See also Secs. 1.78(c) and 1.130.
18. A new Sec. 1.130 is added after the undesignated center heading
``Affidavits Overcoming Rejections'' to read as follows:
Sec. 1.130 Affidavit or declaration to disqualify commonly owned
patent as prior art.
(a) When any claim of an application or a patent under
reexamination is rejected under 35 U.S.C. 103 in view of a U.S. patent
which is not prior art under 35 U.S.C. 102(b), and the inventions
defined by the claims in the application or patent under reexamination
and by the claims in the patent 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 as prior art. The patent can be disqualified as prior art by
submission of:
[[Page 42806]]
(1) A terminal disclaimer in accordance with Sec. 1.321(c), and
(2) An oath or declaration stating that the application or patent
under reexamination and the patent 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.
(b) When an application or a patent under reexamination claims an
invention which is not patentably distinct from an invention claimed in
a commonly owned patent with the same or a different inventive entity,
a double patenting rejection will be made in the application or a
patent under reexamination. A judicially created double patenting
rejection may be obviated by filing a terminal disclaimer in accordance
with Sec. 1.321(c).
19. Section 1.131 is amended by revising paragraph (a) to read as
follows:
Sec. 1.131 Affidavit or declaration of prior invention to overcome
cited patent or publication.
(a) (1) When any claim of an application or a patent under
reexamination is rejected under 35 U.S.C. 102 (a) or (e), or 35 U.S.C.
103 based on a U.S. patent to another or others which is prior art
under 35 U.S.C. 102 (a) or (e) and which substantially shows or
describes but does not claim the same patentable invention, as defined
in Sec. 1.601(n), or on reference to a foreign patent or to a printed
publication, the inventor of the subject matter of the rejected claim,
the owner of the patent under reexamination, or the party qualified
under Secs. 1.42, 1.43, or 1.47, may submit an appropriate oath or
declaration to overcome the patent or publication. The oath or
declaration must include facts showing a completion of the invention in
this country or in a NAFTA or WTO member country before the filing date
of the application on which the U.S. patent issued, or before the date
of the foreign patent, or before the date of the printed publication.
When an appropriate oath or declaration is made, the patent or
publication cited shall not bar the grant of a patent to the inventor
or the confirmation of the patentability of the claims of the patent,
unless the date of such patent or printed publication is more than one
year prior to the date on which the inventor's or patent owner's
application was filed in this country.
(2) A date of completion of the invention may not be established
under this section before December 8, 1993, in a NAFTA country, or
before January 1, 1996, in a WTO member country other than a NAFTA
country.
* * * * *
20. Section 1.132 is revised to read as follows:
Sec. 1.132 Affidavits or declarations traversing grounds of rejection.
When any claim of an application or a patent under reexamination is
rejected on reference to a U.S. patent which substantially shows or
describes but does not claim the same patentable invention, as defined
in Sec. 1.601(n), on reference to a foreign patent, on reference to a
printed publication, or on reference to facts within the personal
knowledge of an employee of the Office, or when rejected upon a mode or
capability of operation attributed to a reference, or because the
alleged invention is held to be inoperative, lacking in utility,
frivolous, or injurious to public health or morals, affidavits or
declarations traversing these references or objections may be received.
21. Section 1.154 is revised to read as follows:
Sec. 1.154 Arrangement of specification.
(a) The elements of the design application, if applicable, should
appear in the following order:
(1) Design Application Transmittal Form.
(2) Fee Transmittal Form.
(3) Preamble, stating name of the applicant and title of the
design.
(4) Cross-reference to related applications.
(5) Statement regarding federally sponsored research or
development.
(6) Description of the figure or figures of the drawing.
(7) Feature Description.
(8) A single claim.
(9) Drawings or photographs.
(10) Executed oath or declaration (See Sec. 1.153(b)).
(b) [Reserved]
22. Section 1.163 is amended by adding new paragraphs (c) and (d)
to read as follows:
Sec. 1.163 Specification.
* * * * *
(c) The elements of the plant application, if applicable, should
appear in the following order:
(1) Plant Application Transmittal Form.
(2) Fee Transmittal Form.
(3) Title of the invention.
(4) Cross-reference to related applications.
(5) Statement regarding federally sponsored research or
development.
(6) Background of the invention.
(7) Brief summary of the invention.
(8) Brief description of the drawing.
(9) Detailed Botanical Description.
(10) A single claim.
(11) Abstract of the Disclosure.
(12) Drawings (in duplicate).
(13) Executed oath or declaration.
(14) Plant color coding sheet.
(d) A plant color coding sheet as used in this section means a
sheet that specifies a color coding system as designated in a color
dictionary, and lists every plant structure to which color is a
distinguishing feature and the corresponding color code which best
represents that plant structure.
23. Section 1.291 is amended by revising paragraphs (a) and (b) to
read as follows:
Sec. 1.291 Protests by the public against pending applications.
(a) Protests by a member of the public against pending applications
will be referred to the examiner having charge of the subject matter
involved. A protest specifically identifying the application to which
the protest is directed will be entered in the application file if:
(1) The protest is submitted prior to the mailing of a notice of
allowance under Sec. 1.311; and
(2) The protest is either served upon the applicant in accordance
with Sec. 1.248, or filed with the Office in duplicate in the event
service is not possible.
(b) Protests raising fraud or other inequitable conduct issues will
be entered in the application file, generally without comment on those
issues. Protests which do not adequately identify a pending patent
application will be returned to the protestor and will not be further
considered by the Office. A protest submitted in accordance with the
second sentence of paragraph (a) of this section will be considered by
the Office if the application is still pending when the protest and
application file are brought before the examiner and it includes:
(1) A listing of the patents, publications, or other information
relied upon;
(2) A concise explanation of the relevance of each listed item;
(3) A copy of each listed patent or publication or other item of
information in written form or at least the pertinent portions thereof;
and
(4) An English language translation of all the necessary and
pertinent parts of any non-English language patent, publication, or
other item of information in written form relied upon.
* * * * *
24. Section 1.292 is amended by revising paragraphs (a) and (b) to
read as follows:
[[Page 42807]]
Sec. 1.292 Public use proceedings.
(a) When a petition for the institution of public use proceedings,
supported by affidavits or declarations is found, on reference to the
examiner, to make a prima facie showing that the invention claimed in
an application believed to be on file had been in public use or on sale
more than one year before the filing of the application, a hearing may
be had before the Commissioner to determine whether a public use
proceeding should be instituted. If instituted, the Commissioner may
designate an appropriate official to conduct the public use proceeding,
including the setting of times for taking testimony, which shall be
taken as provided by Secs. 1.671 through 1.685. The petitioner will be
heard in the proceedings but after decision therein will not be heard
further in the prosecution of the application for patent.
(b) The petition and accompanying papers, or a notice that such a
petition has been filed, shall be entered in the application file if:
(1) The petition is accompanied by the fee set forth in
Sec. 1.17(j);
(2) The petition is served on the applicant in accordance with
Sec. 1.248, or filed with the Office in duplicate in the event service
is not possible; and
(3) The petition is submitted prior to the mailing of a notice of
allowance under Sec. 1.311.
* * * * *
25. Section 1.315 is revised to read as follows:
Sec. 1.315 Delivery of patent.
The patent will be delivered or mailed upon issuance to the
correspondence address of record. See Sec. 1.33(a).
26. Section 1.321 is amended by revising paragraph (c) to read as
follows:
Sec. 1.321 Statutory disclaimers, including terminal disclaimers.
* * * * *
(c) A terminal disclaimer, when filed to obviate a judicially
created double patenting rejection in a patent application or in a
reexamination proceeding, must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4)
of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section
if filed in a patent application or in accordance with paragraph (a)(1)
of this section if filed in a reexamination proceeding; and
(3) Include a provision that any patent granted on that application
or any patent subject to the reexamination proceeding shall be
enforceable only for and during such period that said patent is
commonly owned with the application or patent which formed the basis
for the rejection.
27. Section 1.497 is revised to read as follows:
Sec. 1.497 Oath or declaration under 35 U.S.C. 371(c)(4).
(a) When an applicant of an international application desires to
enter the national stage under 35 U.S.C. 371 pursuant to Secs. 1.494 or
1.495, he or she must file an oath or declaration that:
(1) Is executed in accordance with either Secs. 1.66 or 1.68;
(2) Identifies the specification to which it is directed;
(3) Identifies each inventor and the country of citizenship of each
inventor; and
(4) States that the person making the oath or declaration believes
the named inventor or inventors to be the original and first inventor
or inventors of the subject matter which is claimed and for which a
patent is sought.
(b)(1) The oath or declaration must be made by all of the actual
inventors except as provided for in Secs. 1.42, 1.43 or 1.47.
(2) If the person making the oath or declaration is not the
inventor, the oath or declaration shall state the relationship of the
person to the inventor, the facts required by Secs. 1.42, 1.43 or 1.47,
and, upon information and belief, the facts which the inventor would
have been required to state.
(c) If the oath or declaration meets the requirements of paragraphs
(a) and (b) of this section, the oath or declaration will be accepted
as complying with 35 U.S.C. 371(c)(4) and Secs. 1.494(c) or 1.495(c).
However, if the oath or declaration does not also meet the requirements
of Sec. 1.63, a supplemental oath or declaration in compliance with
Sec. 1.63 will be required in accordance with Sec. 1.67.
Dated: August 13, 1996.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 96-21073 Filed 8-16-96; 8:45 am]
BILLING CODE 3510-16-P
