[Federal Register Volume 62, Number 197 (Friday, October 10, 1997)]
[Rules and Regulations]
[Pages 53132-53206]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 97-26339]
[[Page 53131]]
_______________________________________________________________________
Part III
Department of Commerce
_______________________________________________________________________
Patent and Trademark Office
_______________________________________________________________________
37 CFR Part 1, et al.
Changes to Patent Practice and Procedure; Final Rule
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 /
Rules and Regulations
[[Page 53132]]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 3, 5, 7, and 10
[Docket No. : 960606163-7130-02]
RIN 0651-AA80
Changes to Patent Practice and Procedure
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 to simplify the requirements of the rules, rearrange
portions of the rules for better context, and eliminate unnecessary
rules or portions thereof as part of a government-wide effort to reduce
the regulatory burden on the American public. Exemplary changes
include: simplification of the procedure for filing continuation and
divisional applications; amendment of a number of rules to permit the
filing of a statement that errors were made without deceptive intent,
without a requirement for a further showing of facts and circumstances;
and elimination of the requirement that the inventorship be named in an
application on the day of its filing, which eliminates the need for
certain petitions to correct inventorship.
EFFECTIVE DATE: December 1, 1997.
FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein or Robert W. Bahr,
Senior Legal Advisors, by telephone at (703) 305-9285, or by mail
addressed to: Box Comments-- Patents, Assistant Commissioner for
Patents, Washington, DC 20231 marked to the attention of Mr. Bernstein
or by facsimile to (703) 308-6916.
SUPPLEMENTARY INFORMATION: This rule change implements the
Administration's program of reducing the regulatory burden on the
American public in accordance with the changes proposed in the Notice
of Proposed Rulemaking entitled ``1996 Changes to Patent Practice and
Procedure'' (Notice of Proposed Rulemaking), published in the Federal
Register at 61 FR 49819 (September 23, 1996), and in the Official
Gazette at 1191 Off. Gaz. Pat. Office 105 (October 22, 1996). The
changes involve: (1) simplification of procedures for filing
continuation and divisional applications, establishing lack of
deceptive intent in reissues, petition practice, and in the filing of
papers correcting improperly requested small entity status; (2)
elimination of unnecessary requirements, such as certain types of
petitions to correct inventorship under Sec. 1.48; (3) removal of rules
and portions thereof that merely represent instructions as to the
internal management of the Office more appropriate for inclusion in the
Manual of Patent Examining Procedure (MPEP); (4) rearrangement of
portions of rules to improve their context; and (5) clarification of
rules to aid in understanding of the requirements that they set forth.
Changes to Proposed Rules: This Final Rule contains a number of
changes to the text of the rules as proposed for comment. The
significant changes (as opposed to additional grammatical corrections)
are discussed below. Familiarity with the Notice of Proposed Rulemaking
is assumed.
Discussion of Specific Rules and Response to Comments: Forty-three
written comments were received in response to the Notice of Proposed
Rulemaking. The written comments have been analyzed. For contextual
purposes, the comment on a specific rule and response to the comment
are provided with the discussion of the specific rule. Comments in
support of proposed rule changes generally have not been reported in
the responses to comments sections.
Title 37 of the Code of Federal Regulations, Parts 1, 3, 5, 7, and
10 are amended as follows:
Part 1
Section 1.4
Section 1.4, paragraphs (d)(1) and (2), are amended to be combined
into Sec. 1.4 paragraphs (d)(1)(i) and (d)(1)(ii). Section
1.4(d)(1)(ii) is also amended to include the phrase ``direct or
indirect copy'' to clarify that the copy of the document(s)
constituting the correspondence submitted to the Office may be a copy
of a copy (of any generation) of the original document(s), or a direct
copy of the original document(s).
Section 1.4(d)(2) is amended to provide that the presentation to
the Office (whether by signing, filing, submitting, or later
advocating) of any paper by a party, whether a practitioner or non-
practitioner, constitutes a certification under Sec. 10.18(b), and that
violations of Sec. 10.18(b)(2) may subject the party to sanctions under
Sec. 10.18(c). That is, by presenting a paper to the Office, the party
is making the certifications set forth in Sec. 10.18(b), and is subject
to sanctions under Sec. 10.18(c) for violations of Sec. 10.18(b)(2),
regardless of whether the party is a practitioner or non-practitioner.
The sentence ``[a]ny practitioner violating Sec. 10.18(b) may also be
subject to disciplinary action'' clarifies that a practitioner may be
subject to disciplinary action in lieu of or in addition to sanctions
under Sec. 10.18(c) for violations of Sec. 10.18(b).
Section 1.4(d)(2) is amended so that the certifications set forth
in Sec. 10.18(b) are automatically made upon presenting any paper to
the Office by the party presenting the paper. The amendments to
Secs. 1.4(d) and 10.18 support the amendments to Secs. 1.6, 1.8, 1.10,
1.27, 1.28, 1.48, 1.52, 1.55, 1.69, 1.102, 1.125, 1.137, 1.377, 1.378,
1.804, 1.805, (Secs. 1.821 and 1.825 will be reviewed at a later date
in connection with other matters), 3.26, and 5.4 that delete the
requirement for verification (MPEP 602) of statements of facts by
applicants and other parties who are not registered to practice before
the Office. The absence of a required verification has been a source of
delay in the prosecution of applications, particularly where such
absence is the only defect noted. The change to Secs. 1.4(d) and 10.18
automatically incorporates required averments thereby eliminating the
necessity for a separate verification for each statement of facts that
is to be presented, except for those instances where the verification
requirement is retained. Similarly, the amendments to Secs. 1.4(d) and
10.18 support an amendment to Sec. 1.97 (Secs. 1.637 and 1.673 will be
reviewed at a later date in connection with other matters) that changes
the requirements for certifications to requirements for statements.
This change in practice does not affect the separate verification
requirement for an oath or declaration under Sec. 1.63, affidavits or
declarations under Secs. 1.130, 1.131, and 1.132, or statements
submitted in support of a petition under Sec. 5.25 for a retroactive
license. The statements in Secs. 1.494(e) and 1.495(f) that
verification of translations of documents filed in a language other
than English may be required is also maintained, as such requirements
are made rarely and only when deemed necessary (e.g., when persons
persist in translations which appear on their face to be inaccurate).
The requirements for certification of service on parties in
Secs. 1.248, 1.510, 1.637 and 10.142 are also maintained.
Section 1.4 is also amended to add a new paragraph (g) related to
an applicant who has not made of record a registered attorney or agent
being required to state whether assistance was received in the
preparation or prosecution of a patent application. This is transferred
from Sec. 1.33(b) for consistent contextual purposes.
[[Page 53133]]
Section 1.6
Section 1.6(d)(3) is amended to provide that continued prosecution
applications under Sec. 1.53(d) may be transmitted to the Office by
facsimile. However, the procedures described in Sec. 1.8 do not apply
to, and no benefit under Sec. 1.8 will be given to, a continued
prosecution application under Sec. 1.53(d). That is, an applicant may
file a continued prosecution application by facsimile transmission, but
the filing date accorded such continued prosecution application will be
the date the complete transmission of the continued prosecution
application is received in the Office. For example, a continued
prosecution application transmitted by facsimile from California at
10:30 p.m. (Pacific time) on November 18, 1997, and received in the
Office at 1:30 a.m. (Eastern time) on November 19, 1997, will be
accorded a filing date of November 19, 1997. An applicant filing a
continued prosecution application by facsimile transmission bears the
responsibility of transmitting such application in a manner and at a
time that will ensure its complete and timely (Sec. 1.53(d)(1)(ii))
receipt in the Office.
An applicant filing an application under Sec. 1.53(d) (a continued
prosecution application) by facsimile must include an authorization to
charge (at least) the basic filing fee to a deposit account, or the
application must be treated under Sec. 1.53(f) as having been filed
without the basic filing fee (as fees cannot otherwise be transmitted
by facsimile). To avoid paying the late filing surcharge under
Sec. 1.16(e), an application (including an application under
Sec. 1.53(d)) must include the basic filing fee (Sec. 1.16(e)). As
such, payment of the basic filing fee for an application under
Sec. 1.53(d) on any date later than the filing date of the application
under Sec. 1.53(d) (even if paid within the period for reply to the
last action in the prior application) is ineffective to avoid the late
filing surcharge under Sec. 1.16(e). Therefore, unless an application
under Sec. 1.53(d) filed by facsimile includes an authorization to
charge the basic filing fee to a deposit account, the applicant will be
given a notification requiring payment of the appropriate filing fee
(Sec. 1.53(d)(3)) and the late filing surcharge under Sec. 1.16(e) to
avoid abandonment of the Sec. 1.53(d) application.
Section 1.6(d)(3) is also amended to delete the reference to
Sec. 1.8(a)(2)(ii)(D) as this paragraph was deleted in the Final Rule
entitled ``Communications with the Patent and Trademark Office''
(``Communications with the Office''), published in the Federal Register
at 61 FR 56439, 56443 (November 1, 1996), and in the Official Gazette
at 1192 Off. Gaz. Pat. Office 95 (November 26, 1996).
Section 1.6(d)(6) is amended to reflect the transfer of material
from Secs. 5.6, 5.7, and 5.8 to Secs. 5.1 through 5.5.
Section 1.6(e)(2) is amended to remove the requirement that the
statement be verified in accordance with the change to Secs. 1.4(d)(2)
and 10.18.
Section 1.6(f) is added to provide for the situation in which the
Office has no evidence of receipt of an application under Sec. 1.53(d)
(a continued prosecution application) transmitted to the Office by
facsimile transmission. Section 1.6(f) requires that a showing
thereunder include, inter alia, a copy of the sending unit's report
confirming transmission of the application under Sec. 1.53(d) or
evidence that came into being after the complete transmission of the
application under Sec. 1.53(d) and within one business day of the
complete transmission of the application under Sec. 1.53(d). Therefore,
applicants are advised to retain copies of the sending unit's reports
in situations in which such unit is used to transmit applications under
Sec. 1.53(d) to the Office or otherwise maintain a log book of the
transmission of any application under Sec. 1.53(d) to the Office. See
also ``Communications with the Patent and Trademark Office'' Final
Rule.
No comments were received regarding the proposed change to
Sec. 1.6.
Section 1.8
Section 1.8(a)(2)(i)(A) is amended to specifically refer to a
request for a continued prosecution application under Sec. 1.53(d) as a
correspondence filed for the purposes of obtaining an application
filing date, which is excluded by Sec. 1.8(a)(2)(i)(A) from the
procedure set forth in Sec. 1.8. The purpose of this amendment is to
render it clear that, notwithstanding that a continued prosecution
application under Sec. 1.53(d) may be filed by facsimile transmission,
the procedure set forth in Sec. 1.8 does not apply to a request for a
continued prosecution application under Sec. 1.53(d) (or any
correspondence filed for the purpose of obtaining an application filing
date). That is, the date on the certificate of transmission
(Sec. 1.8(a)) of an application under Sec. 1.53(d) is not controlling
(or even relevant), in that an application under Sec. 1.53(d) (a
continued prosecution application) filed by facsimile transmission will
not be accorded a filing date as of the date on the certificate of
transmission (Sec. 1.8(a)), unless Office records indicate, or
applicant otherwise establishes pursuant to Sec. 1.6(f), receipt in the
Office of the complete application under Sec. 1.53(d) on the date on
the certificate of transmission, and that date is not a Saturday,
Sunday, or Federal holiday.
Section 1.8(b)(3) is amended to remove the requirement that the
statement be verified in accordance with the change to Secs. 1.4(d)(2)
and 10.18.
Section 1.9
Section 1.9(d) is amended to define a small business concern as
used in 37 CFR Chapter I as any business concern meeting the size
standards set forth in 13 CFR Part 121 to be eligible for reduced
patent fees. The regulations of the Small Business Administration (SBA)
set forth the size standards of a business concern to be eligible for
reduced patent fees. See 13 CFR 121.802. Thus, the language in
Sec. 1.9(d) duplicating such size standards is deleted as redundant,
and to avoid confusion in the event that such size standards are
subsequently changed by the SBA. The MPEP will include SBA's
regulations concerning size standards for a business concern to be
eligible for reduced patent fees.
Section 1.9(f) is amended to add the phrase ``eligible for reduced
patent fees'' to clarify that a small entity as used in 37 CFR Chapter
I is limited to an independent inventor, a small business concern or a
non-profit organization that is eligible for reduced patent fees under
35 U.S.C. 41(h)(1).
Section 1.10
Sections 1.10 (d) and (e) are amended to remove the requirement for
a statement that is verified.
Comment 1: One comment suggested that Sec. 1.10 be amended to
clearly set forth the controlling date for correspondence filed by
``Express Mail'' under Sec. 1.10.
Response: Section 1.10 was substantially amended in the
``Communications with the Office'' Rule Final (discussed supra).
Section 1.10(a) as amended in the aforementioned Final Rule provides
that: (1) correspondence received by the Office that was delivered by
the ``Express Mail Post Office to Addressee'' service of the United
States Postal Service (USPS) under Sec. 1.10 will be considered filed
in the Office on the date of deposit with the USPS; (2) the date of
deposit with the USPS is shown by the ``date-in'' on the ``Express
Mail'' mailing label or other official USPS notation; and (3) if the
USPS deposit date cannot be determined, the correspondence will be
accorded the Office receipt date as the filing date.
[[Page 53134]]
Section 1.11
Section 1.11(b) is amended to provide that the filing of a
continued prosecution application under Sec. 1.53(d) of a reissue
application will not be announced in the Official Gazette. Although the
filing of a continued prosecution application of a reissue application
constitutes the filing of a reissue application, the announcement of
the filing of such continued prosecution application would be redundant
in view of the announcement of the filing of the prior reissue
application in the Official Gazette.
Section 1.14
Section 1.14(a) is amended to: (1) clarify the provisions of
Sec. 1.14(a); (2) provide that copies of an application-as-filed may be
provided to any person on written request accompanied by the fee set
forth in Sec. 1.19(b), without notice to the applicant, if the
application is incorporated by reference in a U.S. patent; and (3)
treat applications in the file jacket of a pending application under
Sec. 1.53(d) as pending rather than abandoned in determining whether
copies of, and access to, such applications will be granted.
Under current practice, the public is entitled to access to the
original disclosure (or application-as-filed) of an application, when
the application is incorporated by reference into a U.S. patent. See In
re Gallo, 231 USPQ 496 (Comm'r Pat. 1986). Section 1.14(a)(2) is added
to avoid the need for a petition under Sec. 1.14(e) to obtain a copy of
the original disclosure (or application-as-filed) of an application
that is incorporated by reference into a U.S. patent.
Section 1.14 is also amended to add a paragraph (f) to recognize
the change to Sec. 1.47 (a) and (b) which add exceptions to maintaining
pending applications in confidence by providing public notice to
nonsigning inventors of the filing of a patent application.
Comment 2: One comment stated that the change from ``applications
preserved in secrecy'' to ``applications preserved in confidence''
suggests a lower level of security for the applications permitting
greater discovery by third parties.
Response: The term ``secrecy'' in Sec. 1.14 was changed to
``confidence'' in the Final Rule entitled ``Miscellaneous Changes in
Patent Practice'' (``Miscellaneous Changes in Patent Practice''),
published in the Federal Register at 61 FR 42790 (August 19, 1996), and
in the Official Gazette at 1190 Off. Gaz. Pat. Office 67 (September 17,
1996). This change did not represent a change in practice, but merely
conformed the language of Sec. 1.14 to that of 35 U.S.C. 122 (the term
``secrecy'' is a term of art in regard to matters of national security,
and its former use in Sec. 1.14 was inappropriate).
Section 1.16
Section 1.16 is amended to add new paragraphs (m) and (n) including
the unassociated text following paragraphs (d) and (l).
No comments were received concerning Sec. 1.16.
Section 1.17
Section 1.17 (and Sec. 1.136(a)) adds a recitation to an extension
of time fee payment for a reply filed within a fifth month after a
nonstatutory or shortened statutory period for reply was set.
Section 1.17(a) is subdivided into paragraphs (a)(1) through
(a)(5), with paragraphs (a)(1) through (a)(4) setting forth the amounts
for one-month through four-month extension fees. Section 1.17(a)(5)
provides the small entity and other than small entity amounts for the
new fifth-month extension fee.
Section 1.17(a) is being amended to permit a petition for a fifth-
month extension of time. As the Office may set a shortened statutory
period for reply of one-month or thirty days, whichever is longer, this
authority for a petition under Sec. 1.136(a) will permit an applicant
to extend the period for reply until the six-month statutory maximum
(35 U.S.C. 133) without resorting to a petition under Sec. 1.136(b), or
to extend by five months, pursuant to Sec. 1.136(a), a non-statutory
period for taking action (e.g., the time period in Sec. 1.192(a) for
filing an appeal brief).
Section 1.17 paragraphs (e), (f), and (g) are rewritten as
Sec. 1.17 paragraphs (b), (c), and (d).
Section 1.17(h) is amended to delete references to petitions under
Secs. 1.47, 1.48, and 1.84. Sections 1.47, 1.48, and 1.84 (a) and (b)
are amended to contain a reference to the petition fee set forth in
Sec. 1.17(i), rather than the petition fee set forth in Sec. 1.17(h).
Section 1.17(i) is amended to: (1) add a petition under Sec. 1.41
to supply the name(s) of the inventor(s) after the filing date without
an oath or declaration as prescribed by Sec. 1.63, except in
provisional applications; (2) add a petition under Sec. 1.47 for filing
by other than all the inventors or a person not the inventor; (3) add a
petition under Sec. 1.48 for correction of inventorship, except in
provisional applications; (4) add a petition under Sec. 1.59 for
expungement and return of information; (5) delete the references to
petitions under Secs. 1.60 and 1.62 in view of the deletion of
Secs. 1.60 and 1.62; (6) add a petition under Sec. 1.84 for accepting
color drawings or photographs; and (7) add a petition under Sec. 1.91
for entry of a model or exhibit.
Section 1.17(q) is amended to add a petition under Sec. 1.41 to
supply the name(s) of the inventor(s) after the filing date without a
cover sheet as prescribed by Sec. 1.51(c)(1) in a provisional
application.
Section 1.17, as well as Secs. 1.103, 1.112, 1.113, 1.133, 1.134,
1.135, 1.136, 1.142, 1.144, 1.146, 1.191, 1.192, 1.291, 1.294, 1.484,
1.485, 1.488, 1.494, 1.495, (Secs. 1.530, 1.550, 1.560, 1.605, 1.617,
1.640, and 1.652 will be reviewed at a later date in connection with
other matters), 1.770, 1.785, (Sec. 1.821 will be reviewed at a later
date in connection with other matters), and 5.3 are also amended to
replace the phrases ``response'' and ``respond'' with the phrase
``reply'' for consistency with Sec. 1.111.
Comment 3: One comment questioned why the terms ``respond'' and
``response'' in the rules of practice were being replaced with the term
``reply.''
Response: It is appropriate to use a single term (``reply'')
throughout the rules of practice, to the extent possible, to refer to
that ``reply'' by an applicant to an Office action required to avoid
abandonment and continue prosecution.
Comment 4: At least one comment noted that there is no statutory
authority under 35 U.S.C. 41(a)(8)(C) for the $2,010 amount set for the
fifth month extension of time.
Response: While the Notice of Proposed Rulemaking proposed a fifth
month extension fee of $2010, a Notice of Proposed Rulemaking entitled
``Revision of Patent and Trademark Fees for Fiscal Year 1998'' (``1998
Fee Revision''), published in the Federal Register at 62 FR 24865 (May
7, 1997), and in the Official Gazette at 1198 Off. Gaz. Pat. Office 97
(May 27, 1997), proposed that this fee be set at $2060. The Office is
now adopting the $2060 fifth month extension fee as proposed in the
``1998 Fee Revision'' Notice of Proposed Rulemaking.
Under 35 U.S.C. 41(a)(8)(C) (1991), the Commissioner is authorized
to charge $340 for any third or subsequent petition for a one-month
extension of time. However, under 35 U.S.C. 41(f), the additional fee
established pursuant to 35 U.S.C. 41(a)(8)(C) for a subsequent petition
for a one-month extension of time has been increased to $560 (i.e.,
$560 is the current difference (established under 35 U.S.C.
41(a)(8)(C)) between the $1510 fee for a four-month extension of time
and the $950 three-month extension of time). The $1510 fee
[[Page 53135]]
for a four-month extension of time plus the $560 fee for an additional
month is $2070 (this differs from the $2060 fee proposed in the ``1998
Fee Revision'' Notice of Proposed Rulemaking due to rounding).
Therefore, the Office is authorized under 35 U.S.C. 41(a)(8) to
establish a fee of $2060 for a five-month extension of time.
Section 1.21
Section 1.21(l) is amended for consistency with Sec. 1.53, and
Sec. 1.21(n) is amended to change the reference to an improper
application under Secs. 1.60 or 1.62 to a reference to an application
in which proceedings are terminated pursuant to Sec. 1.53(e).
No comments were received regarding the proposed change to
Sec. 1.21.
Section 1.26
Section 1.26(a) is amended to better track the statutory language
of 35 U.S.C. 42(d) and to add back language relating to refunds of fees
paid that were not ``required'' that was inadvertently dropped in the
July 1, 1993, publication of title 37 CFR, and from subsequent
publications.
No comments were received regarding the proposed change to
Sec. 1.26.
Section 1.27
Section 1.27 paragraphs (a) through (d) are amended to remove the
requirement that a statement filed thereunder be ``verified,'' and to
replace ``aver'' and ``averring'' with ``state'' and ``stating.'' See
comments relating to Sec. 1.4(d). Section 1.27(b) is also amended for
clarification with the movement of a clause relating to ``any verified
statement'' within a sentence.
No comments were received regarding the proposed change to
Sec. 1.27.
Section 1.28
Section 1.28(a) is amended to remove the requirement for a
statement that is ``verified.'' See comments relating to Sec. 1.4(d).
Section 1.28(a) is also amended to provide that a new small entity
statement is not required for a continuing or reissue application where
small entity status is still proper and reliance is placed on a
reference to a small entity statement filed in a prior application or
patent or a copy thereof is supplied. Section 1.28(a) is further
amended to state that the payment of a small entity basic statutory
filing fee in a nonprovisional application, which claims benefit under
35 U.S.C. 119(e), 120, 121, or 365(c) of a prior application (including
a continued prosecution application) or in a reissue application, where
the prior application or the patent has small entity status, will
constitute a reference in the continuing or reissue application to the
small entity statement in the prior application or in the patent,
thereby establishing small entity status in such a nonprovisional
application.
Section 1.28(a) is also amended to require a new determination of
continued entitlement to small entity status for continued prosecution
applications filed under Sec. 1.53(d) and to clarify that the refiling
of applications as continuations, divisions and continuation-in-part
applications and the filing of reissue applications also require a new
determination of continued entitlement to small entity status prior to
reliance on small entity status in a prior application or patent.
Comment 5: One comment asked whether the change to Sec. 1.28
regarding small entity requires that a small entity statement be filed
with each continuing application.
Response: While the filing of a continuing application requires a
new determination of entitlement to small entity status, Sec. 1.28(a)
continues to permit reliance on a small entity statement filed in a
prior application for nonprovisional continuing applications.
Section 1.28(c) is amended to remove the requirement for a
statement of facts explaining how an error in payment of a small entity
fee(s) occurred in good faith and how and when the error was
discovered. A fee deficiency payment under Sec. 1.28(c) must include
the difference between fee(s) originally paid as a small entity and the
other than small entity fee(s) in effect at the time of payment of the
complete fee deficiency. A fee deficiency payment under Sec. 1.28(c)
will be treated as a representation by the party submitting the payment
that small entity status was established in good faith and that the
original payment of small entity fees was made in good faith. Any paper
submitted under Sec. 1.28(c) will be placed in the appropriate file
without review after the processing of any check or the charging of any
fee deficiency payment specifically authorized.
Comment 6: One comment suggested that Sec. 1.28(c) be amended to
clarify current Office practice regarding the acceptance of papers
under Sec. 1.28(c)(2) in light of two recent District Court decisions:
(1) Haden Schweitzer Corp. v. Arthur B. Myr Industries, Inc., 901 F.
Supp. 1235, 36 USPQ2d 1020 (E.D. Mich. 1995); and (2) DH Technology,
Inc. v. Synergstex International, Inc., 937 F. Supp. 902, 40 USPQ2d
1754 (N.D. Cal. 1996).
Response: The Office is also aware of a recent District Court
decision in Jewish Hospital of St. Louis v. Idexx Laboratories, 951 F.
Supp 1, 42 USPQ2d 1720 (D. Me. 1996), that relies on Sec. 1.28(c)(2)
exclusively. The changes to Sec. 1.28(c) are not directed to the issue
of whether Sec. 1.28(c)(2) must be viewed as the exclusive remedy.
Nevertheless, an applicant or patentee can avoid undesirable results by
not claiming small entity status unless it is absolutely certain that
the applicant or patentee is entitled to small entity status (i.e.,
resolving any doubt, uncertainty, or lack of information in favor of
payment of the full fee). See MPEP 509.03 (``Small entity status must
not be established unless the person or persons signing the * * *
statement can unequivocally make the required self-certification''
(emphasis added)).
Section 1.33
Section 1.33 is amended to no longer provide that the required
residence and post office address of the applicant can appear elsewhere
than in the oath or declaration under Sec. 1.63. Section 1.63(a)(3) is
amended to require that the post office address as well as the
residence be identified therein and not elsewhere. Permitting the
residence to be elsewhere in the application other than the oath or
declaration, as was in Sec. 1.33(a), would be inconsistent with
unamended Sec. 1.63(c) that states that the residence must appear in
the oath or declaration. The requirement for placement of the post
office address is equivalent to the requirement for the residence to
eliminate confusion between the two, which often are the same
destination and are usually provided in the oath or declaration. The
reference in Sec. 1.33(a) to the assignee providing a correspondence
address has been moved within Sec. 1.33(a) for clarification. Other
clarifying language includes a reference to Sec. 1.34(b), use of the
terms ``provided,'' ``furnished'' rather than ``notified,'' and
``application'' rather than ``case,'' and deletion of the expression
``of which the Office.''
The former language of Sec. 1.33(b) is transferred to new
Sec. 1.4(g). Section 1.33(b) is amended to set forth the signature
requirement for papers filed in an application (formerly in
Sec. 1.33(a)). Section 1.33(b) is specifically amended to provide that
amendments and other papers filed in an application must be signed by:
(1) an attorney or agent of record appointed in compliance with
Sec. 1.34(b); (2) a registered attorney or agent not of record who acts
in a representative capacity under the provisions of Sec. 1.34(a); (3)
the assignee of record of the entire interest (if there is such); (4)
an assignee of record of an
[[Page 53136]]
undivided part interest (if there is such), so long as the amendment or
other paper is also signed by any assignee(s) of the remaining interest
and any applicant retaining an interest; or (5) all of the applicants,
including applicants under Secs. 1.42, 1.43 and 1.47, unless there is
an assignee of record of the entire interest and such assignee has
chosen to prosecute the application to the exclusion of the
applicant(s), and, as such, has taken action in the application in
accordance with Secs. 3.71 and 3.73. This is not a change in practice,
but simply a clarification of current signature requirements.
No comments were received regarding the proposed change to
Sec. 1.33.
Section 1.41
Section 1.41(a) (and Sec. 1.53) is amended to no longer require
that a patent be applied for in the name of the actual inventors for an
application for patent to be accorded a filing date. The requirement
for use of full names is moved to Sec. 1.63(a) for better context.
Section 1.41(a) is specifically amended: (1) To provide that a patent
is applied for in the name(s) of the actual inventor(s); (2) to add
paragraphs (a)(1) and (a)(2) indicating how the inventorship is set
forth in a nonprovisional and provisional application; and (3) to add
paragraph (a)(3) indicating the need for an identifier consisting of
alphanumeric characters if no name of an actual inventor is provided.
Section 1.41(a)(1) provides that the inventorship of a
nonprovisional application is that inventorship set forth in the oath
or declaration as prescribed by Sec. 1.63, except as provided for in
Secs. 1.53(d)(4) and 1.63(d). Section 1.41(a)(1) also provides that if
an oath or declaration as prescribed by Sec. 1.63 is not filed during
the pendency of a nonprovisional application, the inventorship is that
inventorship set forth in the application papers filed pursuant to
Sec. 1.53(b), unless a petition under this paragraph accompanied by the
fee set forth in Sec. 1.17(i) is filed supplying the name(s) of the
inventor(s).
Section 1.41(a)(2) provides that the inventorship of a provisional
application is that inventorship set forth in the cover sheet as
prescribed by Sec. 1.51(c)(1). Section 1.41(a)(2) also provides that if
a cover sheet as prescribed by Sec. 1.51(c)(1) is not filed during the
pendency of a provisional application, the inventorship is that
inventorship set forth in the application papers filed pursuant to
Sec. 1.53(c), unless a petition under this paragraph accompanied by the
fee set forth in Sec. 1.17(q) is filed supplying the name(s) of the
inventor(s).
35 U.S.C. 120 and Sec. 1.78(a) require, inter alia, that an
application have at least one inventor in common with a prior
application to obtain the benefit of the filing date of such
application. Considering the executed oath or declaration (or cover
sheet in a provisional application) the sole mechanism for naming the
inventor(s) would operate as a trap in the event that an application
were abandoned prior to the filing of an oath or declaration in favor
of a continuing application (or in the event that a cover sheet was not
filed in a provisional application). To avoid this result, Sec. 1.41 as
adopted provides that the inventorship is that inventorship named in an
executed oath or declaration under Sec. 1.63 (or in the cover sheet
under Sec. 1.51(c)(1) in a provisional application), but that if no
executed oath or declaration under Sec. 1.63 (or cover sheet under
Sec. 1.51(c)(1) in a provisional application) is filed during the
pendency of the application, the inventorship will be considered to be
the inventor(s) named in the original application papers.
In the peculiar situation in which no inventor is named in the
original application papers (or the correct inventor(s) are not named
in the original application papers), and no executed oath or
declaration under Sec. 1.63 (or cover sheet under Sec. 1.51(c)(1) in a
provisional application) is filed during the pendency of the
application, it will be necessary for the applicant to file a petition
under Sec. 1.41(a) (and appropriate fee) to name the inventor(s). No
explanation (other than that the paper is supplying or changing the
name(s) of the inventor(s)) or showing of facts concerning the
inventorship or any delay in naming the inventorship is required or
desired in a petition under Sec. 1.41(a). The petition fee is required
to cover (or defray in a provisional application) the costs of updating
the Office's records for the application.
Where no inventor(s) is named on filing, the Office requests that
an identifying name be submitted for the application. The use of very
short identifiers should be avoided to prevent confusion. Without
supplying at least a unique identifying name the Office may have no
ability or only a delayed ability to match any papers submitted after
filing of the application and before issuance of an identifying
application number with the application file. Any identifier used that
is not an inventor's name should be specific, alphanumeric characters
of reasonable length, and should be presented in such a manner that it
is clear to application processing personnel what the identifier is and
where it is to be found. It is strongly suggested that applications
filed without an executed oath or declaration under Sec. 1.63 or 1.175
include the name of the person(s) believed to be the inventor for
identification purposes. Failure to apprise the Office of the
application identifier being used may result in applicants having to
resubmit papers that could not be matched with the application and
proof of the earlier receipt of such papers where submission was time
dependent.
As any inventor(s) named in the original application papers is
considered to be the inventor(s) only when no oath or declaration under
Sec. 1.63 is filed in a nonprovisional application or cover sheet under
Sec. 1.51(c)(1) filed in a provisional application, the recitation of
the inventorship in an application submitted under Sec. 1.53 (b) or (d)
without an executed oath or declaration or cover sheet, respectively,
for purposes of identification may be changed merely by the later
submission of an oath or declaration executed by a different inventive
entity without recourse to a petition under Sec. 1.41 or 1.48.
Comment 7: One comment noted that when an application is filed only
an alphanumeric identifier may be used, which would of necessity
require a correction of inventorship, and questioned how a verified
statement under Sec. 1.48(a) could be filed as there would be no person
to sign such statement, whether the Office will require that the
name(s) of the inventor(s) be submitted within a specified period, and
whether the filing date will be lost if the name(s) of the inventor(s)
is not submitted within such period.
Response: The name(s) of the inventor(s) in a nonprovisional
application are provided in the oath or declaration under Sec. 1.63
(Sec. 1.41(a)(2)) and the name(s) of the inventor(s) in a provisional
application are provided in the cover sheet (Sec. 1.41(a)(3)). Thus, an
application filed without the name(s) of the inventor(s) must also have
been filed without an oath or declaration under Sec. 1.63
(nonprovisional) or cover sheet (provisional).
The Office will set a time period in a nonprovisional application
filed without an oath or declaration under Sec. 1.63 for the filing of
such an oath or declaration (Sec. 1.53(f)). The Office will set a time
period in a provisional application filed without a cover sheet for the
filing of such cover sheet (Sec. 1.53(g)). The subsequently filed oath
or declaration or cover sheet will
[[Page 53137]]
provide the name(s) of the inventor(s). No petition under Sec. 1.48(a)
would be required where there was an alphanumeric identifier (and not a
name of a person) or where the person(s) set forth as the inventor(s)
was incorrect.
In the event that an oath or declaration or cover sheet is not
timely filed, the application will become abandoned and the
inventorship will be considered to be the inventor(s) named in the
original application papers. The failure to timely file an oath or
declaration, cover sheet, or the name(s) of the inventor(s) is not a
filing date issue.
Comment 8: One comment thought that the proposed change eliminating
the need to identify any inventor would lead to sloppy filing
procedures and that it should in almost all cases be possible for
practitioners to correctly identify the inventors at the time of
filing.
Response: Experience has demonstrated that a significant number of
applications filed under Sec. 1.53(b) without an executed oath or
declaration have been filed with incorrect inventorships with
explanations running from ``there was no time to investigate the
inventorship'' to ``the inventors contacted either did not understand
the inventorship requirements under U.S. patent law or did not
appreciate that the claims as filed included or did not include the
contribution of the omitted or erroneously added inventor.''
Additionally, Office experience is that while almost all Sec. 1.48(a)
petitions concerning such matters are eventually granted, only a small
percentage are granted on the initial petition thereby causing a
prolonged prosecution period, which is undesirable in view of the
amendment to 35 U.S.C. 154 contained in the Uruguay Round Agreements
Act (URAA), Pub. L. 103-465, 108 Stat. 4809 (1994).
Section 1.47
Section 1.47 paragraphs (a) and (b) are amended, pursuant to 35
U.S.C. 116 and 35 U.S.C 118, to provide for publication in the Official
Gazette of a notice of filing for all applications, except for
continued prosecution applications under Sec. 1.53(d), submitted under
this section rather than only when notice to the nonsigning inventor(s)
is returned to the Office undelivered or when the address of the
nonsigning inventor(s) is unknown. The information to be published,
after grant of the Sec. 1.47 petition, will include: The application
number, filing date, invention title and name(s) of the nonsigning
inventor(s). Letters returned as undeliverable are difficult to match
with the related application file, and when matched with the file, the
applications are burdensome to flag as requiring further action by the
Office. Accordingly, the return of letters is not a desirable means of
triggering publication of a notice to a nonsigning inventor as to the
filing of the application. Furthermore, when a returned letter is used
as such a trigger, another review of the application must be made for
returned correspondence. As the best time for review of returned
letters is after allowance, but before issuance, of an application,
processing of the application would be delayed and done at a time that
could be best used for printing related processing requirements.
Printing of notice of the filing of all applications wherein Sec. 1.47
status is granted does not require any such review to be made. In order
to best balance the obligation of providing notice to inventors and
efficient processing of applications, notice in the Official Gazette of
the filing of Sec. 1.47 applications will be prepared essentially at
the same time that the letter notice is directly sent to the nonsigning
inventor.
Paragraphs (a) and (b) of this section are also amended to exclude
the filing of continued prosecution applications under Sec. 1.53(d)
from the notice requirement.
Section 1.47 is also amended for clarification purposes. A
reference to an ``omitted inventor'' in Sec. 1.47(a) is replaced with
``nonsigning inventor.'' The statements in Sec. 1.47 paragraphs (a) and
(b) that a patent will be granted upon a satisfactory showing to the
Commissioner are deleted as unnecessary. Section 1.47(b) is amended to
clarify that it applies only where none of the inventors are willing or
can be found to sign the oath or declaration by substitution of ``an
inventor'' by ``all the inventors.'' The use of ``must state'' in
regard to the last known address is deleted as redundant in view of the
explicit requirement for such address in the rule. The sentence in
Sec. 1.47(b) referring to the filing of the assignment, written
agreement to assign or other evidence of proprietary interest is
deleted as redundant in view of the requirement appearing earlier in
Sec. 1.47(b) calling for ``proof of pertinent facts.''
Comment 9: One comment believed that the amendment to Sec. 1.47(b)
results in a change in practice permitting an assignee to proceed
thereunder only where all the inventors refuse to sign, and that the
assignee should not be precluded from making the required declaration
where only one inventor refuses to cooperate as the other inventors may
not have personal knowledge of the facts.
Response: While the specific language of Sec. 1.47(b) is amended to
recite the condition that ``all the inventors refuse to execute an
application'' the prior use of the term ``inventor'' was intended to
mean and was interpreted as meaning all inventors. See MPEP 409.03(b).
Accordingly, the language clarification is not a change in practice.
Although it is unclear as to what particular ``facts'' the comment
is addressed to that the other inventors would not have personal
knowledge of, facts as to the inventorship of the noncooperating
inventor would better lie with the other inventors who are after all
required to be joint inventors, 35 U.S.C. 116, and therefore the other
inventors should have the best knowledge of the facts required for a
declaration under Sec. 1.63. Any declaration of facts, in support of
the petition, to show, e.g., that an inventor has refused to sign a
declaration after having been given an opportunity to do so, should be
made by someone with first-hand knowledge of the events, such as the
attorney who presented the inventor with the application papers.
Section 1.48
Section 1.48 provides for correction of inventorship in an
application (other than a reissue application). Section 1.324 provides
for correction of inventorship in a patent. Sections 1.171 and 1.175
provide for correction of inventorship in a patent via a reissue
application.
Section 1.48 is amended in its title to clarify that the section
concerns patent applications, other than reissue applications, and not
patents. Where a patent names an incorrect inventive entity, the
inventorship error may be corrected by reissue. See MPEP 1402. Where a
reissue application names an incorrect inventive entity in the executed
reissue oath or declaration (whether the reissue application is filed
for the sole purpose or in-part to correct the inventorship, or is
filed for purposes other than correction of the inventorship), a new
reissue oath or declaration in compliance with Sec. 1.175 may be
submitted with the correct inventorship without a petition under
Sec. 1.48. This is because it is the inventorship of the patent being
reissued that is being corrected (via a reissue application).
35 U.S.C. 251, para. 3, provides that the provisions of title 35,
U.S.C., relating to applications apply to reissue applications. 35
U.S.C. 116, para. 3, authorizes the Commissioner to permit correction
of inventorship in an application under such terms as the Commissioner
prescribes. The
[[Page 53138]]
Commissioner has determined that correction of inventorship in a
reissue application may be accomplished under 35 U.S.C. 251 via the
reissue oath or declaration, without resort to a petition under
Sec. 1.48. Therefore, Sec. 1.48 has been amended to specifically
exclude its applicability to correction of inventorship in a reissue
application.
Section 1.48(a) will not require correction of the inventorship if
the inventorship or other identification under Sec. 1.41 was set forth
in error on filing of the application. Section 1.48(a) is amended to
apply only to correction of inventor or inventors, in applications,
other than reissue applications, from that named in an originally filed
executed oath or declaration and not to the naming of inventors or
others for identification purposes under Sec. 1.41. The statement to be
submitted will be required only from the person named in error as an
inventor or from the person who through error was not named as an
inventor rather than from all the original named inventors so as to
comply with 35 U.S.C. 116. The requirement that any amendment of the
inventorship under Sec. 1.48(a) be ``diligently'' made has been
removed. The applicability of a rejection under 35 U.S.C. 102(f) or (g)
against an application with the wrong inventorship set forth therein
and any patent that would issue thereon is a sufficient motivation for
prompt correction of the inventorship without the need for a separate
requirement for diligence.
Comment 10: Two comments expressed opposition to deletion of the
diligence requirement in Sec. 1.48 paragraphs (a) through (c) in that
removal thereof would seem to promote delay in correction of the
inventorship and decrease the importance of having the correct
inventorship.
Response: In addition to the motivation noted in the explanation of
the rules for not allowing a patent to issue with improper
inventorship, the criteria for correction of the inventorship becomes
more restrictive subsequent to issuance under Sec. 1.324 (having a
statutory basis under 35 U.S.C. 256) than under Sec. 1.48(a) (having a
statutory basis under 35 U.S.C. 116). 35 U.S.C. 256 requires
participation by all the parties including each original named
inventor, which participation may be harder to obtain after the patent
has issued. Petitions under Sec. 1.48(a) filed earlier while the
application is pending may seek waiver under Sec. 1.183 of
participation of some of the parties needed to participate.
Additionally, petitions under Sec. 1.48 in pending applications are not
entered as a matter of right in rejected (the criteria of Sec. 1.116
applies) or allowed (the criteria of Sec. 1.312 applies) applications.
See Sec. 1.48(a) and MPEP 201.03.
A clarifying reference to Sec. 1.634 is added in Sec. 1.48(a) for
instances when inventorship correction is necessary during an
interference and has been moved from Sec. 1.48(a)(4) for improved
contextual purposes.
The Sec. 1.48(a)(1) statement requires a statement only as to the
lack of deceptive intent rather than a statement of facts to establish
how the inventorship error was discovered and how it occurred, since
the latter requirement is deleted. Additionally, the persons from whom
a statement is required now includes any person who through error was
not named as an inventor but limits statements from the original named
inventors to only those persons named in error as inventors rather than
all persons originally named as inventors including those correctly
named. The paragraph is amended to remove the requirement that the
statement be verified in accordance with the change to Secs. 1.4(d)(2)
and 10.18.
Comment 11: One comment opposed the removal of the Office from
examining the issue of inventorship as substantive law invalidates
patents that have issued in the names of incorrect inventors and the
Office is charged with the duty of examining applications for the
purpose of denying issue to those applications that do not meet the
standards of patentability. Where an oath has originally been filed
asserting the proper inventor is one entity and a subsequent paper
asserts that the proper inventor is another, under such circumstances
``the facts are inherently suspect'' and an investigation by the Office
is warranted and required by statute.
Response: The amendments to Sec. 1.48 have otherwise received
overwhelming support.
The Office has pursued the existence of improper inventorship in
applications by rejection under 35 U.S.C. 102(f) or (g) and will
continue to do so independent of the change in the verified statement
requirements under Sec. 1.48 paragraphs (a) or (c). A request to change
inventorship, however, often requested by the current inventors or
assignee on their own initiative is not seen to be inherently fraught
with deceptive intent as to warrant a close and detailed examination
absent more. A statement that the error was made without deceptive
intent is seen to be a sufficient investigation complying with the
statutory requirement under 35 U.S.C. 116, particularly as most
petitions are eventually granted or an application can be refiled
naming the new desired inventive entity. Refiling of the application to
change the inventorship will not cause the Office, absent more, to
initiate an investigation as to the correct inventorship or cause a
rejection under 35 U.S.C. 102(f) or (g) to be made. Additionally, it
should be noted that the Office views a petition under Sec. 1.48 to be
a procedural matter and not to represent a substantive determination as
to the actual inventorship. See MPEP 201.03, Verified Statement of
Facts.
For those situations where there was deceptive intent, the Office
is lacking certain necessary tools for a thorough inquiry (e.g.,
subpoena authority) to ascertain the truth thereof (as in other
situations under Secs. 1.28 and 1.56). However, the inquiry cannot be
waived by the Office due to the statutory requirement under 35 U.S.C.
116. There is no other reasonable course of action than to accept as an
explanation for the execution of a Sec. 1.63 oath or declaration
setting forth an erroneous inventive entity that the inventor did not
remember the contribution of the omitted inventor at the time the oath
or declaration was executed (absent subpoena power and inter parties
hearings), and therefore further inquiries into the matter other than a
statement of lack of deceptive intent are a waste of Office resources.
Comment 12: One comment suggested that in limiting the submission
of a verified statement of facts to only the parties being added or
deleted as inventors, agreement of the original named inventors should
also be obtained as is currently done when verified statements of facts
from all the original named inventors are required.
Response: Agreement or acquiescence of the original named
inventors, to the extent that they remain as inventors, to the new
inventorship will be obtained through the retained requirement that the
actual inventive entity complete a new oath or declaration under
Sec. 1.63, which must set forth the new inventive entity. Additionally,
through the rule changes to this section and Secs. 1.28 and 1.175 the
Office is decreasing its investigation of claims relating to a lack of
deceptive intent. The remaining purpose of these rules is to force the
applicant(s) to merely make an assertion as to a lack of deceptive
intent thereby permitting subsequent reviewers (tribunals or otherwise)
to determine, in light of all the available facts, whether the
applicant(s) complied with the statute.
Section 1.48(a)(2) is amended for clarification purposes to
indicate the availability of Secs. 1.42, 1.43 or 1.47 in meeting the
requirement for an executed oath or declaration under Sec. 1.63 from
[[Page 53139]]
each actual inventor. Section 1.47 is only applicable to the person to
be added as an inventor (inventors named in an application transmittal
letter can be deleted without petition). For those persons already
having submitted an executed oath or declaration under Sec. 1.63, a
petition under Sec. 1.183, requesting waiver of reexecution of an oath
or declaration, may be an appropriate remedy. The requirement for an
oath or declaration is maintained in Sec. 1.48(a) notwithstanding its
replacement in Sec. 1.324 for issued patents by a statement of
agreement or lack of disagreement with the requested change in view of
the need to satisfy the duty of disclosure requirement in a pending
application that is set forth in a Sec. 1.63 oath or declaration.
Section 1.48(a)(4) is amended to include a citation to Sec. 3.73(b)
to clarify the requirements for submitting a written consent of
assignee, which is subject to the requirement under Sec. 3.73(b), and
to delete the reference to an application involved in an interference,
which is being moved to Sec. 1.48(a). Section 1.48(a)(4) is also
amended to clarify that the assignee required to submit its written
consent is only the existing assignee of the original named inventors
at the time the petition is filed and not any party that would become
an assignee based on the grant of the inventorship correction.
Section 1.48(b) is also amended to remove the requirement that a
petition thereunder be diligently filed. The applicability of a
rejection under 35 U.S.C. 102 (f) or (g) against an application with
the wrong inventorship set forth therein and any patent that would
issue thereon is sufficient motivation for prompt correction of the
inventorship without the need for a separate requirement for diligence.
Section 1.48(b) is amended to have a clarifying reference to
Sec. 1.634 added for instances when inventorship correction is
necessary during an interference.
Comment 13: A comment noted that the literal wording of
Sec. 1.48(b) permits correction thereunder only where the correct
inventors were named on filing thereby excluding correction under
Sec. 1.48(b) where an incorrect inventorship was named on filing that
was subsequently corrected under Sec. 1.48(a) and, subsequent to the
correction prosecution of the application, required additional
correction under Sec. 1.48(b).
Response: The comment is accepted and Sec. 1.48(b) has been
modified to delete ``when filed'' after ``nonprovisional application''
for clarification purposes. Additionally, the term ``originally'' in
the first sentence of paragraph (b) has been replaced with
``currently.''
Section 1.48(c) is amended so that a petition thereunder no longer
needs to meet the current requirements of Sec. 1.48(a), which are also
changed. A statement from each inventor being added that the
inventorship amendment is necessitated by amendment of the claims and
that the error occurred without deceptive intent is required under
Sec. 1.48(c)(1) rather than the previous requirement of a statement
from each original named inventor. The previous requirements under
Sec. 1.48(a) for an oath or declaration, the written consent of an
assignee and the written consent of any assignee are retained, but are
now separately set forth in Secs. 1.48 paragraphs (c)(2) through
(c)(4). The particular circumstances of a petition under this
paragraph, adding an inventor due to an amendment of the claims that
incorporates material attributable to the inventor to be added, is seen
to be indicative of a lack of deceptive intent in the original naming
of inventors. Accordingly, all that must be averred to is that an
amendment of the claims has necessitated correction of the inventorship
and that the inventorship error existing in view of the claim amendment
occurred without deceptive intent. The previous requirement for
diligence in filing the petition based on an amendment to the claims is
not retained as applicants have the right, prior to final rejection or
allowance, to determine when particular subject matter is to be
claimed. Applicants should note that any petition under Sec. 1.48
submitted after allowance is subject to the requirements of Sec. 1.312,
and a petition submitted after final rejection is not entered as a
matter of right.
Section 1.48(c)(2) is amended to clarify the availability of
Secs. 1.42, 1.43 and 1.47 in meeting the requirement for an executed
oath or declaration under Sec. 1.63. Section 1.47 is only applicable to
the person to be added as an inventor. For those persons already having
an executed oath or declaration under Sec. 1.63, a petition under
Sec. 1.183, requesting waiver of reexecution of an oath or declaration,
may be an appropriate remedy.
Section 1.48(c)(4) is amended to clarify that the assignee required
to submit its written consent is only the existing assignee of the
original named inventors at the time the petition is filed and not any
party that would become an assignee based on the grant of the
inventorship correction. A citation to Sec. 3.73(b) is presented.
Section 1.48(d) is amended by addition of ``their part'' to replace
``the part of the actual inventor or inventors'' and of ``omitted'' to
replace ``actual'' to require statements from the inventors to be added
rather than from all the actual inventors so as to comply with 35
U.S.C. 116.
Section 1.48(d)(1) is also clarified to specify that the error to
be addressed is the inventorship error. It is not expected that the
party filing a provisional application will normally need to correct an
error in inventorship under this paragraph by adding an inventor
therein except when necessary under Sec. 1.78 to establish an overlap
of inventorship with a continuing application.
Section 1.48(d)(1) is also amended to remove the requirement that
the statement be verified in accordance with the change to
Secs. 1.4(d)(2) and 10.18.
Section 1.48(e)(1) is amended to replace a requirement in
provisional applications that the required statement be one ``of
facts'' directed towards ``establishing that the error'' being
corrected ``occurred without deceptive intention,'' requiring only a
statement that the inventorship error occurred without deceptive
intent. Paragraph (e)(1) is also amended to remove the requirement that
the statement be verified in accordance with the change to
Secs. 1.4(d)(2) and 10.18. It is not expected that the party filing a
provisional application would need to file a petition under this
paragraph since the application will go abandoned by operation of law
(35 U.S.C. 111(b)(5)), and the need to delete an inventor will not
affect the overlap of inventorship needed to claim priority under
Sec. 1.78(a)(3) for any subsequently filed nonprovisional application.
Section 1.48(e)(3) is amended to clarify that the assignee required
to submit its written consent is only the prior existing assignee
before correction of the inventorship is granted and not any party that
would become an assignee based on the grant of the inventorship
correction. A reference to Sec. 3.73(b) is added.
Section 1.48(f) is added to provide that the later filing of an
executed oath or declaration (or cover sheet (Sec. 1.51(c)(1)) in a
provisional application) during the pendency of the application would
act to correct the inventorship without a specific petition for such
correction and will be used to further process the application
notwithstanding any inventorship or other identification name earlier
presented.
Section 1.48(g) is added to specifically recognize that the Office
may require such other information as may be deemed appropriate under
the
[[Page 53140]]
particular circumstances surrounding a correction of the inventorship.
Section 1.51
Section 1.51, paragraphs (a)(1) and (a)(2), are re-written as
Sec. 1.51, paragraphs (b) and (c), respectively, and Sec. 1.51(b) is
re-written as Sec. 1.51(d). Section 1.51(c) covering the use of an
authorization to charge a deposit account is removed as unnecessary in
view of Sec. 1.25(b).
No comments were received regarding the proposed change to
Sec. 1.51.
Section 1.52
Section 1.52, paragraphs (a) and (d), are amended to remove the
requirement that the translation be verified in accordance with the
change to Secs. 1.4(d)(2) and 10.18. Section 1.52, paragraph (c), is
amended to remove the reference to Secs. 1.123 through 1.125 to: (1)
reflect a transfer of material from Secs. 1.123 and 1.124 to
Sec. 1.121; (2) further clarify that Sec. 1.125 is not a vehicle
amendment of an application; and (3) to clarify that alterations to
application papers may be made on, as well as before, the signing of
the oath or declaration. Section 1.52, paragraphs (a) and (d), are also
amended to clarify the need for a statement that the translation being
offered is an accurate translation, as in Sec. 1.69(b).
Comment 14: Two comments were received asking whether the attorney
can sign the statement that the translation is accurate, and how much
firsthand knowledge does a practitioner need to know that the
translation is accurate.
Response: The Office will accept a statement that the translation
is accurate from any party. However, any party signing such statement
must keep in mind the averments that are made under Secs. 1.4(d) and
10.18. The actual firsthand knowledge needed by a practitioner is that
amount of knowledge to comply with the averments in Secs. 1.4(d) and
10.18.
Comment 15: A comment questioned whether there is any difference
between the previous language of ``verified translation'' and the
present language of ``accurate translation.''
Response: The previous language was directed at a verification that
the translation is accurate. A verification requirement is now
unnecessary due to the amendments to Secs. 1.4(d) and 10.18. Thus,
Sec. 1.52(d) is amended to include the more direct term ``accurate.''
Section 1.53
Section 1.53 is amended to include headings for each paragraph for
purposes of clarity.
Section 1.53(a) is amended to state that ``[a]ny papers received in
the Patent and Trademark Office which purport to be an application for
a patent will be assigned an application number for identification
purposes.'' That is, the Office will refer to papers purporting to be
an application for a patent as an ``application'' and assign such
``application'' an application number for identification purposes. This
reference, however, does not imply that such papers meet the
requirements in Sec. 1.53(b) to be accorded a filing date or constitute
an ``application'' within the meaning of 35 U.S.C. 111.
Section 1.53(b) is amended to provide that: (1) the filing date of
an application for patent filed under Sec. 1.53(b) is the date on which
a specification as prescribed by 35 U.S.C. 112 containing a description
pursuant to Sec. 1.71 and at least one claim pursuant to Sec. 1.75, and
any drawing required by Sec. 1.81(a) are filed in the Office; (2) no
new matter may be introduced into an application after its filing date;
(3) a continuation or divisional application filed by all or by fewer
than all of the inventors named in a prior nonprovisional application
may be filed under Sec. 1.53(b) or (d); and (4) a continuation or
divisional application naming an inventor not named in the prior
nonprovisional application or a continuation-in-part application must
be filed under Sec. 1.53(b).
Section 1.53(c) is amended to provide for provisional applications
(formerly provided for in Sec. 1.53(b)(2)). Section 1.53(c) includes
the language of former Sec. 1.53(b)(2), with certain changes for
purposes of clarity. Section 1.53(c)(i), for example, includes language
requiring either the provisional application cover sheet required by
Sec. 1.51(c)(1) or a cover letter identifying the application as a
provisional application. The cover letter may be an application
transmittal letter or some other paper identifying the accompanying
papers as a provisional application.
Section 1.53(d) is amended to provide for continued prosecution
applications. Section 1.53(d)(1) provides that a continuation or
divisional application, but not a continuation-in-part, of a prior
nonprovisional application may be filed as a continued prosecution
application under Sec. 1.53(d), subject to the conditions specified in
paragraph (d)(1)(i) and (d)(1)(ii). That is, an application under
Sec. 1.53(d) cannot be a continuation-in-part application, and the
prior application cannot be a provisional application.
Section 1.53(d)(1)(i) specifies that the prior application be
either: (1) Complete as defined by Sec. 1.51(b) and filed on or after
June 8, 1995; or (2) the national stage of an international application
in compliance with 35 U.S.C. 371 and filed on or after June 8, 1995.
The phrase ``prior'' application in Sec. 1.53(d)(1) means the
application immediately prior to the continued prosecution application
under Sec. 1.53(d), in that a continued prosecution application under
Sec. 1.53(d) may claim the benefit under 35 U.S.C. 120, 121, or 365(c)
of applications filed prior to June 8, 1995 so long as the application
that is immediately prior to the continued prosecution application
under Sec. 1.53(d) was filed on or after June 8, 1995.
Section 1.53(d)(1)(ii) specifies that the application under
Sec. 1.53(d) be filed before the earliest of: (1) Payment of the issue
fee on the prior application, unless a petition under Sec. 1.313(b)(5)
is granted in the prior application; (2) abandonment of the prior
application; or (3) termination of proceedings on the prior
application.
Section 1.53(d)(2) provides that the filing date of a continued
prosecution application is the date on which a request on a separate
paper for an application under Sec. 1.53(d) is filed. That is, a
request for an application under Sec. 1.53(d) cannot be submitted
within papers filed for another purpose (e.g., the filing of a
``conditional'' request for a continued prosecution application within
an amendment after final for the prior application is an improper
request for a continued prosecution application under Sec. 1.53(d)).
In addition, a ``conditional'' request for a continued prosecution
application will not be permitted. Any ``conditional'' request for a
continued prosecution application submitted (as a separate paper) with
an amendment after final in an application will be treated as an
unconditional request for a continued prosecution application of such
application. This will result (by operation of Sec. 1.53(d)(2)(v)) in
the abandonment of such (prior) application, and (if so instructed in
the request for a continued prosecution application) the amendment
after final in the prior application will be treated as a preliminary
amendment in the continued prosecution application.
Section 1.53(d)(2) further provides that an application filed under
Sec. 1.53(d): (1) Must identify the prior application
(Sec. 1.53(d)(i)); (2) discloses and claims only subject matter
disclosed in the prior application (i.e., is a continuation or
divisional, but not a continuation-in-part) (Sec. 1.53(d)(1)(ii)); (3)
names as inventors the same inventors named in the prior application on
the date the application under Sec. 1.53(d) was filed, except as
provided in Sec. 1.53(d)(4)
[[Page 53141]]
(Sec. 1.53(d)(2)(iii)); (4) includes the request for an application
under Sec. 1.53(d), will utilize the file jacket and contents of the
prior application, including the specification, drawings and oath or
declaration, from the prior application to constitute the new
application, and will be assigned the application number of the prior
application for identification purposes (Sec. 1.53(d)(2)(iv)); and (5)
is a request to expressly abandon the prior application as of the
filing date of the request for an application under Sec. 1.53(d)
(Sec. 1.53(d)(2)(v)).
Section 1.53(d)(3) provides that the filing fee for a continued
prosecution application filed under Sec. 1.53(d) is: (1) The basic
filing fee as set forth in Sec. 1.16; and (2) any additional Sec. 1.16
fee due based on the number of claims remaining in the application
after entry of any amendment accompanying the request for an
application under Sec. 1.53(d) and entry of any amendments under
Sec. 1.116 not entered in the prior application which applicant has
requested to be entered in the continued prosecution application. See
35 U.S.C. 41(a) (1)-(4).
Section 1.53(d)(4) provides that an application filed under
Sec. 1.53(d) may be filed by fewer than all the inventors named in the
prior application, provided that the request for an application under
Sec. 1.53(d) when filed is accompanied by a statement requesting
deletion of the name or names of the person or persons who are not
inventors of the invention being claimed in the new application, and
that no person may be named as an inventor in an application filed
under Sec. 1.53(d) who was not named as an inventor in the prior
application on the date the application under Sec. 1.53(d) was filed,
except by way of a petition under Sec. 1.48. Thus, an application under
Sec. 1.53(d) must name as inventors either the same as
(Sec. 1.53(d)(2)(iii)) or fewer than all of (Sec. 1.53(d)(4)) the
inventors named in the prior application. A request for an application
under Sec. 1.53(d) purporting to name as an inventor a person not named
as an inventor in the prior application (even if accompanied by a new
oath or declaration under Sec. 1.63 listing that person as an inventor)
will be treated as naming the same inventors named in the prior
application (Sec. 1.53(d)(2)(iii)).
Section 1.53(d)(5) provides that: (1) Any new change must be made
in the form of an amendment to the prior application; (2) no amendment
in an application under Sec. 1.53(d) (a continued prosecution
application) may introduce new matter or matter that would have been
new matter in the prior application; and (3) any new specification
filed with the request for an application under Sec. 1.53(d) will not
be considered part of the original application papers, but will be
treated as a substitute specification in accordance with Sec. 1.125.
Pursuant to the provisions of Sec. 1.53(d)(5), where applicant desires
entry of an amendment in the application under Sec. 1.53(d) that was
previously denied entry under Sec. 1.116 in the prior application, the
applicant must request its entry (and pay any additional claims fee
required by Sec. 1.53(d)(3)(ii)) in the application under Sec. 1.53(d)
prior to action by the Office in the application under Sec. 1.53(d).
Any amendment submitted with the request for an application under
Sec. 1.53(d) that seeks to add matter that would have been new matter
in the prior application will be objected to under Sec. 1.53(d), and
the applicant will be required to cancel the subject matter that would
have been new matter in the prior application.
Section 1.53(d)(6) provides that the filing of a continued
prosecution application under Sec. 1.53(d) will be construed to include
a waiver of confidentiality 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, copies of, or information
concerning either the prior application or any continuing application
filed under the provisions of this paragraph may be given similar
access to, copies of, or similar information concerning, the other
application(s) in the application file.
Section 1.53(d)(7) provides that a request for an application under
Sec. 1.53(d) is a specific reference under 35 U.S.C. 120 to every
application assigned the application number identified in such request,
and that no amendment in a continued prosecution application under
Sec. 1.53(d) shall delete this specific reference to any prior
application. That is, other than the identification of the prior
application in the request required by Sec. 1.53(d) for a continued
prosecution application, a continued prosecution application needs no
further identification of or reference to the prior application (or any
prior application assigned the application number of such application
under Sec. 1.53(d)) under 35 U.S.C. 120 and Sec. 1.78(a)(2).
Section 1.53(d)(8) provides that in addition to identifying the
application number of the prior application, applicant is urged to
furnish in the request for an application under Sec. 1.53(d) the
following information relating to the prior application to the best of
his or her ability: (1) Title of invention; (2) name of applicant(s);
and (3) correspondence address.
Section 1.53(d)(9) provides that: (1) Envelopes containing only
requests and fees for filing an application under Sec. 1.53(d) should
be marked ``Box CPA'' and (2) requests for an application under
Sec. 1.53(d) filed by facsimile transmission should be clearly marked
``Box CPA.''
Section 1.53(e)(1) provides that if an application deposited under
Sec. 1.53 paragraphs (b), (c), or (d) does not meet the respective
requirements in Sec. 1.53 paragraphs (b), (c), or (d) to be entitled to
a filing date, applicant will be so notified, if a correspondence
address has been provided, and given a time period within which to
correct the filing error.
Section 1.53(e)(2) provides that: (1) Any request for review of a
notification pursuant to Sec. 1.53(e)(1), or a notification that the
original application papers lack a portion of the specification or
drawing(s), must be by way of a petition pursuant to Sec. 1.53(e); (2)
any petition under Sec. 1.53(e) must be accompanied by the fee set
forth in Sec. 1.17(i) in an application filed under Sec. 1.53
paragraphs (b) or (d), and the fee set forth in Sec. 1.17(q) in an
application filed under Sec. 1.53(c); and (3) in the absence of a
timely (Sec. 1.181(f)) petition pursuant to this paragraph, the filing
date of an application in which the applicant was notified of a filing
error pursuant to paragraph (e)(1) of this section will be the date the
filing error is corrected.
Section 1.53(e)(3) provides that if an applicant is notified of a
filing error pursuant to Sec. 1.53(e)(1), but fails to correct the
filing error within the given time period or otherwise timely
(Sec. 1.181(f)) take action pursuant to Sec. 1.53(e)(2), proceedings in
the application will be considered terminated, and that where
proceedings in an application are terminated pursuant to
Sec. 1.53(e)(3), the application may be disposed of, and any filing
fees, less the handling fee set forth in Sec. 1.21(n), will be
refunded.
Section 1.53(f) is amended to include the language of former
Sec. 1.53(d)(1) and to provide that the oath or declaration required
for a continuation or divisional application under Sec. 1.53(b) may be
a copy of the executed oath or declaration filed in the prior
application (under Sec. 1.63(d)).
Section 1.53 paragraphs (g), (h), (i), and (j) are added and
include the language of former Sec. 1.53 paragraphs (d)(2), (e)(1),
(e)(2), and (f), respectively.
Comment 16: The majority of the comments supported the deletion of
Secs. 1.60 and 1.62 in favor of the proposed amendment to Sec. 1.53.
[[Page 53142]]
Response: The Office is deleting Secs. 1.60 and 1.62 in favor of an
amended Sec. 1.53.
Comment 17: Several comments suggested that the Office adopt a
continued prosecution procedure for applications filed on or after June
8, 1995 similar to the practice set forth in Sec. 1.129(a), rather than
the continued prosecution application practice set forth in
Sec. 1.53(d).
Response: Section 532(a)(2)(A) of Pub. L. 103-465 provides specific
authorization for the practice set forth in Sec. 1.129(a). There is
currently no statutory authority for the Office to simply charge the
patent fees set forth in 35 U.S.C. 41(a) for further examination of an
application. 35 U.S.C. 41(d) would authorize the Office to further
examine an application for a fee that recovers the estimated average
cost to the Office of such further examination; however, as 35 U.S.C.
41(h) is applicable only to fees under 35 U.S.C. 41 (a) and (b), the
Office would not be authorized to provide a small entity reduction in
regard to such fee. Thus, the only mechanism by which the Office may
provide further examination for a fee to which the small entity
reduction is applicable is via a continuing application.
Section 209 of H.R. 3460, 104th Cong., 2d Sess. (1996), would have
provided statutory authority for the further reexamination of an
application for a fee to which the small entity reduction was
applicable. Section 209 of H.R. 400, 105th Cong., 1st Sess. (1997), if
enacted, will provide statutory authority for the further reexamination
of an application for a fee to which the small entity reduction will be
applicable.
Comment 18: One comment stated that the combination of Secs. 1.53,
1.60, and 1.62 into a single Sec. 1.53 was complex and confusing.
Another comment suggested that Sec. 1.53 be split into a number of
sections, or that headings be used in Sec. 1.53 in the manner that
headings are used in Secs. 1.84 and 1.96.
Response: Placing the provisions of Sec. 1.53 into multiple
sections, rather than multiple paragraphs of a single section, would
not result in a simplification of its provisions. The Office considers
it appropriate to place the filing provisions concerning all
applications (nonprovisional, provisional, and continued prosecution)
into a single section to reduce the confusion as to the filing
requirements for any application for patent. Section 1.53 as adopted
includes headings in each paragraph of Sec. 1.53 to indicate the
subject to which each of these paragraphs pertains.
Comment 19: One comment suggested amending Sec. 1.53 to require
applicants to indicate changes to the disclosure in a continuation or
divisional application.
Response: The suggestion is not adopted. The Office did not propose
to amend Sec. 1.53 to require applicants to indicate changes to the
disclosure in any continuing application. Thus, adopting a change to
impose this additional burden on an applicant is not considered
appropriate in this Final Rule.
Comment 20: One comment suggested that the Office permit applicants
to file a statement requesting deletion of an inventor in a
continuation or divisional application any time prior to or coincident
with the mailing of an issue fee payment. The comment questioned
whether the time period in Sec. 1.53(e)(1) addresses this issue.
Response: Unless a statement requesting the deletion of the names
of the person or persons who are not inventors in the continuation or
divisional application accompanies the copy of the executed oath or
declaration submitted in accordance with Sec. 1.63(d) in an application
filed pursuant to Sec. 1.53(b), or accompanies the request for an
application under Sec. 1.53(d) in an application filed pursuant to
Sec. 1.53(d), the inventorship of the continuation or divisional
application filed under Sec. 1.53(b) using a copy of the oath or
declaration of the prior application pursuant to Sec. 1.63(d) or filed
under Sec. 1.53(d) will be considered identical to that in the prior
application, and correction of the inventorship (if appropriate) must
be by way of Sec. 1.48. Identification of the inventorship is necessary
to the examination of an application (e.g., 35 U.S.C. 102(f) and (g)).
As such, the Office must require identification of the inventorship
prior to examination of an application.
Section 1.53(e)(1) applies in those instances in which papers filed
as an application under Sec. 1.53 (b), (c), or (d) do not meet the
respective requirements of Sec. 1.53 (b), (c), or (d) to be entitled to
a filing date. Submitting an oath or declaration is not a filing date
issue, and naming the inventors is no longer a filing date issue. Thus,
the provisions of Sec. 1.53(e) do not apply to the filing of a
statement requesting deletion of an inventor in a continuation or
divisional application.
Comment 21: One comment questioned whether Sec. 1.53(d) applies
only to applications filed on or after June 8, 1995, and questioned
whether Sec. 1.53(d) should be made applicable to pending applications
filed prior to June 8, 1995. The comment also questioned the
relationship between Sec. 1.129(a) and Sec. 1.53(d).
Response: Section Sec. 1.53(d), by its terms, permits the filing of
a continuation or divisional thereunder of only a nonprovisional
application that, inter alia, is either: (1) Complete as defined by
Sec. 1.51(b) and filed on or after June 8, 1995 or; (2) resulted from
entry into the national stage of an international application in
compliance with 35 U.S.C. 371 filed on or after June 8, 1995. While
Sec. 1.53(d) and Sec. 1.129(a) both provide for the continued
prosecution of an application, these sections are distinct in that they
apply to a virtually mutually exclusive class of applications and have
separate requirements (e.g., a request for a Sec. 1.53(d) application
may be filed subsequent to the filing of an appeal brief, so long as
the request is filed before the earliest of: (1) Payment of the issue
fee on the prior application, unless a petition under Sec. 1.313(b)(5)
is granted in the prior application; (2) abandonment of the prior
application; or (3) termination of proceedings on the prior
application).
Comment 22: One comment suggested that the rules of practice permit
the execution of copies of an oath or declaration by fewer than all of
the inventors, without cross-reference to the other copies to
facilitate contemporaneous executions by geographically separated
inventors.
Response: The suggestion is not adopted. Section 1.63(a)(3)
requires that an oath (or declaration), inter alia, identify each
inventor. The rules of practice permit inventors to execute separate
oaths (or declarations), so long as each oath (or declaration) sets
forth all of the inventors (the necessary cross-reference). That is,
Sec. 1.63(a)(3) prohibits the execution of separate oaths (or
declarations) in which each oath (or declaration) sets forth only the
name of the executing inventor. An amendment to the rules of practice
to permit an inventor to execute an oath or declaration that does not
set forth each inventor would not only lead to confusion as to the
inventorship of an application, but would be inconsistent with the
requirement in 35 U.S.C. 115 that the applicant make an oath (or
declaration) that the applicant believes himself (or herself) to be the
original and first inventor of the subject matter for which a patent is
sought, as the oaths or declarations would conflict as to the
inventorship of the application.
Comment 23: Several comments suggested that the statement required
under 35 U.S.C. 120 in a continued prosecution application will be
confusing as the continued prosecution
[[Page 53143]]
application will have the same application number as the prior
application. One comment indicated that this will cause confusion: (1)
As to which application is being referenced in a 35 U.S.C. 120
statement in the divisional application when a divisional application
under Sec. 1.53(b) and a continued prosecution application filed under
Sec. 1.53(d) are filed from the same prior application; and (2) in
docketing applications as most commercially available software identify
applications by application number. Another comment questioned what
sentence was required pursuant to Sec. 1.78(a)(2) in a continued
prosecution application.
Response: 35 U.S.C. 120 provides that an application may obtain the
benefit of the filing date of an earlier filed application if, inter
alia, the application ``contains or is amended to contain a specific
reference to the earlier filed application.'' Section 1.78(a) requires
that this specific reference be in the first sentence of the
specification and identify each earlier filed application by
application number or international application number and
international filing date and relationship of the applications. Thus,
while a ``specific reference to the earlier filed application'' is a
requirement of statute (35 U.S.C. 120), the particulars of this
specific reference (by application number, filing date, and
relationship) is a requirement of regulation (Sec. 1.78(a)), not the
patent statute.
The purpose of the ``specific reference'' requirement of 35 U.S.C.
120 is to provide notice to the public of the filing date upon which a
patentee may rely to support the validity of the patent:
[35 U.S.C. 120] embodies an important public policy. The
information required to be disclosed is information that would
enable a person searching the records of the Patent Office to
determine with a minimum of effort the exact filing date upon which
a patent applicant is relying to support the validity of his
application or the validity of a patent issued on the basis of one
of a series of applications. In cases such as this, in which two or
more applications have been filed and the validity of a patent rests
upon the filing date of an application other than that upon which
the patent was issued, a person, even if he had conducted a search
of the Patent Office records, could unwittingly subject himself to
exactly this type of infringement suit unless the later application
adequately put him on notice that the applicant was relying upon a
filing date different from that stated in the later application.
Sampson v. Ampex Corp., 463 F.2d 1042, 1045, 174 USPQ 417, 419 (2d
Cir. 1972); see also Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405
F.2d 90, 93, 160 USPQ 177, 179 (7th Cir. 1968)(''Congress may well have
thought that [35 U.S.C.] 120 was necessary to eliminate the burden on
the public to engage in long and expensive search of previous
applications in order to determine the filing date of a later patent *
* *. The inventor is the person best suited to understand the relation
of his applications, and it is no hardship to require him to disclose
this information'').
To reduce the delay in processing a continued prosecution
application, the Office will maintain in its records (e.g., in the
Patent Application Locating and Monitoring (PALM) records for an
application) for identification purposes the application number and
filing date of the prior application. Thus, in a continued prosecution
application, the application number of the continued prosecution
application will be the application number of the prior application,
and the filing date indicated on any patent issuing from a continued
prosecution application will be the filing date of the prior
application (or, in a chain of continued prosecution applications, the
filing date of the application immediately preceding the first
continued prosecution application in the chain). In addition, as a
continued prosecution application will use the file wrapper of the
prior application, the prior application will be available upon
inspection of the continued prosecution application.
Unless excepted from Sec. 1.78(a)(2), the first sentence of a
continued prosecution application would consist of a reference to that
application as a continuation or divisional of an application having
the identical application number and the effective filing date of (the
filing date to be printed on any patent issuing from) the continued
prosecution application. Such a sentence would provide no useful
information to the public.
Therefore, Sec. 1.53(d)(7) as adopted provides that a request for
an application under Sec. 1.53(d) is a specific reference under 35
U.S.C. 120 to every application assigned the application number
identified in such request, and Sec. 1.78(a)(2) as adopted provides
that the request for a continued prosecution application under
Sec. 1.53(d) is the specific reference under 35 U.S.C. 120 to the prior
application. That is, the continued prosecution application includes
the request for an application under Sec. 1.53(d)
(Sec. 1.53(d)(2)(iv)), and the recitation of the application number of
the prior application in such request (as required by Sec. 1.53(d)) is
the ``specific reference to the earlier filed application'' required by
35 U.S.C. 120. No further amendment to the specification is required by
35 U.S.C. 120 or Sec. 1.78(a) for a continued prosecution application
for such continued prosecution application to contain the required
specific reference to the prior application, as well as any other
application assigned the application number of the prior application
(e.g., in instances in which a continued prosecution application is the
last in a chain of continued prosecution applications).
Where an application claims a benefit under 35 U.S.C. 120 of a
chain of applications, the application must make a reference to the
first (earliest) application and every intermediate application. See
Sampson, 463 F.2d at 1044-45, 174 USPQ at 418-19; Sticker Indus. Supply
Corp., 405 F.2d at 93, 160 USPQ at 179; Hovlid v. Asari, 305 F.2d 747,
751, 134 USPQ 162, 165 (9th Cir. 1962); see also MPEP 201.11. In
addition, every intermediate application must also make a reference to
the first (earliest) application and every application after the first
application and before such intermediate application.
In the situation in which there is a chain of continued prosecution
applications, each continued prosecution application in the chain will,
by operation of Sec. 1.53(d)(7), contain the required specific
reference to its immediate prior application, as well as every other
application assigned the application number identified in such request.
Put simply, a specific reference to a continued prosecution application
by application number and filing date will constitute a specific
reference to: (1) The non-continued prosecution application originally
assigned such application number (the prior application as to the first
continued prosecution application in the chain); and (2) every
continued prosecution application assigned the application number of
such non-continued prosecution application.
Where the non-continued prosecution application originally assigned
such application number itself claims the benefit of a prior
application or applications under 35 U.S.C. 120, 121, or 365(c),
Sec. 1.78(a)(2) continues to require that such application contain in
its first sentence a reference to any such prior application(s). As a
continued prosecution application uses the specification of the prior
application, such a specific reference in the prior application (as to
the continued prosecution application) will constitute such a specific
reference in the continued prosecution application, as well as every
continued prosecution application in the event that there is a
[[Page 53144]]
chain of continued prosecution applications.
Where an applicant in an application filed under Sec. 1.53(b) seeks
to claim the benefit of an application filed under Sec. 1.53(d) under
35 U.S.C. 120 or 121 (as a continuation, divisional, or continuation-
in-part), Sec. 1.78(a)(2) requires a reference to the continued
prosecution application by application number in the first sentence of
such application. Section 1.78(a)(2) has been amended to also provide
that ``[t]he identification of an application by application number
under this section is the specific reference required by 35 U.S.C. 120
to every application assigned that application number.'' Thus, where a
referenced continued prosecution application is in a chain of continued
prosecution applications, this reference will constitute a reference
under 35 U.S.C. 120 and Sec. 1.78(a)(2) to every continued prosecution
application in the chain as well as the non-continued prosecution
application originally assigned such application number.
Therefore, regardless of whether an application is filed under
Sec. 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a
continued prosecution application is, by operation of Sec. 1.53(d)(7)
and Sec. 1.78(a)(2), a claim to every application assigned the
application number of such continued prosecution application. In
addition, applicants will not be permitted to choose to delete such a
claim as to certain applications assigned that application number
(e.g., for patent term purposes).
Finally, while it is recognized that using a common application
number (and file wrapper) for a continued prosecution application and
its prior application (which may also be a continued prosecution
application) will necessitate docketing modifications (as well as the
Office's PALM system), the burden of such modifications is outweighed
by the benefits that will result from the elimination of the initial
processing of such applications.
Comment 24: One comment suggested that the phrase ``now refiled''
be used in lieu of ``now abandoned'' to reflect the status of the prior
application.
Response: Under 35 U.S.C. 120, the status of an application is one
of three conditions: (1) pending; (2) patented; or (3) abandoned. See
In re Morganroth, 6 USPQ2d 1802, 1803 (Comm'r Pat. 1988). As the filing
of a continued prosecution application under Sec. 1.53(d) operates to
expressly abandon the prior application under Sec. 1.53(d)(2)(v), the
status of the prior application is appropriately designated as
``abandoned.''
Comment 25: Several comments suggested that the proposed continued
prosecution application practice be made applicable in instances in
which the prior application was filed prior to June 8, 1995, to
expedite the prosecution of such applications.
Response: Permitting the continued prosecution application practice
to be applicable in instances in which the prior application was filed
prior to June 8, 1995, would result in confusion as to whether the
patent issuing from the continued prosecution application is entitled
to the provisions of 35 U.S.C. 154(c). As the continued prosecution
application practice was not in effect prior to June 8, 1995, no patent
issuing from a continued prosecution application is entitled to the
provisions of 35 U.S.C. 154(c).
As discussed supra, the application number of a continued
prosecution application will be the application number of the prior
application, and the filing date indicated on any patent issuing from a
continued prosecution application will be the filing date of the prior
application (or, in a chain of continued prosecution applications, the
filing date of the application immediately preceding the first
continued prosecution application in the chain). Thus, any patent
issuing from a continued prosecution application, where the prior
application was filed prior to June 8, 1995, will indicate that the
filing date of the application for that patent was prior to June 8,
1995, which will confuse the public (and possible the patentee) into
believing that such patent is entitled to the provisions of 35 U.S.C.
154(c).
The Office has implemented Sec. 532(a)(2)(A) of Pub. L. 103-465 in
Sec. 1.129(a) to conclude the examination of applications pending at
least two years as of June 8, 1995, taking into account any reference
made in such application to any earlier filed application under 35
U.S.C. 120, 121, and 365(c). Further examination of any application may
be obtained via the filing of a continuing application under
Sec. 1.53(b). Requiring applications filed prior to June 8, 1995, that
are not eligible for the transitional procedure set forth in
Sec. 1.129(a) to obtain further examination via the filing of a
continuing application under Sec. 1.53(b) is a reasonable requirement
to avoid confusion as to whether a patent issuing from a continued
prosecution (Sec. 1.53(d)) application is entitled to the provisions of
35 U.S.C. 154(c).
Comment 26: One comment suggested that the phrase ``most immediate
prior national application'' rather than ``prior application'' was
confusing. The comment further stated that if the prior application was
one filed under Sec. 1.62, there is no copy in that complete
application of the (oath or) declaration filed in the application under
Sec. 1.62.
Response: The phrase ``most immediate prior national application
for which priority is claimed under 35 U.S.C. 120, 121 or 365(c)'' is
changed to ``prior application.'' An application under Secs. 1.53(d),
1.60, or 1.62 must ultimately be a continuing application of an
application filed under Sec. 1.53(b). Where the prior application is an
application under Sec. 1.60, the oath or declaration is the copy of the
oath or declaration from the prior application vis-a-vis the
application under Sec. 1.60 submitted in accordance with
Sec. 1.60(b)(2). Where the prior application is an application under
Secs. 1.62 or 1.53(d), the oath or declaration is the oath or
declaration from the prior application vis-a-vis the application under
Secs. 1.62 or 1.53(d). Where there is a chain of applications under
Secs. 1.62 or 1.53(d) preceding the prior application to an application
under Sec. 1.53(d), the oath or declaration of the prior application
will be the oath or declaration of the application under Secs. 1.53 or
1.60 immediately preceding the chain of applications under Secs. 1.62
or 1.53(d), as each application in the chain of applications under
Secs. 1.62 or 1.53(d) utilizes the oath or declaration of the prior
application.
Comment 27: One comment suggested that applications filed under
Sec. 1.53(d) should be taken up as amended applications, rather than as
newly filed applications.
Response: The comment implies that taking up a continued
prosecution application as an amended application may result in the
examiner acting on the application in a more timely manner than if the
application were accounted for as a new application. The matter is
under consideration along with other administrative issues, and a
decision shall be made in due course.
Comment 28: One comment suggested that Sec. 1.129(a) be amended so
as not to be limited to applications under final rejection, such that
an applicant in an application in which a notice of allowance under
Sec. 1.311 has been mailed may obtain entry of an information
disclosure statement without regard to the requirements of
Sec. 1.97(d).
Response: The Notice of Proposed Rulemaking did not propose to
amend Sec. 1.129(a). While the language of Sec. 532(a)(2)(A) of Pub. L.
103-465 does not expressly exclude the further examination of an
application that has been allowed (as opposed to an
[[Page 53145]]
application under a final rejection), Sec. 102(d) of Pub. L. 103-465
provides that ``[t]he statement of administrative action approved by
the Congress under section 101(a) shall be regarded as an authoritative
expression by the United States concerning the interpretation and
application of the Uruguay Round Agreements and this Act in any
judicial proceeding in which a question arises concerning such
interpretation or application.'' The statement of administrative action
specifies that such further examination is to facilitate the completion
of prosecution of applications pending before the Office, and to permit
applicants to present a submission after the Office has issued a final
rejection on an application. See H.R. Rep. 826(i), 103rd Cong., 2nd
Sess. 1005-06, reprinted in 1984 U.S.C.C.A.N. 3773, 4298.
Upon mailing of a notice of allowance under Sec. 1.311, prosecution
of an application before the Office is concluded. The proposed
amendment to obtain further examination pursuant to Sec. 1.129(a) after
allowance would nullify (rather than facilitate) the completion of
prosecution of the above-identified application, and, as such, would be
inconsistent with the purpose for the provisions of Sec. 532(a)(2)(A)
of Pub. L. 103-465.
Comment 29: One comment questioned how the filing of a continued
prosecution application would result in less delay than the filing of a
continuing application under Sec. 1.53(b), as a continued prosecution
application would be subject to pre-examination processing delays.
Response: The Office will not issue a new filing receipt for a
continued prosecution application under Sec. 1.53(d). See Sec. 1.54(b).
By not issuing a filing receipt for a continued prosecution
application, the Office will be able to perform the pre-examination of
any continued prosecution application in the examining group to which
the prior application was assigned. Likewise, Sec. 1.6(d) has been
amended to permit an applicant to file a continued prosecution
application under Sec. 1.53(d) by facsimile, and the use of this means
of filing a continued prosecution application will avoid the delay
inherent in routing an application (or any paper) from the mailroom to
the appropriate examining group. These provisions will enable the
Office to process a continued prosecution application in the manner
that a submission under Sec. 1.129(a) is processed.
Comment 30: One comment questioned whether the filing date of a
continued prosecution application is the filing date for determining
patent term, or is significant only in establishing copendency. Another
comment questioned what filing date was relevant for determining patent
term.
Response: Notwithstanding that a continued prosecution application
is assigned the application number of the prior application, the filing
date of the continued prosecution application is the date on which the
request for such continued prosecution application was filed
(Sec. 1.53(d)). While the filing date of the continued prosecution
application is relevant to establishing the copendency required by 35
U.S.C. 120 and Sec. 1.78(a) between the continued prosecution
application and the prior application, the filing date of a continued
prosecution application will never be relevant to the term under 35
U.S.C. 154(b) of any patent issuing from the continued prosecution
application.
Any continued prosecution application under Sec. 1.53(d) will be
filed on or after June 8, 1995, and will claim the benefit of an
earlier application as a continuation or divisional application.
Section 1.53(d)(7) specifically provides that:
A request for an application under this paragraph is the
specific reference required by 35 U.S.C. 120 to every application
assigned the application number identified in such request. No
amendment in an application under this paragraph shall delete this
specific reference to any prior application.
Thus, an application under Sec. 1.53(d) cannot be amended to delete
the specific reference to the prior application, as well as the
specific reference to any application to which the prior application
contains a specific reference under 35 U.S.C. 120, 121, and 365(c). As
an application under Sec. 1.53(d) will also contain a specific
reference to at least one other application under 35 U.S.C. 120, 121,
and 365(c), the expiration date under 35 U.S.C. 154(b)(2) of any patent
issuing from the application under Sec. 1.53(d) will be based upon the
filing date of the prior application (or the earliest application to
which the prior application contains a specific reference under 35
U.S.C. 120, 121, and 365(c)).
Comment 31: One comment argued that the Office should address not
only the filing requirements for continuing applications, but also the
cause of the filing of continuing applications. The comment
specifically argued that the current second action final practice
should be reevaluated as an applicant no longer has an incentive to
delay the prosecution of an application due to Pub. L. 103-465.
Response: The suggestion is being taken under advisement as part of
a comprehensive effort by the Office to reengineer the entire patent
process. However, it should be noted that any changes to the current
second action final practice to provide additional examination of an
application prior to a final Office action would necessitate a
corresponding increase in patent fees.
Comment 32: One comment suggested that the Office simply eliminate
the ``true copy'' requirement of Sec. 1.60, rather than add new
provisions permitting the use of a copy of the oath or declaration of a
prior application. The comment also suggested that the Office simply
amend Sec. 1.62 to eliminate the requirement that the Office assign a
new application number to the application, rather than add a new
Sec. 1.53(d).
Response: The amendments to Sec. 1.53 do not simply make minor
changes to Secs. 1.60 and 1.62. Sections 1.60 and 1.62 are anachronisms
that have outlived their usefulness. A significant number of
applications filed under Sec. 1.60 do not meet the requirements of
Sec. 1.60 (and, as such are improper), but would be proper under
Sec. 1.53 (in the absence of a reference to Sec. 1.60). The elimination
of Sec. 1.60 will result in a reduction in the Office's burden in
treating and the applicant's burden in correcting these improper
applications under Sec. 1.60, as such applications would generally have
been proper applications if filed under Sec. 1.53 (without a reference
to Sec. 1.60). Section 1.63(d) retains most of the benefits of
Sec. 1.60, but eliminates the filing ``traps'' of Sec. 1.60.
Section 1.62 practice also causes problems concerning its
prohibition against including a new or substitute specification, and
its permitting the filing of a continuation-in-part. To avoid continued
prosecution application practice under Sec. 1.53(d) being confused with
the former file-wrapper-continuation practice under Sec. 1.62, the
Office has deemed it advisable to use a new Sec. 1.53(d) rather than
Sec. 1.62 in regard to continued prosecution application practice.
Comment 33: One comment stated that the Office should anticipate
the filing of applications containing a reference to Sec. 1.60 or
Sec. 1.62 for some period.
Response: That applications containing a reference to Secs. 1.60 or
1.62 will continue to be filed has been anticipated. The treatment of
such applications is discussed infra with respect to the elimination of
Secs. 1.60 and 1.62.
Comment 34: One comment stated that the safeguard in Sec. 1.60
concerning
[[Page 53146]]
the filing of an application lacking all of the pages of specification
or sheets of drawings of the prior application has not been retained in
Sec. 1.53(b). The comment suggested that Sec. 1.53 contain a
presumption that a continuation or divisional be presumed, absent
evidence to the contrary, to be the filing of an application identical
to the prior application.
Response: The Court of Customs and Patent Appeals (CCPA) has held
that a mere reference to another application, patent, or publication is
not an incorporation of anything therein into the application
containing such reference. See In re de Seversky, 474 F.2d 671, 177
USPQ 144 (CCPA 1973); see also Dart Industries v. Banner, 636 F.2d 684,
207 USPQ 273 (CCPA 1980)(related decision). These decisions relied upon
In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967), which considered
the incorporation by reference issue in the context of whether a prior
art patent adequately incorporated by reference a prior application.
The court, in Lund, specifically stated:
There is little in the term ``continuation-in-part'' which would
suggest to the reader of the patent that a disclosure of the nature
of Example 2 is present in the earlier application and should be
considered a part of the patent specification. Thus, we cannot agree
that the subject matter of claim 3 is tacitly ``described'' in the
Margerison patent within the meaning of Sec. 102(e).
Id. at 989, 153 USPQ 631-32 (footnote discussing the definition of
``continuation-in-part'' as set forth in MPEP 201.08 omitted). While
the holdings in Dart Industries, de Seversky and Lund appear to be
based upon the definitions of the various categories of continuing
applications set forth in the MPEP (and thus could be changed by a
revision to the MPEP), the Office is not at this time inclined to
disturb settled law in this area.
Nevertheless, an applicant may incorporate by reference the prior
application by including, in the continuing application-as-filed, a
statement that such specifically enumerated prior application or
applications are ``hereby incorporated herein by reference.'' The
inclusion of this incorporation by reference of the prior
application(s) will permit an applicant to amend the continuing
application to include any subject matter in such prior application(s),
without the need for a petition.
Section 1.54
Section 1.54(b) is amended to add the phrase ``unless the
application is an application filed under Sec. 1.53(d).'' To minimize
application processing delays in applications filed under Sec. 1.53(d),
such applications will not be processed by the Office of Initial Patent
Examination as new applications.
No comments were received regarding the proposed change to
Sec. 1.54.
Section 1.55
Section 1.55(a) is amended to remove the requirement that the
statement be verified in accordance with the change to Secs. 1.4(d)(2)
and 10.18.
No comments were received regarding the proposed change to
Sec. 1.55.
Section 1.59
Section 1.59 is amended: (1) By revising the title to indicate that
expungement of information from an application file would come under
this section; (2) by revising the existing paragraph and designating it
as paragraph (a)(1); and (3) by adding paragraphs (a)(2), (b) and (c).
Section 1.59(a)(1) retains the general prohibition on the return of
information submitted in an application, but no longer limits that
prohibition to an application that has been accorded a filing date
under Sec. 1.53. The portion of the paragraph relating to the Office
furnishing copies of application papers has been shifted to new
paragraph (c). Section 1.59(a)(2) makes explicit that information,
forming part of the original disclosure (i.e., written specification
including the claims, drawings, and any preliminary amendment
specifically incorporated into an executed oath or declaration under
Secs. 1.63 and 1.175) will not be expunged from the application file.
Section 1.59(b) provides an exception to the general prohibition of
paragraph (a) on the expungement and return of information and would
allow for such when it is established to the satisfaction of the
Commissioner that the requested expungement and return is appropriate.
Section 1.59(b) covers the current practice set forth in MPEP 724.05
where information is submitted as part of an information disclosure
statement and the submitted information has initially been identified
as trade secret, proprietary, and/or subject to a protective order and
where applicant may file a petition for its expungement and return that
will be granted upon a determination by the examiner that the
information is not material to patentability. Any such petition should
be submitted in reply to an Office action closing prosecution so that
the examiner can make a determination of materiality based on a closed
record. Any petition submitted earlier than close of prosecution may be
dismissed as premature or returned unacted upon. In the event pending
legislation for pre-grant publication of applications, which provides
public access to the application file, is enacted, then the timing of
petition submissions under this section will be reconsidered.
Petitions to expunge were formerly considered under Sec. 1.182,
with the Office of Petitions consulting with the examiner on the
materiality of the information at issue prior to rendering a decision.
A possible result of the amendment to Sec. 1.59 would be to have
petitions under Sec. 1.59 to expunge simply decided by the examiner who
determines the materiality of the information.
Comment 35: One comment suggested that petitions to expunge under
Sec. 1.59 should be decided by Group Directors or officials in the
Office of Petitions, rather than by examiners. The comment argued that
any individual examiner would decide such a petition so rarely that it
would be difficult to produce uniform and consistent decisions.
Response: The preamble has been amended to reflect that a possible
result of the rule change is to have petitions under Sec. 1.59 decided
by the examiners. The heart of most petitions to expunge is a
determination as to whether the material sought to be expunged is
material to examination, a matter that is now referred to examiners
prior to a decision on the petition. Given the major role examiners now
play in expungement matters, it is not clear why examiners would be
rendering inconsistent decisions, particularly as so many other matters
are routinely assigned to examiners including petitions under
Sec. 1.48. Nevertheless, the comment is not germane to Sec. 1.59 as
proposed (or adopted), but concerns the internal Office delegation of
such petitions for consideration. Moreover, a petition to expunge a
part of the original disclosure would have to be filed under Sec. 1.183
and would continue to be decided in the Office of Petitions.
Comment 36: A comment in requesting some examples of things that
may be expunged asked whether a design code listing as an appendix in
an application may be expunged.
Response: The standard set forth in paragraph (b) of Sec. 1.59
permits information other than what is enumerated in paragraph (a) of
the section to be expunged if it is established to the satisfaction of
the Commissioner that the return of the information is appropriate. The
types of information and rationales why the information may be returned
are varied and will be evaluated on a case-by-case basis with the basic
inquiry being whether the information is material to
[[Page 53147]]
examination of the application. However, to the extent that an appendix
to a specification of an application is considered part of the original
disclosure it cannot be expunged from the file under Sec. 1.59(a)(2).
Section 1.59(b) also covers information that was unintentionally
submitted in an application, provided that: (1) The Office can effect
such return prior to the issuance of any patent on the application in
issue; (2) it is stated that the information submitted was
unintentionally submitted and the failure to obtain its return would
cause irreparable harm to the party who submitted the information or to
the party in interest on whose behalf the information was submitted;
(3) the information has not otherwise been made public; (4) there is a
commitment on the part of the petitioner to retain such information for
the period of any patent with regard to which such information is
submitted; and (5) it is established to the satisfaction of the
Commissioner that the information to be returned is not material
information under Sec. 1.56. A request to return information that has
not been clearly identified as information that may be later subject to
such a request by marking and placement in a separate sealed envelope
or container shall be treated on a case-by-case basis. It should be
noted that the Office intends to start electronic scanning of all
papers filed in an application, and the practicality of expungement
from the electronic file created by a scanning procedure is not as yet
determinable. Applicants should also note that unidentified information
that is a trade secret, proprietary, or subject to a protective order
that is submitted in an Information Disclosure Statement may
inadvertently be placed in an Office prior art search file by the
examiner due to the lack of such identification and may not be
retrievable.
Section 1.59(b) also covers the situation where an unintended
heading has been placed on papers so that they are present in an
incorrect application file. In such a situation, a petition should
request return of the papers rather than transfer of the papers to the
correct application file. The grant of such a petition will be governed
by the factors enumerated above in regard to the unintentional
submission of information. Where the Office can determine the correct
application file that the papers were actually intended for, based on
identifying information in the heading of the papers (e.g., Application
number, filing date, title of invention and inventor(s) name(s)), the
Office will transfer the papers to the correct application file for
which they were intended without the need of a petition.
Section 1.59(c) retains the practice that copies of application
papers will be furnished by the Office upon request and payment of the
cost for supplying such copies.
Section 1.60
Section 1.60 is removed and reserved.
Section 1.60 is now unnecessary due to the amendment to
Sec. 1.63(d) to expressly permit the filing in a continuation or
divisional application using a copy of the oath or declaration filed in
the prior application, and to provide (Sec. 1.63(d)(2)) for the filing
of a continuation or divisional application by all or by fewer than all
the inventors named in a prior application.
See comments relating to Sec. 1.53.
Section 1.62
Section 1.62 is removed and reserved.
Section 1.62 is unnecessary due to the addition of Sec. 1.53(d) to
permit the filing of a continued prosecution application.
It is anticipated that applications purporting to be applications
filed under Secs. 1.60 or 1.62 will be filed until the deletion of
Secs. 1.60 and 1.62 become well known among patent practitioners. An
application purporting to be an application filed under Sec. 1.60 will
simply be treated as a new application filed under Sec. 1.53 (i.e., the
reference to Sec. 1.60 will simply be ignored).
Applications purporting to be an application filed under Sec. 1.62
will be treated as continued prosecution applications under
Sec. 1.53(d), and those applications that do not meet the requirements
of Sec. 1.53(d) (e.g., continuation-in-part applications or
continuations or divisional of applications filed before June 8, 1995)
will be treated as improper continued prosecution applications under
Sec. 1.53(d). Such an improper application under Sec. 1.53(d) may be
accepted and treated as a proper application under Sec. 1.53(b) by way
of petition under Sec. 1.53(e) (and submission of the $130 fee pursuant
to Sec. 1.17(i)).
A petition under Sec. 1.53(e) to accept and treat an improper
application under Sec. 1.53(d) as a proper application under
Sec. 1.53(b) must include: (1) The $130 petition fee; (2) a true copy
of the complete application designated as the prior application in the
purported Sec. 1.62 application papers; (3) any amendments entered in
the prior application; and (4) any amendments submitted but not entered
in the prior application and directed to be entered in the purported
Sec. 1.62 application papers. In an application purporting to be a
continuation or divisional application under Sec. 1.62, the true copy
of the prior application will constitute the original disclosure of the
application under Sec. 1.53(b), and any amendments entered in the prior
application or not entered in the prior application but directed to be
entered in the purported Sec. 1.62 application papers and submitted
with the Sec. 1.53(e) petition will be entered in the application under
Sec. 1.53(b) and considered by the examiner for new matter under 35
U.S.C. 112, para. 1, and 132. In an application purporting to be a
continuation-in-part application under Sec. 1.62, the true copy of the
prior application, any amendments entered in the prior application or
not entered in the prior application but directed to be entered in the
purported Sec. 1.62 application papers and submitted with the
Sec. 1.53(e) petition, and any preliminary amendment submitted with the
purported Sec. 1.62 application will constitute the original disclosure
of the application under Sec. 1.53(b).
See comments relating to Sec. 1.53.
Section 1.63
Section 1.63(a)(3) is amended to require the post office address to
appear in the oath or declaration and to have the requirement from
Sec. 1.41(a) for the full names of the inventors placed therein.
Comment 37: Two comments raised the issue regarding the continued
requirement that both a post office address and a residence be supplied
and indicated that the residence is not required by statute, the post
office address is sufficient for communication purposes, and that the
burden of submitting both far outweighs the infrequent need to contact
any particular inventor bypassing counsel so that the residence alone
should be sufficient.
Response: Under the proposed comment the applicants would still be
required to submit either the residence or post office address. To
request that they also supply the other or state that both are the same
is not seen to be a significant burden as the information is to be
supplied on the oath or declaration form that they must sign anyway and
spaces can be provided to ensure that the information is supplied.
While neither the residence nor the post office address are statutory
requirements, the Office requires this information for the applicant's
benefit. As more than one person may have the same name, a person's
name is often not sufficient to provide a unique identification of the
inventor. Thus, the Office also requires an inventor's residence (which
is not required to be sufficiently detailed to
[[Page 53148]]
suffice as a post office address) to specifically identify the
person(s) named in the oath or declaration as the inventor(s), which is
a common practice for legal documents. The post office address is also
required in the event that the Office finds it necessary to directly
contact the inventor(s). It is not uncommon for an inventor to revoke a
power of attorney or authorization of agent in a paper providing no
address for future correspondence from the Office. Also, the Office
will need to directly contact the inventor if the Office is notified of
the death of a sole attorney or agent of record (MPEP 406).
Section 1.63(d) is amended to: (1) relocate its current language in
a new Sec. 1.63(e); and (2) provide that a newly executed oath or
declaration is not required under Sec. 1.51(b)(2) and 1.53(f) in a
continuation or divisional application filed by all or by fewer than
all of the inventors named in a prior nonprovisional application
containing an oath or declaration as prescribed by Sec. 1.63, provided
that a copy of the executed oath or declaration filed in the prior
application is submitted for the continuation or divisional application
and the specification and drawings filed in the continuation or
divisional application contain no matter that would have been new
matter in the prior application. The copy of the oath or declaration
must show the signature of the inventor(s) or contain an indication
thereon that the oath or declaration was signed (e.g., the notation ``/
s/'' on the line provided for the signature).
A continuation or divisional application may be filed under 35
U.S.C. 111(a) using the procedures set forth in Sec. 1.53(b), by
providing either: (1) A copy of the prior application, including a copy
of the oath or declaration in such prior application, as filed; or (2)
a new specification and drawings and a copy of the oath or declaration
as filed in the prior application so long as no matter is included in
the new specification and drawings that would have been new matter in
the prior application. The specification and drawings of a continuation
or divisional application is not limited to a reproduction or ``true
copy'' of the prior application, but may be revised for clarity or
contextual purposes vis-a-vis the prior application in the manner that
an applicant may file a substitute specification (Sec. 1.125) or amend
the drawings of an application so long as it does not result in the
introduction of new matter. Of course, 35 U.S.C. 115 requires that a
supplemental oath or declaration meeting the requirements of Sec. 1.63
be filed in the continuation or divisional application, if a claim is
allowed in the continuation or divisional application which is drawn to
subject matter originally shown or described in the prior application
but not substantially embraced in the statement of the invention or
claims originally presented in the prior application as filed. See
Sec. 1.67(b).
The patent statute and rules of practice do not require that an
oath or declaration include a date of execution, and the Examining
Corps has been directed not to object to an oath or declaration as
lacking either a recent date of execution or any date of execution. The
applicant's duty of candor and good faith including compliance with the
duty of disclosure requirements of Sec. 1.56 is continuous and applies
to the continuing application.
A new application containing a copy of an oath or declaration under
Sec. 1.63 referring to an attached specification is indistinguishable
from a continuation or divisional application containing a copy of an
oath or declaration from a prior application submitted pursuant to
Sec. 1.63(d). Unless an application is submitted with a statement that
the application is a continuation or divisional application
(Sec. 1.78(a)(2)), the Office will process such application as a new
non-continuing application. Applicants are advised to clearly designate
any continuation or divisional application as such to avoid the
issuance of a filing receipt that does not indicate that the
application is a continuation or divisional.
To continue the practice in Sec. 1.60(b)(4) of permitting the
filing of a continuation or divisional application by all or by fewer
than all of the inventors named in a prior application without a newly
executed oath or declaration, new Sec. 1.63(d)(2) provides that the
copy of the oath or declaration submitted for a continuation or
divisional application under Sec. 1.63(d) must be accompanied by a
statement from applicant, counsel for applicant or other authorized
party requesting the deletion of the names of the person or persons who
are not inventors in the continuation or divisional application. Where
the continuation or divisional application and copy of the oath or
declaration from the prior application is filed without a statement
from an authorized party requesting deletion of the names of any person
or persons named in the prior application, the continuation or
divisional application will be treated as naming as inventors the
person or persons named in the copy of the executed oath or declaration
from the prior application. Accordingly, if a petition under Sec. 1.48
(a) or (c) was granted in the prior application, an oath or declaration
filed in a continuation or divisional application pursuant to
Sec. 1.63(d) should be the oath or declaration also executed by the
added inventor(s). For situations where an inventor or inventors are to
be added in a continuation or divisional application, see
Sec. 1.63(d)(5).
The statement requesting the deletion of the names of the person or
persons who are not inventors in the continuation or divisional
application must be signed by person(s) authorized pursuant to
Sec. 1.33(b) to sign an amendment in the continuation or divisional
application.
Section 1.63(d)(3) provides for the situation in which the executed
oath or declaration of which a copy is submitted for a continuation or
divisional application was originally filed in a prior application
accorded status under Sec. 1.47. Section 1.63(d)(3)(i) requires a copy
of any decision granting a petition to accord Sec. 1.47 status to such
application, unless each nonsigning inventor(s) or legal representative
(pursuant to Sec. 1.42 or 1.43) has filed an oath or declaration to
join in an application of which the continuation or divisional
application claims a benefit under 35 U.S.C. 120, 121 or 365(c). Where
a nonsigning inventor or legal representative (pursuant to Sec. 1.42 or
1.43) subsequently joins in any application of which the continuation
or divisional application claims a benefit under 35 U.S.C. 120, 121 or
365(c), Sec. 1.63(d)(3)(ii) also requires a copy of any oath or
declaration filed by an inventor or legal representative to
subsequently join in such application.
Section 1.63(d)(4) provides that where the power of attorney (or
authorization of agent) or correspondence address was changed during
the prosecution of the prior application, the change in power of
attorney (or authorization of agent) or correspondence address must be
identified in the continuation or divisional application, or the Office
may not recognize in the continuation or divisional application the
change of power of attorney (or authorization of agent) or
correspondence address during the prosecution of the prior application.
A newly executed oath or declaration will continue to be required
in a continuation or divisional application naming an inventor not
named in the prior application, or a continuation-in-part application,
and Sec. 1.63(d)(5) expressly states that a newly executed oath or
declaration must be filed in a continuation or divisional application
naming an inventor not named in the prior application.
[[Page 53149]]
New Sec. 1.63(e) provides that a newly executed oath or declaration
must be filed in a continuation-in-part application, which application
may name all, more, or fewer than all of the inventors named in the
prior application, and includes the language relocated from former
Sec. 1.63(d) concerning an oath or declaration in a continuation-in-
part application.
Comment 38: One comment suggested that the practice of permitting
the use of an executed oath or declaration of a prior application
creates a trap for the unwary in the situation in which an applicant
believes in error that no new matter has been added in the
``continuation'' application and does not file a new declaration.
Response: The situation outlined in the comment is less of a trap
for the unwary than the situation in which an applicant files a
substitute specification and believes in error that no new matter has
been added, in that the error in the ``continuation'' may be corrected
by redesignation of the application as a continuation-in-part and the
filing of a new oath or declaration. Nevertheless, it remains the
applicant's responsibility to review any substitute specification or
new specification submitted for a continuation application to determine
that it contains no new matter. See MPEP 608.01(q). An applicant is
advised to simply file a continuing application with a newly executed
oath or declaration when it is questionable as to whether the
continuing application adds material that would have been new matter if
presented in the prior application.
Comment 39: One comment suggested that the option of submitting ``a
copy of an unexecuted oath or declaration, and a statement that the
copy is a true copy of the oath or declaration that was subsequently
executed and filed to complete * * * the most immediate prior national
application for which priority is claimed under 35 U.S.C. 120, 121 or
365(c)'' was strange at best as the applicant or representative should
have a copy of the oath or declaration that was filed to complete the
prior application or could obtain one from Office records.
Response: The suggestion is adopted. Section 1.63(d) as adopted
provides that: ``[a] newly executed oath or declaration is not required
under Sec. 1.51(b)(2) and Sec. 1.53(f) in a continuation or divisional
application filed by all or by fewer than all of the inventors named in
a prior nonprovisional application containing an oath or declaration as
prescribed by paragraphs (a) through (c) of this section, provided that
a copy of the executed oath or declaration filed in the prior
application is submitted for the continuation or divisional
application.''
Comment 40: One comment questioned whether Sec. 1.53 (or Sec. 1.63)
is consistent with Sec. 1.48 as to whether the oath or declaration
filed in a continuing application adding an inventor must be executed
by all of the inventors, or just the added inventor.
Response: The oath or declaration filed in a continuing application
adding an inventor or a continuation-in-part application must name and
be executed by all of the inventors. Sections 1.48 and 1.63(e) are
consistent in this regard.
Comment 41: One comment questioned whether, in a continuation or
divisional application following a chain of continuation or divisional
applications, the copy of the executed oath or declaration may be a
copy of the oath or declaration filed in the immediate prior
application (which may itself be a copy of an oath or declaration from
a prior application), or must be a direct copy of the originally
executed oath or declaration.
Response: Section 1.63(d) requires a copy of the oath or
declaration from the prior application. In instances in which the oath
or declaration filed in the prior application is itself a copy of an
oath or declaration from a prior application, either a copy of the copy
of the oath or declaration in the prior application or a direct copy of
the original oath or declaration is acceptable, as both are a copy of
the oath or declaration in the prior application. See
Sec. 1.4(d)(1)(ii).
Section 1.67
Section 1.67 paragraph (b) is amended to change ``Sec. 1.53(d)(1)''
to ``Sec. 1.53(f)'' for consistency with Sec. 1.53.
No comments were received regarding Sec. 1.67.
Section 1.69
Section 1.69(b) is amended to remove the requirement that the
translation be verified in accordance with the change to
Secs. 1.4(d)(2) and 10.18. Section 1.69(b) is also amended to clarify
the need for a statement that the translation being offered is an
accurate translation, as in Sec. 1.52 paragraphs (a) and (d).
Two comments were received in regard to Sec. 1.69 that also raised
similar issues in regard to Sec. 1.52, which comments are treated with
Sec. 1.52.
Section 1.78
Section 1.78(a)(1) is amended to remove the references to
Secs. 1.60 and 1.62 in view of the deletion of Secs. 1.60 and 1.62, and
to include a reference to an ``international application entitled to a
filing date in accordance with PCT Article 11 and designating the
United States of America.'' Section 1.78(a)(2) is amended for
consistency with the changes to Sec. 1.53, and to provide that ``[t]he
identification of an application by application number under this
section is the specific reference required by 35 U.S.C. 120 to every
application assigned that application number.''
No comments were received regarding the proposed change to
Sec. 1.78.
Section 1.84
Section 1.84(b) is amended by removing references to the filing of
black and white photographs in design applications as unnecessary in
view of the reference in Sec. 1.152 to Sec. 1.84(b). Section 1.84
paragraphs (c) and (g) are amended for consistency in regard to the
English equivalents (5/8 inch.) for 1.5 cm.
No adverse comments were received regarding the proposed change to
Sec. 1.84.
Section 1.91
The title of Sec. 1.91 is amended to clarify that a certain type of
material is not generally admitted in the file record by substitution
of ``admitted'' for ``required.''
Section 1.91 is also amended to clarify the type of material that
is not generally admitted into the file record of an application.
Section 1.91(a) specifically requires a petition (with the fee set
forth in Sec. 1.17(i)) including an appropriate showing why entry of
the model or exhibit into the file record is necessary to demonstrate
patentability, unless the model or exhibit: (1) substantially conforms
with Sec. 1.52 or Sec. 1.84; or (2) was required by the Office.
Section 1.91 is also amended to state that a model, working model
or other physical exhibit, whose submission by applicants is generally
not permitted, may be required by the Office if deemed necessary for
any purpose in the examination of the application. This language is
moved from Sec. 1.92.
Comment 42: Several adverse comments were received expressing
concern that the addition of the term ``exhibits'' to the bar against
admission of models, unless specifically required by the Office, would
prevent applicants from making their best possible case for
patentability, and that exhibits would be interpreted by the Office as
barring two-dimensional as well as three-dimensional exhibits.
Response: The preamble of the proposed rule indicated that the
change to the rule is in the nature of a clarification and not a change
in practice. Further clarification has been added to the rule by
reference to Sec. 1.52
[[Page 53150]]
or Sec. 1.84 and to the instant discussion of the rule to indicate that
the use of the term ``exhibits'' is in the nature of other three-
dimensional models, such as videos, and will not bar two-dimensional
exhibits currently being accepted. Additionally, a petition route has
been added to the rule that would permit entry of three-dimensional
models or exhibits where they are necessary to establish patentability.
Section 1.91 is also amended to expressly provide for the filing of a
petition thereunder (rather than to require the filing of a petition
under Sec. 1.183) such that an applicant may gain entry of a model or
exhibit, without a showing of an extraordinary situation where justice
requires grant of the relief sought.
The fact that a three-dimensional model or exhibit will not
generally be entered in the record absent an appropriate showing does
not prevent an applicant from showing the exhibit to the examiner for
purposes of clarifying the examiner's understanding of the invention
and reducing the model or exhibit to two-dimensional conformance with
Sec. 1.52 or Sec. 1.84 for entry of that reduction to the record (which
issues are separate and distinct from the questions as to whether the
later presented material was originally required for an understanding
of the invention and its subsequent addition being subject to a new
matter objection under 35 U.S.C. 132).
Due to the unusual difficulties of storage for three-dimensional
materials and little demonstrated need for their presence in the file
record over what would be provided for via petition under Sec. 1.91, it
is not seen to be appropriate to permit unrestricted entry of three-
dimensional exhibits in the file record.
Section 1.92
Section 1.92 is removed and reserved and the language transferred
to Sec. 1.91(b) for improved contextual purposes.
No comments were received regarding the proposed change to
Sec. 1.92.
Section 1.97
Sections 1.97 (c) through (e) are amended by replacement of
``certification'' by ``statement'' (see comments relating to
Sec. 1.4(d)), and by clarifying the current use of ``statement'' by the
terms ``information disclosure.''
Section 1.97(e)(2) is further amended to replace ``or'' by ``and''
to require that no item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application, and, to the knowledge of
the person signing the statement, after making reasonable inquiry, no
item of information contained in the information disclosure was known
to any individual designated in Sec. 1.56(c) more than three months
prior to the filing of the information disclosure statement. The use of
``and'' rather than ``or'' is in keeping with the intent of the rule as
expressed in the MPEP 609(B)(2)(ii), that the conjunction be
conjunctive rather than disjunctive. The mere absence of an item of
information from a foreign patent office communication was clearly not
intended to represent an opportunity to delay the submission of the
item when known more than three months prior to the filing of an
information disclosure statement to an individual having a duty of
disclosure under Sec. 1.56.
No comments were received regarding the proposed change to
Sec. 1.97.
Section 1.101
Section 1.101 is removed and reserved as relating to internal
Office instructions.
Comment 43: A number of comments opposed the deletion of the rules
that solely govern Office procedure. The reasons given for this
opposition are: (1) The Office should subject its procedures to the
notice and comment provisions of the Administrative Procedure Act
(APA); (2) the inclusion of such procedures in the rules of practice
imparts the force and effect of law to such procedures; (3) the greater
deference given to procedures set forth in the rules of practice,
rather than the MPEP, during court action.
Response: The CCPA has held that applicants before the Office are
entitled to rely not only on the patent statute and rules of practice,
but on the provisions of the MPEP, during the prosecution of an
application for patent. See In re Kaghan, 387 F.2d 398, 401, 156 USPQ
130, 132 (CCPA 1967). Thus, there is in practice little, if any,
benefit to applicants before the Office in having the Office procedure
set forth in the rules of practice, rather than the MPEP. In any event,
no comment pointed to any specific decision, and the Office is not
aware of any decision, in which the result turned on the inclusion of
Office procedure in the rules of practice (rather than simply in the
MPEP).
Nevertheless, in view of the concern expressed in the comments as
to the rules of practice setting forth the fundamentals of the
examination of an application, the Office will retain the substance of
Secs. 1.104 and 1.105 in the rules of practice. See In re Phillips, 608
F.2d 879, 883 n.6, 203 USPQ 971, 974 n.6 (CCPA 1979) (although
irrelevant to the result, the Office was criticized for piecemeal
examination contrary to Secs. 1.104 and 1.105). The substance of
Secs. 1.104, 1.105, 1.106, 1.107, and 1.109, however, will be combined
into Sec. 1.104 paragraphs (a)-(e).
The Office will also retain Sec. 1.351 in the rules of practice, as
it has been relied upon as the notice that the Office will provide
concerning changes to the rules of practice in 37 CFR Part 1. See In re
Nielson, 816 F.2d 1567, 1571, 2 USPQ2d 1525, 1527 (Fed. Cir. 1987).
Finally, the Office will retain Sec. 1.181 paragraphs (d), (e), and (g)
to avoid confusing petition practice, and Sec. 1.325 to avoid confusion
as to the requirements for correction of a patent.
The Office, however, will delete Secs. 1.101, 1.108, 1.122, 1.184,
1.318, and 1.352 from 37 CFR Part 1. The procedures set forth in
Secs. 1.101, 1.122, 1.184, and 1.318 do not provide meaningful
safeguards to applicants (e.g., Sec. 1.101 does not ensure or give an
applicant the right to examination of an application within any
reasonably specific time frame). The proscription in Sec. 1.108 is
simply an administrative instruction based upon the fact that, unless
otherwise publicly available, abandoned applications do not constitute
prior art under 35 U.S.C. 102 (and thus 103). Finally, as former
Sec. 1.352 included a ``whenever required by law'' prerequisite, it
provided no independent requirement that the Office publish proposed
rule changes for comment.
Section 1.102
Section 1.102(a) is amended to remove the requirement that the
showing be verified in accordance with the change to Secs. 1.4(d)(2)
and 10.18.
No comments were received regarding the proposed change to
Sec. 1.102.
Section 1.103
Section 1.103(a) is amended by replacement of ``response'' with
``reply'' in accordance with the change to Sec. 1.111.
No comments were received regarding the proposed change to
Sec. 1.103.
Section 1.104
Section 1.104 is amended to include paragraphs (a) through (e)
including the substance of former Secs. 1.104, 1.105, 1.106, 1.107, and
1.109. The re-writing of Secs. 1.104, 1.105, 1.106, 1.107, and 1.109 as
Sec. 1.104 (a) through (e) involves no change in substance.
See comment relating to Sec. 1.101.
[[Page 53151]]
Section 1.105
Section 1.105 is removed and reserved as the subject matter was
transferred to Sec. 1.104(b).
See comment relating to Sec. 1.101.
Section 1.106
Section 1.106 is removed and reserved as the subject matter was
transferred to Sec. 1.104(c).
See comment relating to Sec. 1.101.
Section 1.107
Section 1.107 is removed and reserved as the subject matter was
transferred to Sec. 1.104(d).
See comment relating to Sec. 1.101.
Section 1.108
Section 1.108 is removed and reserved as relating to internal
Office instructions.
See comment relating to Sec. 1.101.
Section 1.109
Section 1.109 is removed and reserved as the subject matter was
transferred to Sec. 1.104(e).
See comment relating to Sec. 1.101.
Section 1.111
Section 1.111 is amended to consistently refer to a ``reply'' to an
Office action. The prior section used the term ``response'' and
``reply'' in an inconsistent manner and created some confusion.
Paragraph (b) of Sec. 1.111 is also amended to explicitly recognize
that a reply must be reduced to a writing which must point out the
specific distinctions believed to render the claims, including any
newly presented claims, patentable. It is noted that an examiner's
amendment reducing a telephone interview to writing would comply with
Sec. 1.2.
Comment 44: One comment asked whether pointing out one distinction
is sufficient or must applicant provide an exhaustive list of all
distinctions. Additionally, inquiry is made as to whether it is
sufficient to point out the impropriety of a rejection under 35 U.S.C.
102 that should have been a rejection under 35 U.S.C. 103, or must a
rejection under 35 U.S.C. 103 be anticipated and answered.
Response: A distinction should be kept in mind between what is
necessary for a reply to be considered sufficient to continue
prosecution of the application and what will advance the application to
issuance in the most efficient manner. While pointing out only one
distinction, such as why a rejection under 35 U.S.C. 102 is
inappropriate, would comply with the requirements of Sec. 1.111,
advancement of the prosecution of the application would best be served
by pointing out all possible distinctions, so that if the argument for
one distinction is not persuasive, another may be. Similarly,
anticipation of and argument against a rejection under 35 U.S.C. 103
where a rejection under 35 U.S.C. 102 should have been made under 35
U.S.C. 103 could possibly prevent making of the rejection under 35
U.S.C. 103 by the examiner and an earlier issuance of the application
thereby preserving patent term under 35 U.S.C. 154 as amended by Pub.
L. 103-465.
Comment 45: Three comments pointed to instances where a reply would
not necessarily require that distinctions be pointed out, such as: (1)
where context and arguments presented make the distinctions clear
beyond doubt; (2) where a prima facie case has not been established or
motivation for modification of a reference is lacking; (3) a secondary
reference is from a nonanalogous art improperly combined; or (4) no
reference has been applied.
Response: The comment has been adopted to the extent that the
paragraph (b) of the rule has been amended to refer to ``any'' rather
than ``the'' applied references. Any argument that would make the
distinctions clear beyond doubt would seem to require identification of
the distinctions therein. Where a reply contains an argument that
motivation for a modification of a reference made by an examiner does
not exist, or that a nonanalogous secondary reference has been
improperly combined, the identification of the claim element involved
and the particular factual basis that makes the modification or
combination relating to that claim element inappropriate are necessary
elements of a reply. That an applicant considers a rejection,
objection, or other requirement in an Office action to be inappropriate
does not relieve the applicant of the burden under 35 U.S.C. 133 of
prosecuting the application to avoid abandonment.
Comment 46: A comment suggested that the requirement for supplying
claim distinctions for a newly presented claim is at odds with the
Office's burden in the first instance of explaining any objection or
rejection of an applicant's claim, and that the existing requirement
that an applicant distinctly and specifically point out the errors in
the examiner's action and reply to every ground of objection and
rejection are sufficient without the added language. Another comment
noted that it is believed that the rule already requires that specific
distinctions be supplied and questions what new requirements are being
added by that additional language.
Response: To the extent that the already existing language would
require that claim distinctions be presented, the added language is
seen to clarify what is required of an applicant in replying to an
Office action and is not seen to be at odds with the Office's burden in
first going forward with a rejection of the claims. Once a claim is
rejected, there is a duty on applicants under Sec. 1.111 to provide an
appropriate reply as defined therein for applicant to be entitled to
reconsideration or further examination.
Section 1.112
Section 1.112 is amended to remove as unnecessary the statement
that ``any amendments after a second Office action must ordinarily be
restricted to the rejection, objections or requirements made in the
office action'' to reflect actual practice, in which amendments after
the second action need not be restricted to the rejection or the
objections or requirements set forth in an Office action. The heading
of Sec. 1.112 is also amended to add ``before final action'' to clarify
that such reconsideration does not apply after a final Office action.
No comments were received regarding the proposed change to
Sec. 1.112.
Section 1.113
Section 1.113(a) is amended to add ``by the examiner'' after
``examination or consideration,'' change ``objections to form'' to
``objections as to form'' for clarity, and replace ``response'' with
``reply'' in accordance with the change to Sec. 1.111.
Section 1.113(b) is amended to change ``clearly stating the reasons
therefor'' to ``clearly stating the reasons in support thereof'' for
clarity.
Comment 47: A number of comments argued that first action final
practice should be eliminated without regard to an amendment to
Sec. 1.116 as: (1) 35 U.S.C. 132 does not authorize first action final
practice; and (2) the filing fee paid in a continuing application
should entitle an applicant to an examination and reexamination in the
continuing application.
Response: The argument that 35 U.S.C. 132 does not authorize first
action final practice has been considered by the Office and rejected in
In re Bogese, 22 USPQ2d 1821 (Comm'r Pat. 1992). Specifically,
continuing applications have historically been considered part of a
continuous proceeding in regard to the prior application. Id. at 1827.
First action final practice denies an applicant the delay inherent in
an additional Office action in a continuation application, thus
compelling the applicant to draft
[[Page 53152]]
claims in a continuation application in view of the prosecution history
of the parent application (i.e., the rejections and prior art of record
in the parent application), and thus make a bona fide effort to define
the issues for appeal or allowance. Id. at 1824-25.
In addition, under the current patent fee structure, a significant
portion of the Office's costs of examining patent applications is
recovered through issue and maintenance fees. That is, the filing fees
required by 35 U.S.C. 41(a) (1)-(4) and Sec. 1.16 for an application do
not cover the Office's full costs of examining that application
pursuant to 35 U.S.C. 131 and 132. Therefore, the argument that first
action final practice is inherently unfair in view of the filing fees
paid by the applicant fails to appreciate the current patent fee
structure.
Due to the overwhelming opposition to the proposed changes to
Sec. 1.116 to simplify after final practice, the proposed change to
Sec. 1.113 to eliminate first action final practice and the proposed
changes to Sec. 1.116 to simplify after final practice are not adopted
in this Final Rule. The Office will give further consideration to the
elimination of first action final practice.
Comment 48: One comment suggested that Sec. 1.113 should be
clarified to reflect the intent of the rule change that a first action
final rejection not issue in a continuation application.
Response: The proposed change to Sec. 1.113 to prohibit a first
action final rejection is not being adopted.
Section 1.115
Section 1.115 has been removed and reserved, rather than amended to
contain the material of former Secs. 1.117 through 1.118, 1.123 and
1.124. The subject matter proposed to be included in Sec. 1.115 has
been transferred to Sec. 1.121. The change does not constitute a change
in substance; the material of the deleted sections has simply been
rearranged and edited for clarity and contextual purposes in
Sec. 1.121. The reference in Sec. 1.115(b)(2) relating to the rejection
of claims containing new matter has not been retained in Sec. 1.121 as
unnecessary.
Comment 49: One comment recognizing that the subject matter of
Sec. 1.118 is transferred to Sec. 1.115 (now Sec. 1.121) noted that the
particular material of the second and third sentences of paragraph (a)
of Sec. 1.118(a) was not so transferred and should be.
Response: While the exact language of the second and third
sentences of paragraph (a) of Sec. 1.118 was not transferred to 1.121
(Sec. 1.115 as originally proposed), the concept is retained in
Sec. 1.121, paragraphs (a)(6), (b)(5), and (c)(1), in condensed form.
Comment 50: One comment objected to the requirement of paragraph
(d) of Sec. 1.115 (now Sec. 1.121) where a disclosure must be amended
to secure correspondence between the claims, the specification and the
drawings. Forcing the specification to parrot the language of new
claims, where only new claims originally use a term not found in the
original disclosure and in the original claims, is said to impose an
undue burden on applicant and jeopardize the validity of all the claims
if the new term is found to be new matter.
Response: The comment does not explain why a specification
containing a later added expression subsequently found to contain new
matter will adversely affect claims that do not contain that
expression, particularly if a portion of the specification is retained
that provides support for claims not containing that expression.
Additionally, the requirement being criticized is not a new requirement
but was material transferred from Sec. 1.117. However, the comment was
adopted in-part in that Sec. 1.121, paragraphs (a)(5) and (b)(4),
require only ``substantial correspondence'' between the claims, the
remainder of the specification, and the drawings.
Comment 51: One comment suggested that the term ``sketch'' in
paragraph (e) of Sec. 1.115 (now Sec. 1.121) be broadened to
``drawing.''
Response: Sections 1.121(a)(3)(ii) and 1.121(b)(3)(ii) recite
sketch, which has been interpreted by the Office to include a copy. The
use of sketch is seen to be the broader term in allowing a handwritten
alteration of a copy of the previously submitted drawing to be done
without the need for a color copy being obtained.
Comment 52: One comment suggested that paragraph (f) of Sec. 1.115
(now Sec. 1.121), requiring no interlineations to appear in a clause as
finally presented, is inconsistent with the requirements of Sec. 1.121
requiring brackets and underlining of the subject matter deleted and
added.
Response: The comment was adopted by clarifying Sec. 1.121(a)(iii)
as adopted by reciting that the interlineation prohibition relates to
previous amendments being depicted in a subsequent amendment, and to
limit its applicability to applications other than reissue applications
(thereby also excluding reexamination proceedings) in that all changes
from the patent are required to be shown in reissue applications and
reexamination proceedings.
Section 1.116
Section 1.116 is amended by adding the phrase ``or appeal'' to its
heading. This change clarifies the current practice that paragraphs (b)
and (c) apply to amendments filed after an appeal, regardless of
whether the application was subject to a final rejection prior to the
appeal.
Section 1.116(a) is also amended for clarity to limit amendments
after a final rejection or other final action (Sec. 1.113) to those
amendments cancelling claims or complying with any requirement of form
set forth in a previous Office action, and replaces the phrase ``any
proceedings relative thereto'' with ``any related proceedings'' for
clarity. The amendment does not represent a change in practice under
Sec. 1.116(a) as was originally proposed, but merely a clarification of
when an applicant is entitled to entry of an amendment under
Sec. 1.116(a).
Comment 53: Almost every comment relating to the proposed change to
Sec. 1.116 to limit entry of amendments after a final Office action
based on simplification of issues for appeal opposed the change. The
various rationales included: (1) A liberal practice by examiners in
entering amendments after final rejection based on a willingness to
engage in significant negotiations after final rejection; (2) an
increased burden on the Board of Patent Appeals and Interferences
(Board); (3) a loss of potential patent term under 35 U.S.C. 154 if
refiling an application was routinely required; (4) a loss of clarity
by applicant and the examiner of the issues involved, in that it is
frequently only after the second action that the issues become
clarified, particularly as counsel are not aware of the art that may
actually be applied against the claims and therefore do not submit
claims that can read over such art; (5) to the extent the need to enter
amendments causes refiling of an application, greater resources from
the Office are required as opposed to simply entering the amendment in
the prior application; (6) there will be an increase in the requests
for interviews after first action; (7) the change represents
encouragement for examiners to cut down on papers entered particularly
in view of the crediting system; and (8) the proposal is not helpful to
applicant and is only a revenue generator.
Several alternative suggestions were made including: (1) A fee to
have amendments after final entered as a matter of right; (2)
discretion for examiners to enter any amendment should be explicitly
stated in the rule; (3) consider substantive amendments if
[[Page 53153]]
submitted at least one month in advance of the end of the reply period;
(4) eliminate applicant's concern for expedited handling of Sec. 1.116
amendments by having a new period for appealing or refiling; (5) entry
of amendment to solely correct rejections under 35 U.S.C. 112, para. 2,
should be permitted; (6) first after final submission permitted entry
under simplification of issues standard and any subsequent submission
would only be permitted under standard as proposed without
simplification of issues available; (7) merging of a dependent claim
into an independent claim ought to be explicitly permitted as a matter
of right; (8) provide a standard of entry dependent upon good and
sufficient reason as to why the amendment after final was not made
earlier; (9) permit consideration of the amendment for allowable
subject matter to save applicant cost of refiling for such
determination; and (10) change should be linked with a prohibition on
applying a new reference in a final rejection.
Response: In view of the issues raised and the alternative
suggestions presented, it has been determined that further study is
required. The comments have been adopted solely to the extent that the
proposed change to delete simplification of issues for purpose of
appeal, as a basis for entry of an amendment after final rejection,
will not be implemented at this time.
Section 1.117
Section 1.117 is removed and reserved as the subject matter was
transferred to Sec. 1.121.
No comments were received regarding the proposed change to
Sec. 1.117.
Section 1.118
Section 1.118 is removed and reserved and its subject matter
transferred to Sec. 1.121.
See first comment related to Sec. 1.115.
Section 1.119
Section 1.119 is removed and reserved as duplicative of the
provisions of Secs. 1.111 and 1.121.
No comments were received regarding the proposed change to
Sec. 1.119.
Section 1.121
Section 1.121, paragraphs (a) through (f), are replaced with
paragraphs (a) through (c), which separately treat amendments in non-
reissue nonprovisional applications (paragraph (a)), amendments in
reissue applications (paragraph (b)), and amendments in reexamination
proceedings (paragraph (c)). The intent of the changes is to retain
amendment practice in regard to non-reissue applications prior to the
changes proposed in the Notice of Proposed Rulemaking and to make final
the changes in amendment practice in regard to reissue applications
proposed in the Notice of Proposed Rulemaking, except for requiring
copies of all claims as of the date of submission of an amendment and a
constructive cancellation in their absence. Additionally, while
retaining the previous amendment practice in non-reissue applications,
the regulations have been clarified by deletion of Secs. 1.115, 1.117
through 1.118, 1.123, and 1.124 and placement of subject matter thereof
in Sec. 1.121.
Comment 54: Most comments received on the proposed change in
amendment practice as it relates to non-reissue applications to bring
it into line with reissue and reexamination amendment practices were
very negative. In particular, the proposed changes to present a
complete copy of the claims when any amendment to the claims is made,
and to hold a constructive cancellation for any claim copy not
presented were alarming. However, similar comments were not received in
regard to the proposed changes to bring reissue and reexamination
practice closer together.
Response: The comments were adopted in that the proposed changes,
other than clarifications of current practice, will not be implemented
now and further study will be undertaken to include suggestions
presented in regard to this rule.
Comment 55: Several comments offered suggestions and requested
clarifications: (1) Whether this was an attempt to push the practice
closer to PCT where substitute pages are used; (2) use of different
markings such as strikeouts of word processors; (3) only require
complete copy of claims at issue; (4) only have a status listing of all
claims not complete copy with each response; (5) continuations or
divisions should be filed showing markups; (6) require only that new
claims pages be substituted; (7) objection to the submission of a
separate complete set of claims in addition to the amendments being
made; (8) some instances separate set may be appropriate and not too
much of a burden; and (9) there should be exception, liberal
reinstatement, or rebuttable presumption for constructive cancellation
if clerical omission.
Response: Paragraphs (a) and (b) of Sec. 1.121 each separately
treat amendment of the specification (paragraphs (a)(1) and (b)(1)),
and of the claims (paragraphs (a)(2) and (b)(2)). In comparing
amendment practice to the specification for non-reissue and reissue
applications, all amendments in the reissue application are to be made
relative to (i.e., vis-a-vis) the specification (including the claims)
and drawings of the original patent as of the date of the filing of the
reissue application. Changes are shown using underlining and bracketing
relative to the patent specification. In addition, the entire paragraph
of disclosure with the changes and the entire claim with the changes
must be presented, in making the amendment. On the other hand,
amendments in a non-reissue application are to be made relative to
prior amendments (with underlining and bracketing in a reproduced claim
reflecting changes made relative to the prior amendment), and
insertions and deletions can be made without reproducing the entire
paragraph of disclosure or the entire claim. Further (for a non-reissue
application), in amending the text of the disclosure other than the
claims, changes are not shown by underlining and bracketing, even where
a paragraph of disclosure is reproduced.
Paragraph (a) of Sec. 1.121 relates to amendments in non-
provisional applications, other than reissue applications, and retains
a reference to Sec. 1.52. Paragraph (a)(1) relates to the manner of
making amendments in the specification, other than in the claims.
Paragraph (a)(1)(i) requires the precise point in the specification to
be indicated where an addition is to be inserted. Paragraph (a)(1)(ii)
requires the precise point in the specification to be indicated where a
deletion is to be made. This should be compared to addition or
cancellation of material from the patent specification in a reissue
application (paragraph (b)(1)(ii)) or in a reexamination proceeding
(Sec. 1.530(d)(1)(ii), e.g., by way of a copy of the rewritten
material). An amendment containing deletions mixed with additions will
be treated according to both paragraphs (a)(1)(i) and (a)(1)(ii).
Amendments to the specification, additions or deletions, do not require
markings, only identification of an insertion point. However, where the
changes made are not readily apparent the applicant may be requested by
the examiner to provide an explanation of the changes or a marked up
copy showing the changes made. Paragraph (a)(1)(iii) provides that to
reinstate matter previously deleted it must be reinstated by a new
amendment inserting the matter.
Paragraph (a)(2) of Sec. 1.121 relates to the manner of making
amendments in the claims of a non-reissue application.
[[Page 53154]]
Paragraph (a)(2)(i) permits amendment by instructions to the Office
for a deletion, paragraph (a)(2)(i)(A), or for an addition limited to
five words in any one claim, paragraph (a)(2)(i)(B). The ability to
provide directions to the Office for the handwritten deletion of five
words or less for each claim does not encompass deletion of equations,
charts or other non-word material. Paragraph (a)(2)(ii) sets forth that
a claim may be amended by a direction to cancel the claim, or by
rewriting the claim with markings showing material to be added and
deleted. Additionally, previously rewritten claims are required to be
so marked and not to have interlineations showing amendment(s) previous
to the one currently being submitted.
Paragraph (a)(3) of Sec. 1.121 clarifies that amendments to the
original application drawings for non-reissue applications are not
permitted and are to be made by way of a substitute sheet for each
original drawing sheet that is to be amended. The paragraph contains
material from cancelled Sec. 1.115.
Paragraph (a)(4) of Sec. 1.121 requires that any amendment
presented in a substitute specification must be presented under the
provision of this section either prior to or concurrent with the
submission of the substitute specification. The paragraph contains
material from cancelled Sec. 1.115.
Paragraph (a)(5) of Sec. 1.121 requires amendment of the disclosure
in certain situations (i.e., to correct inaccuracies of description and
definition) and to secure substantial correspondence. The paragraph
contains material from cancelled Sec. 1.117. The previous requirement
for ``correspondence'' has been modified by use of ``substantial
correspondence.'' See comments to Sec. 1.115.
Paragraph (a)(6) prohibits the introduction of new matter into the
disclosure of a non-reissue, non-provisional application.
Paragraph (b) of Sec. 1.121 applies to amendments in reissue
applications. Paragraph (b)(1) of Sec. 1.121 relates to the manner of
making amendments to the specification, other than in the claims, in
reissue applications. Paragraph (b)(1)(i) requires that amendments
including deletions be made by submission of a copy of one or more
newly added or rewritten paragraphs with markings, except that an
entire paragraph may be deleted by a statement deleting the paragraph
without presentation of the text of the paragraph. Paragraph (b)(1)(ii)
requires indication of the precise point in the specification where the
paragraph which is being amended is located. When a change in one
sentence, paragraph or page results in only format changes to other
pages (e.g., shifting of non-amended text to subsequent pages) not
otherwise being amended, such format changes are not to be submitted.
Compare to amendments to the specification, other than in the claims,
of non-reissue applications wherein deletions are permitted, paragraph
(a)(1)(ii) of this section. Paragraph (b)(1)(iii) defines the marking
set forth in paragraph (b)(1)(ii) of this section. Proposed paragraph
(b)(1)(iii), relating to a requirement for submission of all amendments
be presented when any amendment to the specification is made, was not
implemented.
Paragraph (b)(2) of Sec. 1.121 relates to the manner of making
amendments to the claims in reissue applications. Paragraph
(b)(2)(i)(A) of Sec. 1.121 requires the entire text of each patent
claim that is being amended by the current amendment and of each claim
being added by the current amendment. Requests that the Office hand-
enter changes of five or less words, former Sec. 1.121(c)(2), will no
longer be permitted. Pending claims, whether previously amended or not,
that are not being amended by the current amendment are not to be
resubmitted. This procedure is different from Sec. 1.121(a)(2)(i)(B),
which permits requests that the Office hand-enter changes of five or
less words in a non-reissue application. Additionally, provision is
made for the cancellation of a patent claim by a direction to cancel
without the need for marking by brackets. Paragraph (b)(2)(i)(B)
requires that patent claims not be renumbered. Paragraph (b)(2)(i)(C)
identifies the type of marking required by paragraph (b)(2)(i)(A),
single underlining for added material and single brackets for material
deleted.
Paragraph (b)(2)(ii) of Sec. 1.121 requires that each amendment
submission set forth the status (i.e., pending or cancelled) of all
patent claims and all added claims as of the date of the submission, as
not all claims (non-amended claims) are to be presented with each
submission, paragraph (b)(2)(iv). The absence of submission of the
claim status would result in an incomplete reply (Sec. 1.135(c)).
Paragraph (b)(2)(iii) of Sec. 1.121 requires that each claim
amendment be accompanied by an explanation of the support in the
disclosure of the patent for the amendment. The absence of an
explanation would result in an incomplete reply (Sec. 1.135(c)).
Comment 56: One comment requested that the Office clarify how an
applicant would satisfy this requirement when the amendment involves a
simple editorial change, or when the amendment uses terms that find no
explicit support in the patent.
Response: When it is clear that the amendment simply involves an
editorial change and does not add material for which support in the
disclosure is required, the reply may simply explain that the amendment
is merely making an editorial change. When the amendment uses terms
that find no explicit support in the specification, the reply must set
forth where the specification provides, at least implicitly, support
for the amendment as required by 35 U.S.C. 112, para. 1. In addition,
an amendment to the specification to secure correspondence between the
specification and the claims will also be required. See Sec. 1.75(d)(1)
and MPEP 608.01(o). Obviously, an amendment that does not find either
explicit or at least implicit support in the specification as required
by 35 U.S.C. 112, para. 1, is not permitted. See 35 U.S.C. 251, para.
1, (last sentence).
Proposed paragraphs (b)(2) (iv) and (v) of this section, relating
to a requirement for presentation of all amendments as of the date any
amendment to the claims is made, and to the treatment of the failure to
submit a copy of any added claim as a direction to cancel that claim,
were not implemented.
Paragraph (b)(3) of Sec. 1.121 clarifies that amendments to the
patent drawings are not permitted and that any change must be by way of
a new sheet of drawings with the amended figures being identified as
``amended'' and with added figures identified as ``new'' for each sheet
that has changed. The paragraph contains material from cancelled
Sec. 1.115.
Paragraph (b)(4) of Sec. 1.121, added in view of the deletion of
Sec. 1.115 paragraph (d), requires amendment of the disclosure in
certain situations (i.e., to correct inaccuracies of description and
definition) and to secure substantial correspondence between the
claims, the remainder of the specification, and the drawings. The
previous requirement for ``correspondence'' has been modified by use of
``substantial correspondence.'' See comments to Sec. 1.115.
Paragraph (b)(5) of Sec. 1.121, containing material transferred
from proposed paragraph (b)(2)(vi) (now deleted), clarifies that: (1)
No reissue patent will be granted enlarging the scope of the claims
unless applied for within two years from the grant of the original
patent (additional broadening outside the two-year limit is appropriate
as long as some broadening occurred within the two-year period, In re
Doll, 419 F.2d 925, 164 USPQ 218 (CCPA 1970)); and
[[Page 53155]]
(2) no amendment may introduce new matter or be made in an expired
patent.
Paragraph (b)(6) of Sec. 1.121 has been added to clarify that all
amendments must be made relative to (i.e., vis-a-vis) the specification
(including the claims) and drawings of the original patent as of the
date of the filing of the reissue application. If there was a prior
change to the patent (made via a prior reexamination certificate,
reissue of the patent, certificate of correction, etc.), the first
amendment must be made relative to the patent specification as changed
by the prior proceeding or other mechanism for changing the patent. In
addition, all amendments subsequent to the first amendment must be made
relative to the patent specification in effect as of the date of the
filing of the reissue application, and not relative to the prior
amendment.
Paragraph (c) of Sec. 1.121 clarifies that amendments in
reexamination proceedings are to be made in accordance with
Sec. 1.530(d).
Section 1.121 as applied to reissue applications does not provide
for replacement pages whereby a new page would be physically
substituted for a currently existing page.
However, an applicant can direct that a page or pages (``Page(s)
________'') be cancelled and that updated materials be inserted in its
place.
The wide availability of word processing should enable applicants
to more easily submit updated material providing greater accuracy and
thereby eliminating the need for the Office to hand-enter amendments.
To that end, Sec. 1.125 is amended to reflect current practice that a
substitute specification may be submitted in an application, other than
a reissue application, at any point up to payment of the issue fee as a
matter of right, provided that such substitute specification is
submitted in compliance with the requirements set forth in Sec. 1.125.
Section 1.122
Section 1.122 is removed and reserved as representing internal
Office instruction.
See comments related to Sec. 1.101.
Section 1.123
Section 1.123 is removed and reserved and its subject matter
transferred to Sec. 1.121 for better context.
No comments were received regarding the proposed change to
Sec. 1.123.
Section 1.124
Section 1.124 is removed and reserved and its subject matter
transferred to Sec. 1.121 for better context.
No comments were received regarding the proposed change to
Sec. 1.124.
Section 1.125
Section 1.125 is amended by addition of paragraphs (a) through (d).
Section 1.125(a) retains the current practice that a substitute
specification may be required by the examiner and has been clarified to
note that if the legibility of the application papers shall render it
difficult to consider the application, the Office may require a
substitute specification.
Section 1.125 is amended in view of the continued prosecution
application under Sec. 1.53(d), to reflect the current liberalized
practice as set forth in MPEP 608.01(q), and to delete the verification
requirement for the no new matter statement. See comments to
Sec. 1.4(d).
Section 1.125(b) specifically provides for the filing of a
substitute specification, excluding the claims, at any point up to
payment of the issue fee, if it is accompanied by: (1) A statement that
the substitute specification includes no new matter; and (2) a marked-
up copy of the substitute specification showing the matter being added
to and the matter being deleted from the specification of record (i.e.,
the specification to be replaced by the substitute specification).
While Sec. 1.125(b)(2) requires the marked-up copy show the additions
and deletions, it does not require that such additions and deletions be
shown by underlining and bracketing. Rather, it permits the use of
other indicia (e.g., redlining and strikeouts) to show additions and
deletions so that the document-compare feature of conventional word-
processing programs can be used to produce the marked-up substitute
specification.
Section 1.125(b), as proposed, would have required that a
substitute specification contain only changes that were previously or
concurrently submitted by an amendment under Sec. 1.121. The Office,
however, is not adopting this proposal. Creating a copy of the
substitute specification showing the additions and deletions is
relatively easy using the document-compare feature of a conventional
word-processing program, when compared to the burden of preparing an
amendment under Sec. 1.121(a)(1) showing numerous changes to a
specification. Thus, the Office is adopting the requirement currently
set forth in MPEP 608.01(q) for a marked-up copy of the substitute
specification showing the additions and deletions.
Comment 57: One comment stated that it is not clear exactly what is
to be submitted with the substitute specification under paragraph
(b)(2) of this section even though paragraph (c) requires it to be in
clean form without markings.
Response: Section 1.125 requires an applicant filing a substitute
specification to submit: (1) the substitute specification in clean form
without markings (Sec. 1.125(c)); (2) a marked-up copy showing the
additions and deletions relative to the specification it is replacing
(Sec. 1.125(b)(2)); and (3) a statement that the substitute
specification includes no new matter (Sec. 1.125(b)(1)).
Section 1.125(c) is amended to clarify that a substitute
specification is to be submitted without markings as to amended
material.
Section 1.125(d) does not permit a substitute specification in
reissue or reexamination proceedings as markings for changes from the
patent are required therein.
Section 1.126
Section 1.126 is amended to delete the phrase ``, except when
presented in accordance with Sec. 1.121(b)'' for consistency with the
change to Sec. 1.121.
No comments were received regarding Sec. 1.126.
Section 1.133
Section 1.133(b) is amended by replacement of ``response'' with
``reply'' in accordance with the change to Sec. 1.111.
No comments were received regarding the proposed change to
Sec. 1.133.
Section 1.134
Section 1.134 is amended by replacement of ``response'' with
``reply'' in accordance with the change to Sec. 1.111.
No comments were received regarding the proposed change to
Sec. 1.134.
Section 1.135
Section 1.135 paragraphs (a) and (c) are amended by replacement of
``response'' with ``reply'' in accordance with the change to
Sec. 1.111. Section 1.135(b) is amended to clarify that the admission
of or refusal to admit any amendment after final rejection, and not
just an amendment not responsive to the last Office action, shall not
operate to save the application from abandonment.
Section 1.135(c) is amended to provide that a new ``time period''
under Sec. 1.134 may be given if a reply to a non-final Office action
is substantially complete but consideration of some matter or
compliance with some requirement has been inadvertently omitted. This
replaces the practice in which an applicant may be given an
[[Page 53156]]
opportunity to supply the omission through the setting of a ``time
limit'' of one month that is not extendable. Under Sec. 1.135(c) as
adopted, a one-month shortened statutory time period will generally be
set enabling an applicant to petition for extensions of time under
Sec. 1.136(a). Where 35 U.S.C. 133 requires a period longer than one
month (i.e., actions mailed in the month of February), a shortened
statutory period of 30 days will be set.
The setting of a time period for reply under Sec. 1.134 (rather
than a time limit) results in the date of abandonment (when no further
reply is filed) being the expiration of the new time period rather than
the date of expiration of the period of reply set in the original
Office action for which an incomplete reply was filed. Thus, the
amendment to Sec. 1.135(c) permits the filing of a continuing
application as an alternative to completing the reply, whereas the
previous practice required an applicant to complete the reply that was
held to be incomplete or else the application was held to be abandoned
(retroactively) as of the expiration of the original period for reply.
Thus, applicants had to file an unnecessary reply to preserve pendency
where their only intent was to file a continuing application. Section
1.135(c), as amended, sets forth a new period within which a continuing
application can be filed, without the applicant having to supply the
omission in the prior application to preserve pendency. In addition,
applicant may file any other reply as may be appropriate under
Sec. 1.111, regardless of whether a continuing application is filed.
Comment 58: Two comments objected to the change on the basis that
it is subject to intentional misuse. It is argued that it encourages an
applicant to send in piecemeal replies and permits use of the time
period as a subterfuge for extending prosecution as Sec. 1.135(c) does
not specify how many times an incomplete reply can be given.
Response: 35 U.S.C. 154 as amended by Pub. L. 103-465 should
provide the necessary incentive for applicants to prosecute an
application without undue delay. Additionally, the examiner can
determine that the failure to provide a complete reply was not
``inadvertent'' (especially where an applicant was previously notified
of the deficiencies in the reply), and not set a period under
Sec. 1.135(c).
Comment 59: One comment suggested amending Sec. 1.135(c) from
``may'' to ``shall'' so that an examiner must provide an opportunity to
an applicant to complete a reply, and that Sec. 1.135(c) should not be
limited to replies to non-final Office actions so that if an
application is in condition for allowance except for an inadvertent
omission it would be beneficial for all parties to provide the same
benefit as for non-final actions.
Response: The term ``may'' is used rather than ``shall'' to
encourage applicants to provide a complete reply, in that an applicant
providing an incomplete reply cannot be certain of being provided with
an additional time period to prosecute the application.
Section 1.113(a) provides that the only reply to a final Office
action effective to avoid abandonment of an application is: (1) an
amendment under Sec. 1.116 that prima facie places the application in
condition for allowance; or (2) a notice of appeal (and appeal fee)
under Sec. 1.191. Thus, the only reply under Sec. 1.113(a) that will
ensure that abandonment of the application will be avoided is: (1) an
amendment under Sec. 1.116 that cancels all of the rejected claims; or
(2) a notice of appeal (and appeal fee) under Sec. 1.191
(Sec. 1.113(a)). That is, an applicant filing a proposed amendment
under Sec. 1.116 or arguments in reply to a final Office action has no
assurance that such reply will necessarily result in allowance of the
application. Given the limited nature of the replies under Sec. 1.113
to a final Office action, it is not appropriate to provide a time
period under Sec. 1.135(c) to complete a reply to a final Office
action.
Section 1.135(c) is also amended to remove an unnecessary reference
to consideration of the question of abandonment and to clarify that the
reply for which applicant may be given a new time period to reply to
must be a ``non-final'' Office action.
Section 1.136
Section 1.136(a)(1) is amended to recite the availability of a
maximum of five rather than four months as an extension of time,
subject to any maximum period for reply set by statute. For example,
when a one-month or 30-day period is set for reply to a restriction
requirement or for completing a reply under Sec. 1.135(c), that period
may be extended up to the six-month statutory (35 U.S.C. 133) maximum.
In addition, as the two-month period set in Sec. 1.192(a) for filing an
appeal brief is not subject to the six-month maximum period specified
in 35 U.S.C. 133, the period for filing an appeal brief may be extended
up to seven months.
Comment 60: At least one comment noted that there is no statutory
authority under 35 U.S.C. 41(a)(8)(C) for the $2,010 amount set for the
fifth month extension of time.
Response: See the response to comment 5.
Section 1.136(a)(1) is also amended by replacement of ``respond''
with ``reply'' in accordance with the change to Sec. 1.111 and for
clarification.
Section 1.136(a)(2) is amended by replacement of ``respond'' with
``reply'' in accordance with the change to Sec. 1.111 and other
clarification changes.
Comment 61: One comment questioned whether the addition in
paragraph (a)(2) of Sec. 1.136 that requires a reply to be filed prior
to the expiration of the period of extension to avoid abandonment of
the application will affect the timely filing of a reply under
Secs. 1.8 or 1.10 where the mail date rather than the receipt date is
the end of the period for reply.
Response: The referred to addition has been noted to be a
clarification and not a change in practice. The added language does not
change current practice under Secs. 1.8 and 1.10.
Section 1.136 is amended by addition of paragraph (a)(3) that
provides for the filing in an application a general authorization to
treat any reply requiring a petition for an extension of time for its
timely submission as containing a request therefor for the appropriate
length of time. The authorization may be filed at any time prior to or
with the submission of a reply that would require an extension of time
for its timely submission, including submission with the application
papers. Previously, the mere presence of a general authorization,
submitted prior to or with a reply requiring an extension of time, to
charge all required fees does not amount to a petition for an extension
of time for that reply (MPEP 201.06 and 714.17) and under the proposed
amended rule the submission of a reply requiring an extension of time
for its timely submission would not be treated as an inherent petition
for an extension of time absent an authorization for all necessary
extensions of time. The Office will continue to treat all petitions for
an extension of time as requesting the appropriate extension period
notwithstanding an inadvertent reference to a shorter period for
extension and will liberally interpret comparable papers as petitions
for an extension of time. Applicants are advised to file general
authorizations for payment of fees and petitions for extensions of time
as separate papers rather than as sentences buried in papers directed
to other matters (such as an application transmittal letter). The use
of individual papers directed only
[[Page 53157]]
to an extension of time or to a general authorization for payment of
fees would permit the Office to more readily identify the presence of
such items and list them individually on the application file jacket,
thus facilitating future identification of these authorizations.
Comment 62: Two comments requested that it be clarified whether the
reference to submission of a paper with an authorization is to be
construed as allowing for submission of a standard sentence in a
general reply to an Office action that includes a check box on an
application transmittal form.
Response: The comments have been adopted and the proposed language
of paragraph (a)(3) of Sec. 1.136 modified to replace the reference to
``paper'' with ``written request.''
Section 1.136(a)(3) is additionally amended to provide that general
authorizations to charge fees are effective to meet not only the
requirement for the extension of time fee for replies filed concurrent
or subsequent to the authorization but also represent a constructive
petition for an extension of time, which is a change from current
practice wherein a general authorization to charge additional fees does
not represent a petition for an extension of time, which petition must
be separately requested.
Section 1.136(a)(3) also includes the sentence ``[s]ubmission of
the fee set forth in Sec. 1.17(a) will also be treated as a
constructive petition for an extension of time in any concurrent reply
requiring a petition for an extension of time under this paragraph for
its timely submission.'' This provides for those instances in which an
applicant files a reply with a check (or other means of payment under
Sec. 1.23) for the requisite fee under Sec. 1.17(a) (1) through (5) for
the petition under Sec. 1.136(a) required to render such reply timely,
but omits a request (i.e., a petition) for an extension of time under
Sec. 1.136(a). In such instances, the mere submission of the
appropriate fee will be treated as a constructive petition for the
extension of time to render the reply timely.
Section 1.136(b) is amended for clarity and to replace the phrase
``response'' with the phrase ``reply'' for consistency with Sec. 1.111.
Section 1.137
Section 1.137 is amended to, inter alia, incorporate revival of
abandoned applications and lapsed patents for the failure: (1) to
timely reply to an Office requirement in a provisional application
(Sec. 1.139); (2) to timely pay the issue fee for a design application
(Sec. 1.155); (3) to timely pay the issue fee for a utility or plant
application (Sec. 1.316); or (4) to timely pay any outstanding balance
of the issue fee (Sec. 1.317) (lapsed patents).
Section 1.137(a) is amended to provide: (1) that it is the
paragraph that applies to petitions under the ``unavoidable'' standard;
(2) that ``where the delay in reply was unavoidable, a petition may be
filed to revive an abandoned application or a lapsed patent pursuant to
[Sec. 1.137(a)]''; and (3) the requirements for a grantable petition
pursuant to Sec. 1.137(a) in paragraphs (a)(1) through (a)(4).
Section 1.137(a)(1) (and Sec. 1.137(b)(1)) are amended to provide
that a grantable petition pursuant to Sec. 1.137(a) must be accompanied
by ``[t]he required reply, unless previously filed.'' Section
1.137(a)(1) (and Sec. 1.137(b)(1)) is amended to further provide that
``[i]n a nonprovisional application abandoned for failure to prosecute,
the required reply may be met by the filing of a continuing
application'' and that ``[i]n an application or patent, abandoned or
lapsed for failure to pay the issue fee or any portion thereof, the
required reply must be the payment of the issue fee or any outstanding
balance thereof.''
Under Sec. 1.137(a)(1) (and Sec. 1.137(b)(1)), a continuing
application is a permissive (i.e., ``may be met'') reply in a
nonprovisional application abandoned for failure to prosecute, in that
an applicant in a nonprovisional application abandoned for failure to
prosecute may file a reply under Sec. 1.111 to a non-final Office
action or a reply under Sec. 1.113 (e.g., notice of appeal) to a final
Office action, or may simply file a continuing application as the
required reply. The Office, however, may require a continuing
application (or request for further examination pursuant to
Sec. 1.129(a)) to meet the reply requirement of Sec. 1.137(a)(1) (or
Sec. 1.137(b)(1)) where, under the circumstances of the application,
treating a reply under Secs. 1.111 or 1.113 would place an inordinate
burden on the Office. Exemplary circumstances of when treating a reply
under Secs. 1.111 or 1.113 may place an inordinate burden on the Office
are: (1) an application abandoned for an inordinate period of time; (2)
the application file containing multiple or conflicting replies to the
last Office action; and (3) the submission of a reply or replies under
Sec. 1.137(a)(1) (or Sec. 1.137(b)(1)) that are questionable as to
compliance with Secs. 1.111 or 1.113.
While the revival of applications abandoned for failure to timely
prosecute and for failure to timely pay the issue fee are incorporated
together in Sec. 1.137, the statutory provisions for the revival of an
application abandoned for failure to timely prosecute and for failure
to timely submit the issue fee are mutually exclusive. See Brenner
versus Ebbert, 398 F.2d 762, 157 USPQ 609 (D.C. Cir.), cert. denied 393
U.S. 926, 159 USPQ 799 (1968). 35 U.S.C. 151 authorizes the acceptance
of a delayed payment of the issue fee, if the issue fee ``is submitted
* * * and the delay in payment is shown to have been unavoidable.'' 35
U.S.C. 41(a)(7) likewise authorizes the acceptance of an
``unintentionally delayed payment of the fee for issuing each patent.''
Thus, 35 U.S.C. 41(a)(7) and 151 each require payment of the issue fee
as a condition of reviving an application abandoned or patent lapsed
for failure to pay the issue fee. Therefore, the filing of a continuing
application without payment of the issue fee or any outstanding balance
thereof is not an acceptable proposed reply in an application abandoned
or patent lapsed for failure to pay the issue fee or any portion
thereof.
The Notice of Allowance requires the timely payment of the issue
fee in effect on the date of its mailing to avoid abandonment of the
application. In instances in which there is an increase in the issue
fee by the time of payment of the issue fee required in the Notice of
Allowance, the Office will mail a notice requiring payment of the
balance of the issue fee then in effect. See In re Mills, 12 USPQ2d
1847 (Comm'r Pat. 1989). The phrase ``for failure to pay the issue fee
or any portion thereof'' applies to those instances in which the
applicant fails to pay either the issue fee required in the Notice of
Allowance or the balance of the issue fee required in a subsequent
notice. In such instances, the proposed reply must be the issue fee
then in effect, if no portion of the issue fee was previously
submitted, or any outstanding balance of the issue fee then in effect,
if a portion of the issue fee was previously submitted.
These changes to Sec. 1.137(a)(1) (and Sec. 1.137(b)(1)) are
necessary to incorporate into Sec. 1.137 the revival of abandoned
applications and lapsed patents for the failure to: (1) Timely reply to
an Office requirement in a provisional application (Sec. 1.139), (2)
timely pay the issue fee (Secs. 1.155 and 1.316), or (3) timely pay any
outstanding balance of the issue fee (Sec. 1.317).
Section 1.137(a)(3) is amended to provide that a grantable petition
pursuant to Sec. 1.137(a) must be accompanied by ``[a] showing to the
satisfaction of the Commissioner that the entire delay in filing the
required reply from the due date for the reply until the filing of a
grantable petition pursuant to this paragraph was unavoidable.''
[[Page 53158]]
Section 1.137(a) deletes the requirement that a petition thereunder
be ``promptly filed after the applicant is notified of, or otherwise
becomes aware of, the abandonment.'' The genesis of the ``promptly
filed'' requirement in Sec. 1.137(a) is the legislative history of Pub.
L. 97-247, Sec. 3, 96 Stat. 317 (1982) (which provides for the revival
of an ``unintentionally'' abandoned application), which provides, inter
alia, that:
In order to prevent abuse and injury to the public the
Commissioner could require a terminal disclaimer equivalent to the
period of abandonment and could require applicants to act promptly
after becoming aware of the abandonment.
See H.R. Rep. No. 542, 97th Cong., 2d Sess. 7 (1982), reprinted in
1982 U.S.C.C.A.N. 771 (emphasis added).
Nevertheless, 35 U.S.C. 133 and 151 each require a showing that the
``delay'' was ``unavoidable,'' which requires not only a showing that
the delay which resulted in the abandonment of the application was
unavoidable, but also a showing of unavoidable delay until the filing
of a petition to revive. See In re Application of Takao, 17 USPQ2d 1155
(Comm'r Pat. 1990). The burden of continuing the process of presenting
a grantable petition in a timely manner likewise remains with the
applicant until the applicant is informed that the petition is granted.
Id. Thus, an applicant seeking to revive an ``unavoidably'' abandoned
application must cause a petition under Sec. 1.137(a) to be filed
without delay (i.e., promptly upon becoming notified, or otherwise
becoming aware, of the abandonment of the application).
An applicant who fails to file a petition under Sec. 1.137(a)
``promptly'' upon becoming notified, or otherwise becoming aware, of
the abandonment of the application will not be able to show that ``the
entire delay in filing the required reply from the due date for the
reply until the filing of a grantable petition pursuant to
[Sec. 1.137(a)] was unavoidable.'' The removal of the language in
Sec. 1.137(a) requiring that any petition thereunder be ``promptly
filed after the applicant is notified of, or otherwise becomes aware
of, the abandonment'' should not be viewed as: (1) Permitting an
applicant, upon becoming notified, or otherwise becoming aware, of the
abandonment of the application, to delay the filing of a petition under
Sec. 1.137(a); or (2) changing (or modifying) the result in In re
Application of S, 8 USPQ2d 1630 (Comm'r Pat. 1988), in which a petition
under Sec. 1.137(a) was denied due to the applicant's deliberate
deferral in filing a petition under Sec. 1.137. An applicant who
deliberately chooses to delay the filing of a petition under Sec. 1.137
(as in Application of S) will not be able to show that ``the entire
delay in filing the required reply from the due date for the reply
until the filing of a grantable petition pursuant to [Sec. 1.137(a)]
was unavoidable'' or even make an appropriate statement that ``the
entire delay in filing the required reply from the due date for the
reply until the filing of a grantable petition pursuant to
[Sec. 1.137(b)] was unintentional.''
Therefore, the requirement in Sec. 1.137(a) that a petition
thereunder be ``promptly filed after the applicant is notified of, or
otherwise becomes aware of, the abandonment'' is deleted solely because
it is considered redundant in light of the requirement for a showing
that the entire delay in filing the required reply from the due date
for the reply until the filing of a grantable petition pursuant to
Sec. 1.137(a) was unavoidable.
Section 1.137(a)(3) (and Sec. 1.137(b)(3)) is further amended to
delete the requirement that the showing (statement) must be a verified
showing or statement if made by a person not registered to practice
before the Patent and Trademark Office. Section 1.56 currently provides
that each individual associated with the filing and prosecution of a
patent application has a duty of candor and good faith. Sections 1.4(d)
and 10.18 are amended to provide that a signature on a paper submitted
to the Office constitutes an acknowledgment that willful false
statements are punishable under 18 U.S.C. 1001, and may jeopardize the
validity of the application or any patent issuing thereon. Therefore,
requiring additional verification of a showing or statement under
Sec. 1.137 would be redundant. In addition, this requirement results in
delays in the treatment of the merits of petitions that include
unverified statements.
Section 1.137(a)(4) (and Sec. 1.137(b)(4)) are added to provide
that a grantable petition under Sec. 1.137 must be accompanied by
``[a]ny terminal disclaimer (and fee as set forth in Sec. 1.20(d))
required pursuant to [Sec. 1.137(c)].''
Section 1.137(b) is amended to provide: (1) That it is the
paragraph that applies to petitions under the ``unintentional''
standard; (2) that ``where the delay in reply was unintentional, a
petition may be filed to revive an abandoned application or a lapsed
patent pursuant to [Sec. 1.137(b)]''; and (3) the requirements for a
grantable petition pursuant to Sec. 1.137(b) in paragraphs (b)(1)
through (b)(4).
Section 1.137(b)(1) is amended (as discussed supra) to provide that
a grantable petition under Sec. 1.137(b) must be accompanied by ``[t]he
required reply, unless previously filed.'' Section 1.137(b)(1) is
amended to further provide that ``[i]n a nonprovisional application
abandoned for failure to prosecute, the required reply may be met by
the filing of a continuing application'' and that ``[i]n an application
or patent, abandoned or lapsed for failure to pay the issue fee or any
portion thereof, the required reply must be the payment of the issue
fee or any outstanding balance thereof.''
Section 1.137(b)(3) is amended to provide that a grantable petition
under Sec. 1.137(b) must be accompanied by ``[a] statement that the
entire delay in providing the required reply from the due date for the
reply until the filing of a grantable petition pursuant to this
paragraph was unintentional'' and that ``[t]he Commissioner may require
additional information where there is a question whether the delay was
unintentional.'' While the Office will generally require only the
statement that the entire delay in providing the required reply from
the due date for the reply until the filing of a grantable petition
pursuant to Sec. 1.137(b) was unintentional, the Office may require an
applicant to carry the burden of proof to establish that the delay from
the due date for the reply until the filing of a grantable petition was
unintentional within the meaning of 35 U.S.C. 41(a)(7) and
Sec. 1.137(b) where there is a question whether the entire delay was
unintentional. See In re Application of G, 11 USPQ2d 1378, 1380 (Comm'r
Pat. 1989).
Section 1.137(b)(4) is amended to delete the one-year filing period
requirement. Section 1.137(b)(4) is amended to provide that a grantable
petition under Sec. 1.137 must be accompanied by ``[a]ny terminal
disclaimer (and fee as set forth in Sec. 1.20(d)) required pursuant to
[Sec. 1.137(c)].''
Requirement That the Entire Delay Until the Filing of a Grantable
Petition Was Unavoidable (Sec. 1.137(a)) or Unintentional
(Sec. 1.137(b))
There are three periods to be considered during the evaluation of a
petition under Sec. 1.137: (1) The delay in reply that originally
resulted in the abandonment; (2) the delay in filing an initial
petition pursuant to Sec. 1.137 to revive the application; and (3) the
delay in filing a grantable petition pursuant to Sec. 1.137 to revive
the application.
Where the applicant deliberately permits an application to become
[[Page 53159]]
abandoned (e.g., due to a conclusion that the claims are unpatentable,
that a rejection in an Office action cannot be overcome, or that the
invention lacks sufficient commercial value to justify continued
prosecution), the abandonment of such application is considered to be a
deliberately chosen course of action, and the resulting delay cannot be
considered as ``unintentional'' within the meaning of Sec. 1.137(b).
See Application of G, 11 USPQ2d at 1380. Likewise, where the applicant
deliberately chooses not to seek or persist in seeking the revival of
an abandoned application, or where the applicant deliberately chooses
to delay seeking the revival of an abandoned application, the resulting
delay in seeking revival of the abandoned application cannot be
considered as ``unintentional'' within the meaning of Sec. 1.137(b). An
intentional delay resulting from a deliberate course of action chosen
by the applicant is not affected by: (1) The correctness of the
applicant's (or applicant's representative's) decision to abandon the
application or not to seek or persist in seeking revival of the
application; (2) the correctness or propriety of a rejection, or other
objection, requirement, or decision by the Office; or (3) the discovery
of new information or evidence, or other change in circumstances
subsequent to the abandonment or decision not to seek or persist in
seeking revival. Obviously, delaying the revival of an abandoned
application, by a deliberately chosen course of action, until the
industry or a competitor shows an interest in the invention (a
submarine application) is the antithesis of an ``unavoidable'' or
``unintentional'' delay. An intentional abandonment of an application,
or an intentional delay in seeking either the withdrawal of a holding
of abandonment in or the revival of an abandoned application, precludes
a finding of unavoidable or unintentional delay pursuant to Sec. 1.137.
See In re Maldague, 10 USPQ2d 1477, 1478 (Comm'r Pat. 1988).
The Office does not generally question whether there has been an
intentional or otherwise impermissible delay in filing an initial
petition pursuant to Sec. 1.137 (a) or (b), when such petition is
filed: (1) Within three months of the date the applicant is first
notified that the application is abandoned; and (2) within one year of
the date of abandonment of the application. Thus, an applicant seeking
revival of an abandoned application is advised to file a petition
pursuant to Sec. 1.137 within three months of the first notification
that the application is abandoned to avoid the question of intentional
delay being raised by the Office (or by third parties seeking to
challenge any patent issuing from the application).
Where a petition pursuant to Sec. 1.137 (a) or (b) is not filed
within three months of the date the applicant is first notified that
the application is abandoned, the Office may consider there to be a
question as to whether the delay was unavoidable or even unintentional.
In such instances, the Office may require: (1) A showing as to how the
delay between the date the applicant was first notified that the
application was abandoned and the date a Sec. 1.137(a) petition was
filed was ``unavoidable''; or (2) further information as to the cause
of the delay between the date the applicant was first notified that the
application was abandoned and the date a Sec. 1.137(b) petition was
filed, and how such delay was ``unintentional.'' To avoid delay in the
consideration of a petition under Sec. 1.137 (a) or (b) in instances in
which such petition was not filed within three months of the date the
applicant was first notified that the application was abandoned,
applicants should include a showing as to how the delay between the
date the applicant is first notified by the Office that the application
is abandoned and filing of a petition under Sec. 1.137 was: (1)
``Unavoidable'' in a petition under Sec. 1.137(a); or (2)
``unintentional'' in a petition under Sec. 1.137(b).
Where a petition pursuant to Sec. 1.137 (a) or (b) is not filed
within one year of the date of abandonment of the application (note
that abandonment takes place by operation of law, rather than the
mailing of a Notice of Abandonment), the Office may require: (1)
Further information as to when the applicant (or the applicant's
representative) first became aware of the abandonment of the
application; and (2) a showing as to how the delay in discovering the
abandoned status of the application occurred despite the exercise of
due care or diligence on the part of the applicant (or the applicant's
representative) (see Ex parte Pratt, 1887 Dec. Comm'r Pat. 31 (1887)).
To avoid delay in the consideration of a petition under Sec. 1.137 (a)
or (b) in instances in which such petition was not filed within one
year of the date of abandonment of the application, applicants should
include: (1) The date that the applicant first became aware of the
abandonment of the application; and (2) a showing as to how the delay
in discovering the abandoned status of the application occurred despite
the exercise of due care or diligence on the part of the applicant.
In either instance, applicant's failure to carry the burden of
proof to establish that the ``entire'' delay was ``unavoidable'' or
``unintentional'' may lead to the denial of a petition under
Sec. 1.137(a) or Sec. 1.137(b), regardless of the circumstances that
originally resulted in the abandonment of the application.
Section 1.137(d) specifies a time period within which a renewed
petition pursuant to Sec. 1.137 must be filed to be considered timely.
So long as a renewed petition is timely filed under Sec. 1.137(d)
(including any properly obtained extensions of time), the Office will
consider the delay in filing a renewed petition under Sec. 1.137(a)
``unavoidable'' under Sec. 1.137(a)(3), and will consider the delay in
filing a renewed petition under Sec. 1.137(b) ``unintentional'' under
Sec. 1.137(b)(3). Where an applicant files a renewed petition, request
for reconsideration, or other petition seeking review of a prior
decision on a petition pursuant to Sec. 1.137 outside the time period
specified in Sec. 1.137(d), the Office may require, inter alia, a
specific showing as to how the entire delay was ``unavoidable''
(Sec. 1.137(a)) or ``unintentional'' (Sec. 1.137(b)). As discussed
supra, a delay resulting from the applicant deliberately choosing not
to persist in seeking the revival of an abandoned application cannot be
considered ``unavoidable'' or ``unintentional'' within the meaning of
Sec. 1.137, and the correctness or propriety of the decision on the
prior petition pursuant to Sec. 1.137, the correctness of the
applicant's (or the applicant's representative's) decision not to
persist in seeking revival, the discovery of new information or
evidence, or other change in circumstances subsequent to the
abandonment or decision to not persist in seeking revival are
immaterial to such intentional delay caused by the deliberate course of
action chosen by the applicant.
Retroactive Application of Sec. 1.137(b)
There was no prohibition in former Sec. 1.137(b) against requests
for waiver of its one-year filing period requirement; however, waiver
of the one-year filing period requirement of former Sec. 1.137(b) was
subject to strictly limited conditions (Sec. 1.183). See Final Rule
entitled ``Changes in Procedures for Revival of Patent Applications and
Reinstatement of Patents,'' published in the Federal Register at 58 FR
44277 (August 20, 1993), and in the Official Gazette at 1154 Off. Gaz.
Pat. Office 35 (September 14, 1993). Thus, under the terms of former
Sec. 1.137, an applicant in an application abandoned for more than
[[Page 53160]]
one year could file either a petition under Sec. 1.137(a) to revive the
application on the basis of ``unavoidable'' delay, or a petition under
Secs. 1.183 and 1.137(b) to revive the application on the basis of
``unintentional'' delay. That is, where an application was abandoned
for more than one year, and the delay was ``unintentional'' but not
``unavoidable,'' it was incumbent upon an applicant desiring revival of
the application to promptly file a petition under Secs. 1.183 and
1.137(b) to revive the application.
While Sec. 1.137(b), as amended, is, by its terms, applicable to
applications abandoned prior to its effective date, Sec. 1.137(b)
requires, by its terms, ``[a] statement that the entire delay in
providing the required reply from the due date for the reply until the
filing of a grantable petition pursuant to this paragraph was
unintentional.'' Thus, where an applicant (or the applicant's
representative) previously chose not to seek revival of an application
(e.g., due to the opinion that the former provisions of Sec. 1.137 (a)
or (b) did not permit revival thereunder), the resulting delay in
seeking revival of the application cannot be considered
``unintentional'' within the meaning of Sec. 1.137(b). Likewise, where
an applicant (or the applicant's representative) previously requested
revival of an application, received an adverse decision (e.g., a
dismissal or denial), and chose not to persist in seeking revival of
the application (e.g., by request for reconsideration or review), the
resulting delay in seeking revival of the application likewise cannot
be considered ``unintentional'' within the meaning of Sec. 1.137(b).
The elimination of the one-year filing period requirement in
Sec. 1.137(b) does not create a new right to overcome any prior
intentional delay caused by a deliberate course of action (or inaction)
chosen by the applicant. Thus, any applicant filing a petition under
Sec. 1.137 after the effective date of this Final Rule, but outside the
period set in Sec. 1.137(d) for seeking reconsideration of a prior
adverse decision on a request to revive an application will be
considered to have acquiesced in the abandonment of the application or
lapse of the patent.
Section 1.137(c) is amended to change the introductory phrase
``[i]n all applications filed before June 8, 1995, and in all design
applications filed on or after June 8, 1995'' to ``[i]n a design
application, a utility application filed before June 8, 1995, or a
plant application filed before June 8, 1995'' for clarity. Section
1.137(c) is further amended to change the phrase ``any petition to
revive pursuant to paragraph (a) of this section'' to ``any petition to
revive pursuant to this section,'' and the phrase ``not filed within
six months of the date of abandonment of the applications'' is deleted.
Section 1.137(c) is further amended to change the phrase ``must also
apply to any patent granted on any continuing application entitled
under 35 U.S.C. 120 to the benefit of the filing date of the
application for which revival is sought'' to ``must also apply to any
patent granted on any continuing application that contains a specific
reference under 35 U.S.C. 120, 121, or 365(c) to the application for
which revival is sought,'' since it is the claim for, and not the
entitlement to, the benefit of the filing date of the application for
which revival is sought that triggers the requirement for the filing of
a terminal disclaimer in the continuing application.
Section 1.137(d) is amended to change ``application'' to
``abandoned application or lapsed patent'' to incorporate into
Sec. 1.137 the revival of lapsed patents. In view of the elimination of
a time period from Sec. 1.137(b), the provisions of former
Sec. 1.137(e) are incorporated into Sec. 1.137(d) as ``[u]nless a
decision indicates otherwise, this time period may be extended under
the provisions of Sec. 1.136.''
Section 1.137(e) is amended to expressly provide that a provisional
application, abandoned for failure to timely reply to an Office
requirement, may be revived pursuant to Sec. 1.137(a) or (b) so as to
be pending for a period of no longer than twelve months from its filing
date. In accordance with 35 U.S.C. 111(b)(5), Sec. 1.137(e) clearly
indicates that ``[u]nder no circumstances will a provisional
application be regarded as pending after twelve months from its filing
date.'' Prior Sec. 1.139 (a) and (b) each provided that a provisional
application may be revived so as to be pending for a period of no
longer than twelve months from its filing date, and that under no
circumstances will a provisional application be regarded as pending
after twelve months from its filing date.
Comment 63: The majority of comments opposed amending Sec. 1.137(a)
and (b) to include time limits based upon the mail date of a
notification of abandonment, as well as the retroactive application of
such a change to the rules of practice. While these comments recognized
that any filing period requirement Sec. 1.137 is better based upon the
date of notification, rather than the date of abandonment, they argued
that there will inevitably be instances in which a blameless applicant
will not be able to meet the filing period requirement due to
extenuating circumstances. The majority of comments supported amending
Sec. 1.137 (a) and (b) to remove the filing period requirement, as well
as the retroactive application of such a change to the rules of
practice.
Response: The Office will adopt a Sec. 1.137 that does not include
filing period requirements, and will not limit the retroactive
application of Sec. 1.137(b) as adopted, other than by the terms of the
rule (as discussed supra).
Comment 64: One comment generally supported the change to
Sec. 1.137(b) to remove the filing period requirement, but expressed
concerns as to the routine revival of abandoned applications. The
comment specifically suggested that the Office continue to require a
high showing to justify the revival of an abandoned application,
especially where the petition was filed substantially after abandonment
or applicant's receipt of the notice of abandonment.
Response: The Office does not consider the revival of an abandoned
application to be a ``routine'' matter. The Office will require, inter
alia, a ``showing to the satisfaction of the Commissioner that the
entire delay in filing the required reply from the due date for the
reply until the filing of a grantable petition pursuant to
[Sec. 1.137(a)] was unavoidable'' as a prerequisite to the grant of any
petition based upon unavoidable delay (Sec. 1.137(a)). The Office will
require, inter alia, a ``statement that the entire delay in filing the
required reply from the due date for the reply until the filing of a
grantable petition pursuant to [Sec. 1.137(b)] was unintentional'' by a
registered practitioner or other party in interest having firsthand
knowledge of the circumstances surrounding the delay as a prerequisite
to the grant of any petition based upon unintentional delay
(Sec. 1.137(b)). The Office expects that such statement made by a
registered practitioner not having firsthand knowledge of the
circumstances surrounding the delay be based upon a reasonable
investigation of the circumstances surrounding the abandonment of the
application (Sec. 10.18), and that such statement by any person be
consistent with the duty of candor and good faith and the duty to
disclose material information to the Office (Sec. 1.56).
Regardless of the length of the delay, Sec. 1.137(a) requires that
the entire delay in filing the required reply from the due date for the
reply until the filing of a grantable petition pursuant to
Sec. 1.137(a) was unavoidable. Likewise, regardless of the length of
the delay, Sec. 1.137(b)
[[Page 53161]]
requires that the entire delay in filing the required reply from the
due date for the reply until the filing of a grantable petition
pursuant to Sec. 1.137(b) was unintentional. As ``unintentional'' delay
does not require that the delay have occurred despite the exercise of
due care and diligence (as does ``unavoidable'' delay), the Office does
not routinely require a ``showing'' of unintentional delay for a
petition under Sec. 1.137(b). However, where there may be a question
whether the delay was unintentional, the Office may require a showing
of unintentional delay for a petition under Sec. 1.137(b). Such
question may arise from papers submitted to the Office prior to the
petition under Sec. 1.137(b) (e.g., a letter of express abandonment, or
other communication evidencing a desire to discontinue prosecution) or
from facts set forth in the petition itself. Such question may also
arise simply from the length of the delay between the date the
applicant was notified of the abandoned status of the application and
the date action was taken to revive the abandoned application, or the
length of the period of abandonment. Specifically, where there is a
delay of three months between the date the applicant was notified of
the abandoned status of the application (i.e., the mail date of the
notice of abandonment) and the date a petition under Sec. 1.137(b) was
filed, or where the application was abandoned for more than one year
prior to the date a petition under Sec. 1.137(b) was filed, the Office
may require further information and a showing that the delay was
unintentional.
Finally, it should be stressed that the mere fact that a petition
under Sec. 1.137(b) was filed within three months of the date the
applicant was notified of the abandoned status of the application
(i.e., the mail date of the notice of abandonment) or within one year
of the date of abandonment does not imply that the delay was
``unintentional.'' That is, an applicant who deliberately delays the
filing of a petition under Sec. 1.137 until three months from the mail
date of the notice of abandonment (or based upon the one-year
anniversary of the date of abandonment) cannot appropriately make the
statement that ``the delay was unintentional.'' This time frame is
provided simply as an indication as to when an applicant should expect
the Office to inquire further into the circumstances of the abandonment
of an application for which a petition under Sec. 1.137(b) is filed,
and in which case the applicant may expedite consideration of such
petition by providing information as to when applicant was notified of
the abandoned status of the application, and the cause of the delay
between the date of notification and the date a petition under
Sec. 1.137 was filed.
Comment 65: One comment suggested that the Office include in
Sec. 1.137 all of the basic interpretations and guidelines by which the
Office applies Sec. 1.137. The comment specifically suggested that
Sec. 1.137 include the time periods (e.g., three months) by which the
Office measures the applicant's diligence in taking action to revive
the application and the differences between post-abandonment delay in
taking action to revive the application and any pre-abandonment delay
which may have resulted in the abandonment.
Response: The Office will adopt a Sec. 1.137 that does not include
filing period requirements, but requires that the ``entire'' delay was
``unavoidable'' (Sec. 1.137(a)) or ``unintentional'' (Sec. 1.137(b)).
The requirements for a petition to revive an abandoned application or
lapsed patent are set forth in Sec. 1.137; additionally, the Office
will set forth its basic interpretations and guidelines for application
of Sec. 1.137 (instructional information) in the MPEP.
Section 1.181 provides the basis for generic requests for relief by
petition, and sets forth a two-month time period therein for the timely
filing of a petition (Sec. 1.181(f)). While the three-month time frame
employed by the Office during the consideration petitions under
Sec. 1.137 exceeds the two-month period in Sec. 1.181(f) for the timely
filing of a petition, this three-month period is the most frequently
set period for reply by an applicant (see MPEP 710.02(b)). While the
Office considers the two-month period in Sec. 1.181(f) to be the
appropriate period by which the timeliness of a petition should be
determined, it is certainly reasonable to expect that any applicant
desiring to restore an abandoned application to pending status will
file a petition under Sec. 1.137 to revive such abandoned application
no later than three months after notification of abandonment of the
application. See In re Kokaji, 1 USPQ2d 2005, 2006 (Comm'r Pat. 1986).
The ``three-month'' time frame set forth in this Final Rule is a
guideline as to when an applicant can expect further inquiry by the
Office (and, as such, should attempt to provide the relevant
information in the initial petition to avoid delay), in that: (1) it is
possible that an applicant is incapable of filing a petition under
Sec. 1.137 within three months of the date of notification of
abandonment (e.g., pro se applicant incapacitated from date of
notification of abandonment until action taken to revive the
application) rendering the entire delay in filing the required reply
from the due date for the reply until the filing of a grantable
petition unavoidable; and (2) it is also possible that an applicant, by
a deliberately chosen course of action, delays the filing of a petition
under Sec. 1.137 until exactly three months after the date of
notification of abandonment to use this period as an extension of time,
in which case a statement that ``the entire delay in filing the
required reply from the due date for the reply until the filing of a
grantable petition pursuant to this paragraph was unintentional'' is
not appropriate. To avoid substitution of the three-month time frame
for review by the Office for the requirement for unavoidable or
unintentional delay, the Office will not amend Sec. 1.137 to include
this time frame.
Comment 66: One comment indicated that the phrase ``the delay was
unintentional'' is unclear. The comment recited a specific example in
which an applicant, under final rejection, submits an amendment or
other correspondence which is believed by the applicant to place the
application in condition for allowance (and thus constitute a reply
within the meaning of Sec. 1.113), and, as such, the applicant, in a
deliberate course of action/inaction, takes no further steps to ensure
the filing a reply within the meaning of Sec. 1.113 (e.g., a notice of
appeal) to the final rejection. The comment suggested that Sec. 1.137
is unclear as to whether the delay in this situation, which may be
deliberate or intentional in the literal sense, would constitute an
``unintentional'' delay within the meaning of Sec. 1.137(b).
Response: The Office has amended Sec. 1.137 to require that ``the
entire delay in filing the required reply from the due date for the
reply until the filing of a grantable petition'' was ``unavoidable''
(Sec. 1.137(a)) or ``unintentional'' (Sec. 1.137(b)). Thus, intentional
delays occurring prior to the due date for reply to avoid abandonment
do not preclude relief pursuant to Sec. 1.137. Should the delay in the
example given extend past the extendable due date for reply (under
Sec. 1.113) to the final rejection, an appropriate statement of
unintentional delay could be made as the applicant did not intend to
have the deadline for reply under Sec. 1.113 to the final rejection
expire.
In addition, there is a distinction between: (1) a delay resulting
from an error in judgment as to whether to permit an application to
become abandoned (whether to prosecute the application) or whether to
seek or persist in seeking the revival of the abandoned application;
and (2) a delay
[[Page 53162]]
resulting from an error in judgment as to the steps necessary to
continue the prosecution delay in seeking revival of the application.
Where the abandonment and ensuing delay results from an error in
judgment as to whether to permit an application to become abandoned
(whether to prosecute the application) or whether to seek or persist in
seeking the revival of the abandoned application, the abandonment of
such application is considered a deliberately chosen course of action,
and the resulting delay cannot be considered ``unintentional'' within
the meaning of Sec. 1.137(b). Where, however, an error in judgment as
to the steps necessary to continue prosecution results in abandonment
of the application, the abandonment of such application is not
necessarily considered a deliberately chosen course of action, and the
resulting delay may be considered ``unintentional'' within the meaning
of Sec. 1.137(b).
However, Secs. 1.116 and 1.135(b) are manifest that proceedings
concerning an amendment after final rejection will not operate to avoid
abandonment of the application in the absence of a timely and proper
appeal. Unless the applicant is informed in writing that the
application is allowed prior to the expiration of the period for reply
to the final Office action, it is the applicant's responsibility to
timely file a notice of appeal (and fee) to avoid the abandonment of
the application. The abandonment of an application subject to a final
Office action is not ``unavoidable'' within the meaning of 35 U.S.C.
133 and Sec. 1.137(a) in the situation in which the applicant simply
permits the maximum extendable statutory period for reply to a final
Office action to expire while awaiting a notice of allowance or other
action.
Comment 67: One comment opposed the changes to Sec. 1.137 on the
bases that: (1) it permits submarine patents, in that an applicant may
permit an application to become abandoned and wait to see whether the
invention was developed by other entities; and (2) the revival of a
long-abandoned application will have an adverse impact on the examiner,
in that the examiner who originally examined that application may no
longer be at the Office, or will have to reacquaint himself or herself
with the application.
Response: The change to Sec. 1.137(b) does not permit an applicant
to obtain revival where either: (1) the applicant deliberately
permitted the application to become abandoned; or (2) the applicant
deliberately delayed seeking revival to see whether the invention was
developed by other entities. It is well established that where
applicant deliberately permits an application to become abandoned, the
abandonment of such application is considered a deliberately chosen
course of action, and the resulting delay cannot be considered
``unintentional'' within the meaning of Sec. 1.137(b). See Application
of G, 11 USPQ2d at 1380. Likewise, where the applicant deliberately
chooses not to either seek or persist in seeking the revival of an
abandoned application, the resulting delay in seeking revival of the
application cannot be considered ``unintentional'' within the meaning
of Sec. 1.137(b). The intentional abandonment of an application, or an
intentional delay in seeking either the withdrawal of a holding of
abandonment in or the revival of an abandoned application, precludes a
finding of unavoidable or unintentional delay pursuant to Sec. 1.137.
See Maldague, 10 USPQ2d at 1478.
While it is possible for an applicant to make a misleading
statement that the delay was unintentional to obtain revival of an
abandoned application, the Office simply must rely upon the candor and
good faith of those prosecuting patent applications (e.g., it is
equally possible for a party to fabricate evidence and obtain the
revival of a long-abandoned application on the basis of unavoidable
delay). Any applicant obtaining revival based upon a misleading
statement that the delay was unintentional may find the achievement
short-lived as a result of the question of intentional delay being
raised by third parties challenging any patent issuing from the
application.
The revival of any long-abandoned application will have an adverse
impact on the examiner; however, long-abandoned applications have been
previously revived pursuant to Sec. 1.137(a) on the basis of
unavoidable delay. See In re Lonardo, 17 USPQ2d 1455 (Comm'r Pat.
1990)(application revived after being abandoned for more than sixteen
years). Thus, this change to Sec. 1.137(b) will not create a burden on
examiners that did not exist before, and could in fact reduce the
burden as a result of the requirement that in applications abandoned
for excessive periods of time would have to show that the entire delay
was ``unavoidable'' or ``unintentional.''
Comment 68: One comment suggested that the two-year limitation in
35 U.S.C. 41(c) is a ``good compromise'' in regard to a filing period
for filing petitions to revive based upon unintentional delay.
Response: The suggestion is not adopted. Changing the one-year
filing period requirement in Sec. 1.137(b) to a two-year filing period
requirement would not substantially change the problem caused by a
filing period requirement, namely, that it causes inequitable results
in certain instances. In addition, the inclusion of any filing period
requirement in Sec. 1.137(a) or (b) will likely induce applicants, or
their representatives, to delay the filing of a petition under
Sec. 1.137 until the end of such filing period. See Application of S, 8
USPQ2d at 1632. The Office has no discretion in regard to the twenty-
four month filing period requirement in 35 U.S.C. 41(c), but the
presence of a twenty-four month filing period requirement in 35 U.S.C.
41(c) does not imply that the Office must place a twenty-four month
filing period requirement into the rules implementing 35 U.S.C.
41(a)(7), which contains no filing period requirement.
Comment 69: One comment opposed the changes to Sec. 1.137 on the
basis that the right to revive an abandoned application should be
limited due to the public's right to practice a technology ``that an
applicant has abandoned.''
Response: 35 U.S.C. 41(a)(7) authorizes the Office to revive an
abandoned application where the abandonment was unintentional (or
unavoidable, the epitome of unintentional), but not where the
abandonment was intentional. Section 1.137 does not authorize the
revival of an abandoned application where the applicant, by deliberate
course of action, has abandoned an application or delayed seeking its
revival. Additionally, in many instances the disclosure in a patent
maturing from a revived application would not have been disclosed and
the technology therein would not be public knowledge, but for the
revival of the application.
Comment 70: One comment suggested the need for an intervening
rights provision to protect innocent infringers.
Response: The issue of intervening rights relates to the
enforcement of patent rights, which does not directly concern the
conduct of proceedings in the Office. Thus, it is unclear whether the
Office is authorized under 35 U.S.C. 6 to promulgate regulations
including an intervening rights provision.
Comment 71: Several comments suggested that Sec. 1.137(b) be
amended to include the ``promptly filed'' requirement of Sec. 1.137(a).
Response: The suggestion is effectively adopted, although via a
different mechanism as explained below. While there is considerable
merit to the suggestion for the inclusion of a ``promptly filed''
requirement in both Sec. 1.137(a) and (b), the Office has eliminated
the ``promptly filed'' requirement from Sec. 1.137(a) to avoid
[[Page 53163]]
confusion between ``promptly filed'' and ``unavoidable delay.'' The
phrase ``promptly filed'' has been associated with Sec. 1.137(a) and
its requirement for ``unavoidable'' delay, and, as such, the inclusion
of a ``promptly filed'' requirement in Sec. 1.137(b) might cause
confusion in regard to the distinction between the circumstances that
constitute unavoidable delay and the circumstances that constitute
unintentional delay.
Section 1.137(a)(3) and (b)(3) as adopted requires that ``the
entire delay in filing the required reply from the due date for the
reply until the filing of a grantable petition'' has been
``unavoidable'' (Sec. 1.137(a)) or ``unintentional'' (Sec. 1.137(b)) to
clarify the requirements for a petition under Sec. 1.137(a) and (b). As
discussed supra, an applicant who fails to file a petition under
Sec. 1.137(a) or (b) ``promptly'' upon becoming notified, or otherwise
becoming aware, of the abandonment of the application will not be able
to show that ``the entire delay in filing the required reply from the
due date for the reply until the filing of a grantable petition
pursuant to [Sec. 1.137(a)] was unavoidable,'' and will probably not
even be able to make an appropriate statement that ``the entire delay
in filing the required reply from the due date for the reply until the
filing of a grantable petition pursuant to [Sec. 1.137(b)] was
unintentional.'' Obviously, any petition under Sec. 1.137(a) or (b)
should be ``promptly filed'' upon discovery of abandonment to avoid a
question as to whether the filing of such a petition was intentionally
delayed.
Comment 72: One comment questioned how a patent could lapse for
failure to pay the issue fee, as a patent does not issue unless the
issue fee is paid.
Response: 35 U.S.C. 151 provides that where an applicant timely
submits the sum specified in the Notice of Allowance as the issue fee,
but a balance of the issue fee remains outstanding (due to a fee
increase), the patent will lapse unless the balance of the issue fee is
timely paid. See Mills, 12 USPQ2d at 1848; see also Ex parte Crissy,
201 USPQ 689 (Bd. Pat. App. 1976).
Comment 73: One comment suggested that Sec. 1.137(a)(1) and (b)(1)
not require a continuing application if the application became
abandoned for failure to reply to a non-final Office action.
Response: Section 1.137(a)(1) and (b)(1) each provide that a
petition thereunder include:
The required reply, unless previously filed. In a nonprovisional
application abandoned for failure to prosecute, the required reply
may be met by the filing of a continuing application. In an
application or patent, abandoned or lapsed for failure to pay the
issue fee or any portion thereof, the required reply must be the
payment of the issue fee or any outstanding balance thereof.
As discussed supra, there may be circumstances under which the
Office may require a continuing application to meet this reply
requirement. Nevertheless, in a nonprovisional application abandoned
for failure to prosecute, a continuing application is generally a
permissive (i.e., ``may be met'') reply, in that an applicant in a
nonprovisional application abandoned for failure to prosecute may file
a reply under Sec. 1.111 to a non-final Office action or a reply under
Sec. 1.113 (e.g., notice of appeal) to a final Office action, or may
simply file a continuing application as the required reply. In an
application or patent, abandoned or lapsed for failure to pay any
portion of the required issue fee, the issue fee or any outstanding
balance thereof is the mandatory (i.e., ``must be'') reply. As the
``continuing application'' option is limited to an abandoned
nonprovisional application, the reply in an abandoned provisional
application must be any outstanding reply to an Office requirement.
Comment 74: One comment suggested that Sec. 1.137(c) be amended to
take into account the provision in 35 U.S.C. 154(c) that an application
(other than a design application) is entitled to a patent term of not
less than twenty years from its filing date, or if the application
contains a specific reference to an earlier filed application(s) under
35 U.S.C. 120, 121, or 365(c), the date twenty years from the filing
date of the earliest such application(s).
Response: The suggestion is not adopted. The Office considers this
situation to be applicable to a relatively small class of applications,
and, as such, does not deem it prudent to introduce into Sec. 1.137(c)
the complexity necessary to account for this situation. Applicants in
this situation (e.g., instances in which an application filed prior to
June 8, 1995, is to be revived solely for purposes of copendency with
an application filed on or after June 8, 1995) may file a petition
pursuant to Sec. 1.183 requesting that the Office waive the provisions
of Sec. 1.137(c) to the extent that Sec. 1.137(c) requires a disclaimer
of the period in excess of the date twenty years from the filing date
of the application, or if the application contains a specific reference
to an earlier filed application(s) under 35 U.S.C. 120, 121, or 365(c),
the date twenty years from the filing date of the earliest such
application(s). The Office will refund the Sec. 1.17(h) petition fee if
the Sec. 1.183 petition is granted.
Comment 75: One comment suggested that the last paragraph of
Sec. 1.137 read:
Under no circumstance may a petition to revive a provisional
application be filed more than twelve months after the filing date
of the provisional application. No application filed more than
twelve months after the filing date of a provisional application is
entitled to a claim of priority from the provisional [application],
notwithstanding the copendency of any petition to revive the
provisional application.
Response: The suggestion is not adopted. 35 U.S.C. 111(b)(3)(C)
authorizes the revival of an abandoned application on the basis of
unavoidable or unintentional delay. 35 U.S.C. 111(b)(5) provides that a
``provisional application shall be regarded as abandoned 12 months
after the filing date of such application and shall not be subject to
revival thereafter.'' 35 U.S.C. 111(b) does not contain any limitation
on the filing date of a petition to revive an abandoned provisional
application (or the date by which such a petition must be granted), but
only a limitation as to the period of pendency of the provisional
application. Thus, Sec. 1.137(e) as adopted provides that ``[a]
provisional application * * * may be revived * * * so as to be pending
for a period of no longer than twelve months from its filing date.
Under no circumstances will a provisional application be regarded as
pending after twelve months from its filing date.''
Section 1.139
Section 1.139 is removed and reserved and its subject matter added
to Sec. 1.137.
No comments were received regarding the proposed change to
Sec. 1.139.
Section 1.142
Section 1.142 is amended by replacement of ``response'' with
``reply'' in accordance with the change to Sec. 1.111.
No comments were received regarding the proposed change to
Sec. 1.142.
Section 1.144
Section 1.144 is amended for clarification purposes.
No comments were received regarding the proposed change to
Sec. 1.144.
Section 1.146
Section 1.146 is amended for clarification purposes.
No comments were received regarding the proposed change to
Sec. 1.146.
[[Page 53164]]
Section 1.152
Section 1.152 is amended to place its former provisions into
paragraphs (a), (a)(1), and (a)(2) for clarification.
Section 1.152 is also amended to remove the prohibition against
color drawings and color photographs in design applications. Section
1.152 is amended to permit the use of color photographs and color
drawings in design applications subject to the petition requirements of
Sec. 1.84(a)(2) inasmuch as color may be an integral element of the
ornamental design. While pen and ink drawings may be lined for color, a
clear showing of the configuration of the design may be obscured by
this drafting method. New technologies, such as holographic designs,
fireworks and laser light displays may not be accurately disclosed
without the use of color.
The term ``article'' of Sec. 1.152(a) is replaced by the term
``design'' as 35 U.S.C. 171 requires that the claim be directed to the
``design for an article'' not the article, per se. Therefore, to comply
with the requirements of 35 U.S.C. 112, para. 1, it is only necessary
that the design as embodied in the article be fully disclosed and not
the article itself. The term ``must'' has been replaced by the term
``should'' to allow for latitude in the illustration of articles whose
configuration may be understood without surface shading. Clarification
language has been added to note that the use of solid black surfaces is
permitted for representation of the color black as well as color
contrast and that photographs and ink drawings must not be combined as
formal drawings in one application.
A new Sec. 1.152(b) is added to clarify Office practice concerning
details disclosed in the ink drawings, color drawings, or photographs
deposited with the original application papers. Specifically,
Sec. 1.152(b) provides that any details disclosed in the ink or color
drawings, or photographs deposited with the original application papers
constitutes an integral part of the disclosed and claimed design,
except as otherwise provided in Sec. 1.152(b). Section 1.152(b) further
specifies that this detail may include color or contrast, graphic or
written indicia, including identifying indicia of a proprietary nature
(e.g., a company logo), surface ornamentation on an article, or any
combination thereof. The ``but not limited to'' phrase in Sec. 1.152(b)
clarifies that this list is exemplary, not exhaustive.
Section 1.152(b)(1) provides that when any detail shown in informal
drawings or photographs does not constitute an integral part of the
disclosed and claimed design, a specific disclaimer must appear in the
original application papers either in the specification or directly on
the drawings or photographs. This specific disclaimer in the original
application papers will provide antecedent basis for the omission of
the disclaimed detail(s) in later-filed drawings or photographs. That
is, in the absence of such a disclaimer, later-filed formal or informal
drawings not including any detail disclosed in the original drawings
will be considered to contain new matter, and will be treated
accordingly. See 35 U.S.C. 112, para. 1; Sec. 1.121(a)(6).
Comment 76: One comment stated that applicant may misunderstand the
implications of submitting a design drawing in color and suggested that
Sec. 1.152 should explain and give notice of the consequences of
submitting an initial color drawing in design applications.
Response: The comment has been adopted.
Section 1.152(b)(2) provides that when informal color drawings or
photographs are deposited with the original application papers without
a disclaimer pursuant to Sec. 1.152(b)(1), formal color drawings or
photographs, or a black and white drawing lined to represent color,
will be required.
Section 1.154
The heading of Sec. 1.154 is amended to read ``[a]rrangement of
application elements'' for consistency with Secs. 1.77 and 1.163.
Section 1.154 paragraph (a) is amended to clarify that a voluntary
submission (see comments under Sec. 1.152 relating to substitution of
``design'' for ``article'') may and should be made of ``a brief
description of the nature and intended use of the article in which the
design is embodied.'' It is current practice for design examiners, in
appropriate cases, to inquire as to the nature and intended use of the
article in which a claimed design is embodied. The submission of such
description will allow for a more accurate initial classification, and
aid in providing a proper and complete search at the time of the first
action on the merits. In those instances where this feature description
is necessary to establish a clear understanding of the article in which
the design is embodied, provision of the feature description would help
in reducing pendency by eliminating the necessity for time-consuming
correspondence. Specifically, requests for information prior to first
action would be avoided. Absent an amendment requesting deletion of the
description it would be printed on any patent that would issue.
No comments were received regarding the proposed change to
Sec. 1.154.
Section 1.155
Section 1.155 is amended to include only the language of former
Sec. 1.155(a). The subject matter of former paragraphs (b) through (f)
of Sec. 1.155 were added to Sec. 1.137.
No comments were received regarding the proposed change to
Sec. 1.155.
Section 1.163
The heading of Sec. 1.163 is amended to read ``[s]pecification and
arrangement of application elements'' for consistency with Secs. 1.77
and 1.154. Section 1.163(b) is amended to remove an unnecessary and
outmoded reference to a ``legible carbon copy of the original''
specification for plant applications.
No comments were received regarding the proposed change to
Sec. 1.163.
Section 1.165
The proposed amendment to Sec. 1.165 to remove the reference to the
artistic and competent execution of plant patent drawings is withdrawn.
Comment 77: One comment argued that the language proposed to be
deleted was actually relied upon by examiners to obtain new and better
illustrations.
Response: The comment was adopted to the extent that the proposed
change is withdrawn to allow for further study of what language related
to the type of plant drawings should appear in Sec. 1.165.
Section 1.167
Section 1.167 is amended to include only the language of former
Sec. 1.167(a), in that paragraph (b) is removed as unnecessary in view
of Sec. 1.132.
Comment 78: One comment questioned whether Sec. 1.132 covers
paragraph (b) of Sec. 1.167, which paragraph has been deleted.
Response: Paragraph (b) of Sec. 1.167 provided for the submission
of affidavits by qualified agricultural or horticultural experts
regarding the novelty and distinctiveness of the variety of plant.
Section 1.132 relates to affidavits traversing grounds of rejection,
and is recognized as the appropriate rule under which an affidavit may
be submitted which does not fall within or under other specific rules.
See MPEP 716.
Section 1.171
Section 1.171 is amended to no longer require an order for a title
report in reissue applications as the requirement for a certification
on behalf of all the assignees under concomitantly amended
[[Page 53165]]
Sec. 1.172(a) obviates the need for a title report and fee therefor.
Section 1.171 is also amended by deletion of the requirement for an
offer to surrender the patent, which offer is seen to be redundant in
view of Sec. 1.178.
No adverse comments were received regarding the proposed change to
Sec. 1.171.
Section 1.172
Section 1.172 is amended to require that all assignees establish
their ownership interest in compliance with Sec. 3.73(b). The amendment
as originally proposed repeated requirements found in Sec. 3.73(b)
rather than incorporating Sec. 3.73(b), as assignees of a part interest
are frequently involved in reissue applications.
Comment 79: One comment noted that the proposed amendment repeated
requirements already found in Sec. 3.73(b) and was unnecessary.
Response: The comment was adopted, in that Sec. 1.172 is amended to
simply reference Sec. 3.73(b). Section 3.73(b) is amended to replace a
reference to an assignee of the entire right, title and interest with a
reference to an assignee, so as to include assignees of a part
interest.
Section 1.175
Section 1.175 relating to the content of the reissue oath or
declaration (MPEP 1414), as well as Secs. 1.48 and 1.324 relating to
correction of inventorship in an application and in a patent,
respectively, are amended to remove the requirement for a factual
showing relating to a matter in which a lack of deceptive intent must
be established. A statement as to a lack of deceptive intent is
sufficient to meet the statutory requirement under 35 U.S.C. 251 of a
lack of deceptive intent relating to the error(s) to be corrected by
reissue, and a factual showing of how the error(s) to be corrected by
reissue arose or occurred is not required. As the Office no longer
investigates fraud and inequitable conduct issues and a reissue
applicant's statement of a lack of deceptive intent is normally
accepted on its face (See MPEP 1448), the requirement in former
Sec. 1.175(a)(5) that it be shown how the error(s) being relied upon
arose or occurred without deceptive intent on the part of the applicant
appears to be unduly burdensome upon applicants and the Office, and is
deleted. This applies to the initially identified error(s), under
paragraph (a), and any subsequently identified error(s) under paragraph
(b).
Comment 80: Although the elimination of the requirement for a
factual showing relating to how the errors arose or occurred enjoyed
overwhelming support, three comments cited the need for continued
investigation by the Office. One comment, while agreeing that some
relaxation of reissue oath or declaration requirements are in order,
stated that the Office should not decline to investigate entirely or
adopt a pro forma requirement that can merely be incanted. Two comments
stated that it is hard to get the courts to review this issue and that
the courts and the public are at a disadvantage absent an explanation
of how the error occurred.
Response: Current Office practice is to reject reissue applications
only where there is ``smoking gun'' evidence of deceptive intent, which
will not be demonstrated by the type of inquiry limited to a showing of
how the error arose or occurred without the ability to subpoena
witnesses or evidence. Accordingly, the burden presented on all reissue
applicants based on the mere collection of such information for every
error is not seen to be warranted.
Comment 81: One comment suggested that a final declaration is not
needed, and that, as an alternative, counsel should be allowed to
submit a statement based on information and belief counsel is not aware
of deceptive intent.
Response: 35 U.S.C. 251 requires that an error have been made
without deceptive intention to be corrected via reissue. Accordingly,
all errors being corrected by reissue must have been made without
deceptive intention, in that an error made with deceptive intention
cannot be bootstrapped onto an error made without deceptive intention
and corrected via reissue. The parties with the best knowledge of the
lack of deceptive intention are the patentees and owners of the patent,
not counsel for the reissue application.
An initial reissue oath or declaration filed pursuant to
Sec. 1.175(a) is limited to identification of the cause(s) of the
reissue, and stating generally that all errors being corrected in the
reissue application at the time of filing of the oath or declaration
arose without deceptive intent. Paragraph (a)(1) requires the
identification of at least one error and only one error may be
identified as the basis for reissue. The current practice under
Sec. 1.175 (a)(3) and (a)(5) of specifically identifying all errors
being corrected at the time of filing the initial oath or declaration
is not retained. Although only one error need be identified to provide
a basis for reissue, where only one error among more than one is so
identified, applicant should carefully monitor that the error is
retained or submit a supplemental oath or declaration identifying
another error or errors.
Comment 82: One comment suggested that since a reissued patent and
a reexamined patent may also be reissued, paragraph (a)(1) of
Sec. 1.175 may be clarified to substitute for ``original patent,''
``reissued,'' or ``existing patent'' as what is wholly or partly
inoperative or invalid.
Response: The effect of a reissue or reexamination proceedings is
to cause a substitution for the original patent so that the reissued or
reexamined patent becomes the original patent.
Paragraph (b)(1) of Sec. 1.175 requires a supplemental reissue oath
or declaration for errors corrected that were not covered by an earlier
presented reissue oath or declaration, such as the initial oath or
declaration pursuant to paragraph (a) of this section or one submitted
subsequent thereto (a supplemental oath or declaration under this
paragraph), stating generally that all errors being corrected, which
are not covered by an earlier presented oath or declaration pursuant to
Sec. 1.175 (a) and (b), arose without any deceptive intention on the
part of the applicant. A supplemental oath or declaration that refers
to all errors that are being corrected, including errors covered by a
reissue oath or declaration submitted pursuant to paragraph (a) of this
section, would be acceptable. The specific requirement for a
supplemental reissue oath or declaration to cover errors sought to be
corrected subsequent to the filing of an initial reissue oath or
declaration is not a new practice, but merely recognition of a current
requirement for a supplemental reissue oath or declaration when
additional errors are to be corrected. However, the current practice of
specifically identifying all supplemental errors being corrected in a
supplemental reissue oath or declaration is not retained.
A supplemental oath or declaration under paragraph (b)(1) must be
submitted prior to allowance. The supplemental oath or declaration may
be submitted with any amendment prior to allowance, paragraph
(b)(1)(i), or in order to overcome a rejection under 35 U.S.C. 251 made
by the examiner where there are errors sought to be corrected that are
not covered by a previously filed reissue oath or declaration,
paragraph (b)(1)(ii). Any such rejection by the examiner will include a
statement that the rejection may be overcome by submission of a
supplemental oath or declaration, which oath or declaration states that
the errors in issue arose without any deceptive intent on the part of
the applicant. An
[[Page 53166]]
examiner ordinarily will be introducing a rejection under 35 U.S.C. 251
based on the lack of a supplemental declaration for the first time in
the prosecution once the claims are determined to be otherwise
allowable. The introduction of a new ground of rejection under 35
U.S.C. 251 will not prevent an action from being made final, except
first actions pursuant to Sec. 1.113(c), because of the combination of
the following factors: (1) The finding of the case in condition for
allowance is the first opportunity that the examiner has to make the
rejection; (2) the rejection is being made in response to an amendment
of the application (to deal with the errors in the patent); (3) all
applicants are on notice that this rejection will be made upon finding
of the case otherwise in condition for allowance where errors have been
corrected subsequent to the last oath or declaration filed in the case,
therefore, the rejection should have been expected by applicant; and
(4) the rejection will not prevent applicant from exercising any rights
as to curing the rejection, since applicant need only submit the
supplemental oath or declaration with the above-described language, and
it will be entered to cure the rejection provided it raises no
additional issue, such as an informality or substantive reissue
question (e.g., a previously omitted claim for priority under 35 U.S.C.
119).
A supplemental oath or declaration under paragraph (b) of this
section would only be required for errors sought to be corrected during
prosecution of the reissue application. Where an Office action contains
only a rejection under 35 U.S.C. 251 and indicates that a supplemental
oath or declaration under this paragraph would overcome the rejection,
applicants are encouraged to authorize the payment of the issue fee at
the time the supplemental reissue oath or declaration is submitted in
view of the clear likelihood that the reissue application will be
allowed on the next Office action. Such authorization will reduce the
delays in the Office awaiting receipt of the issue fee. Where there are
no errors to be corrected over those already covered by an oath or
declaration submitted under paragraphs (a) and (b)(1) of this section
(e.g., the application is allowed on first action), or where a
supplemental oath or declaration has been submitted prior to allowance
and no further errors have been corrected, a supplemental oath or
declaration under this paragraph, or additional supplemental oath or
declaration under paragraph (b)(1), would not be required.
Paragraph (b)(2) provides that for any error sought to be corrected
after allowance (e.g., under Sec. 1.312), a supplemental oath or
declaration must accompany the requested correction stating that the
error(s) to be corrected arose without any deceptive intent on the part
of the applicant.
The quotes around lack of deceptive intent, currently found in
Sec. 1.175(a)(6), are removed as the exact language is not required.
The reference to Sec. 1.56, currently found in Sec. 1.175(a)(7), is
removed as unnecessary in view of the reference to Sec. 1.56 in
Sec. 1.63 that is also referred to by Sec. 1.175(a). The stated ability
of applicant to file affidavits or declarations of others and the
ability of the examiner to require additional information, currently
found in Sec. 1.175(b), is deleted as unnecessary in view of 35 U.S.C.
131 and 35 U.S.C 132.
New paragraph (c) of Sec. 1.175 has been rewritten to clarify its
intent that a subsequently submitted oath or declaration under this
section need not identify any errors other than what was identified in
the original oath or declaration provided at least one of the
originally identified errors to be corrected is retained to provide a
basis for the reissue.
In new paragraph (d) of Sec. 1.175 a reference to Sec. 1.53(f) is
inserted to clarify that the initial oath or declaration under
Sec. 1.175(a) including those requirements under Sec. 1.63 need not be
submitted (with the specification, drawing and claims) in order to
obtain a filing date.
Section 1.176
The adoption of a final change to Sec. 1.176 is held in abeyance
pending further consideration by the Office of the decision by the
Federal Circuit in In re Graff, 111 F.3d 874, 42 USPQ2d 1471 (Fed. Cir.
1997). Graff involved two issues: (1) whether it is permissible to have
a continuation of a reissue application when the reissue application
has issued as a reissue patent; and (2) whether broadened claims can be
presented more than two years after the original patent date in a
reissue application which was filed within two years but did not
include any broadened claims. While Graff is more directly related to
Sec. 1.177 than Sec. 1.176, Secs. 1.176 and 1.177 are sufficiently
interrelated that the Office considers it appropriate to hold the final
changes to both Sec. 1.176 and Sec. 1.177 in abeyance pending further
consideration by the Office of the decision in Graff.
Comment 83: A comment requested clarification regarding how
restriction, between claims added in a reissue application and the
original patent claims, by the examiner would be permitted in
Sec. 1.176 while Sec. 1.177 would prohibit multiple reissue patents
except among the distinct and separate parts of the thing patented.
Response: The comment will receive further consideration when a
final change to Sec. 1.176 is adopted.
Section 1.177
Section 1.177 was proposed to be amended to discontinue the current
practice that copending reissue applications must be issued
simultaneously unless ordered otherwise by the Commissioner pursuant to
petition. As discussed supra, the adoption of a final change to
Sec. 1.177 is held in abeyance pending further consideration by the
Office of the decision in Graff.
Comment 84: One comment would limit the granting of multiple
reissue patents on different dates to where a petition for the grant of
multiple reissue patents has been approved prior to the issuance of any
reissue patent. Another comment thought that only one petition fee
should be charged notwithstanding whether a petition in more than one
reissue application is required.
Response: The comments will receive further consideration when a
final change to Sec. 1.177 is adopted.
Section 1.181
The proposed change to Sec. 1.181 will not be made, see comments
relating to Sec. 1.101.
Comment 85: One comment requested that the material to be deleted
from Sec. 1.181, paragraphs (d), (e), and (g) should be retained as
they give fair warning to all and the consequences of failure to pay a
petition fee.
Response: The comment has been adopted.
Section 1.182
Section 1.182 is amended by providing that a petition under the
section may be granted ``subject to such other requirements as may be
imposed'' by the Commissioner, language similar to that appearing for
petitions under Sec. 1.183. The proposal to remove the statement that a
decision on a petition thereunder will be communicated to interested
parties in writing is withdrawn.
Comment 86: One comment opposed the proposal to remove the
statement that a decision on a petition under Sec. 1.182 will be
communicated to interested parties in writing, arguing that it would
not be appropriate for the Office to decide a petition under Sec. 1.182
without communicating the decision to the interested parties in
writing.
[[Page 53167]]
Response: The suggestion is adopted. The Office did not propose to
remove the statement that a decision on a petition under Sec. 1.182
will be communicated to interested parties in writing because the
Office intended to discontinue providing written decisions on petitions
under Sec. 1.182 (or any other petition), but because it was considered
unnecessary to state as much in the rule itself. While the Office will
communicate the decision on any petition under Sec. 1.182 to the
interested parties in writing, such decision may not always take the
form of a traditional decision on petition. For example, the grant of a
petition under Sec. 1.182 to accept the omitted page(s) or drawing(s)
in a nonprovisional application and accord the date of such submission
as the application filing date will be indicated by the issuance of a
new filing receipt stating the filing date accorded the application.
See Notice entitled ``Change in Procedure Relating to an Application
Filing Date'' published in the Federal Register at 61 FR 30041, 30043
(June 13, 1996), and in the Official Gazette at 1188 Off. Gaz. Pat.
Office 48, 50-51 (July 9, 1996).
Section 1.184
Section 1.184 is removed and reserved as representing internal
instructions.
Comment 87: Comments suggested that Sec. 1.184 not be deleted
notwithstanding its internal directions. See response to comment
relating to Sec. 1.101.
Section 1.184 relates to the refusal of a subsequent Commissioner
to reconsider a case once decided by a previous Commissioner, except in
accordance with principles which govern the granting of new trials. As
the Commissioner is free to waive any requirement of the rules not
required by statute, the prohibition against reconsideration is
ineffective. Additionally, the deletion of the material does not
necessarily represent an intent to engage in reconsideration of matters
previously decided.
Section 1.191
Section 1.191(a) is amended to permit every applicant, and every
owner of a patent under reexamination, any of whose claims have been
twice or finally (Sec. 1.113) rejected (rather than ``any of the claims
of which have been twice rejected or given a final rejection
(Sec. 1.113)''), to file an appeal to the Board of Patent Appeals and
Interferences (Board) to better track the language of 35 U.S.C. 134.
Section 1.191(a) is also amended to: (1) explicitly refer to a ``notice
of appeal'' to provide antecedent for such term in Sec. 1.192; (2)
replace ``response'' with ``reply'' in accordance with the change to
Sec. 1.111; and (3) refer to Sec. 1.17(b) for consistency with the
change to Sec. 1.17.
Comment 88: One comment argued that the proposed change to
Sec. 1.191, limiting the ``twice rejected'' requirement for appeal to a
particular application, was inconsistent with 35 U.S.C. 134, as
indicated by the Board in the unpublished decision Ex parte Lemoine,
Appeal No. 94-0216 (Bd. Pat. App. & Inter., December 27, 1994). A
second comment argued that Sec. 1.191 should permit an appeal based on
one rejection in a prior application and one rejection in a continuing
application to avoid requiring an applicant to file a pro forma reply
to meet the requirement that the particular application be twice
rejected.
Response: The comments have been adopted by elimination of the
limitation to twice rejected being related to a particular application.
To avoid inconsistency between Sec. 1.191 and 35 U.S.C. 134, Sec. 1.191
as adopted tracks the language of 35 U.S.C. 134, except that Sec. 1.191
states ``twice or finally (Sec. 1.113) rejected'' rather than ``twice
rejected.'' The patent statute and rules of practice do not permit an
application to be finally rejected (even under first action final
practice) under 35 U.S.C. 132, unless the applicant is one ``whose
claims have been twice rejected'' within the meaning of 35 U.S.C. 134.
Thus, the phrase ``or finally (Sec. 1.113)'' may be viewed as
redundant. Nevertheless, as applicants generally delay appeal until
final action (although Pub. L. 103-465 may change this practice), and
there has been some confusion as to when 35 U.S.C. 134 and Sec. 1.191
permit an applicant to appeal a rejection, Sec. 1.191(a) as adopted
states ``twice or finally (Sec. 1.113) rejected.''
Section 1.191(b) is amended to eliminate the requirement for a
notice of appeal to: (1) be signed; or (2) identify the appealed
claims. These two requirements have been deleted as being redundant of
the requirements of Sec. 1.192 for an appeal brief, which is necessary
to avoid dismissal of the appeal. Section 1.33 requires that an appeal
brief filed in either an application (Sec. 1.33(b)) or a reexamination
proceeding (Sec. 1.33(c)) be signed. Thus, a signed appeal brief under
Sec. 1.192 (which must be filed to avoid dismissal of the appeal) will
serve to, in effect, ratify any unsigned notice of appeal under
Sec. 1.191. Likewise, the former requirement of Sec. 1.191(b) for an
identification of the appealed claims is unnecessary as
Sec. 1.192(c)(3) requires that the appeal brief, inter alia, identify
the ``claims appealed.'' While it is no longer specifically required by
Sec. 1.191(b), an applicant or patent owner should continue to sign
notice of appeals under Sec. 1.191(b) (like other papers) and to also
identify the claims appealed. The change to Sec. 1.191(b), in effect,
permits an appeal brief to constitute an automatic ``correction'' of a
notice of appeal that is not signed or does not identify the appealed
claims.
The failure to timely file an appeal brief will result in dismissal
of an appeal (Sec. 1.192(b)). Thus, the failure to timely file an
appeal brief (signed in compliance with Sec. 1.33(b) or (c)) after the
filing of an unsigned notice of appeal will result in dismissal of the
appeal as of the expiration date (including any extensions of time
actually obtained) for filing such appeal brief. It will not result in
treatment of the application or patent under reexamination as if the
notice of appeal had never been filed. This distinction is significant
in an application containing allowed claims, in that dismissal of an
appeal results in cancellation of the rejected claims and allowance of
the application, not abandonment of the application (which would have
occurred if the notice of appeal had never been filed).
The Office has eliminated the requirements for a notice of appeal
to be signed and to identify the appealed claims to avoid the delay and
expense to the applicant and the Office that is involved in treating a
defective notice of appeal. These changes were not made to encourage
the filing of unsigned notices of appeal or notices of appeal that do
not identify the claims being appealed; rather, a notice of appeal
should be signed and identify the claims appealed. As the change to
Sec. 1.191(b) does not affect other papers submitted with a notice of
appeal (e.g., an amendment under Sec. 1.116) or other actions contained
within the notice of appeal (e.g., an authorization to charge fees to a
deposit account), the failure to sign a notice of appeal (or
accompanying papers) may have adverse effects notwithstanding the
change to Sec. 1.191(b). For example, an unsigned notice of appeal
filed with an authorization (unsigned) to charge the appeal fee to a
deposit account as payment of the notice of appeal fee (Sec. 1.17(b))
will be unacceptable as lacking the appeal fee, as Sec. 1.191(b)
applies to the notice of appeal, but not to an authorization to charge
a deposit account that happens to be included in the notice of appeal.
Section 1.192
Section 1.192(a) is amended by replacement of ``response'' with
``reply''
[[Page 53168]]
in accordance with the change to Sec. 1.111, and to refer to
Sec. 1.17(c) for consistency with the change to Sec. 1.17.
Comment 89: One comment suggested that the appeal process could be
improved by the imposition of a reasonable page limit on briefs.
Response: The suggestion will be reviewed for further
consideration.
Section 1.193
Section 1.193, as well as Secs. 1.194, 1.196, and 1.197, are
amended to change ``the appellant'' to ``appellant'' for consistency.
Section 1.193 is also amended by revision of paragraph (a) into
paragraphs (a)(1) and (a)(2) and revision of paragraph (b) into
paragraphs (b)(1) and (b)(2). Paragraph (a)(1) retains the subject
matter of current paragraph (a), except that the phrase ``and a
petition from such decision may be taken to the Commissioner as
provided in Sec. 1.181'' is deleted as superfluous. Section 1.181(a),
by its terms, authorizes a petition from any action or requirement of
an examiner in the ex parte prosecution of an application which is not
subject to appeal.
Section 1.193(a)(2) specifically prohibits the inclusion of a new
ground of rejection in an examiner's answer, but also expressly
provides that when (1) an amendment under Sec. 1.116 proposes to add or
amend one or more claims, (2) appellant was advised (in an advisory
action) that the amendment under Sec. 1.116 would be entered for
purposes of appeal, and (3) the advisory action indicates which
individual rejection(s) set forth in the action from which the appeal
was taken (e.g., the final rejection) would be used to reject the added
or amended claim(s), then (1) the appeal brief must address the
rejection(s) of the claim(s) added or amended by the amendment under
Sec. 1.116 as indicated in the advisory action, and (2) the examiner's
answer may include the rejection(s) of the claim(s) added or amended by
the amendment under Sec. 1.116 as indicated in the advisory action.
This provision of Sec. 1.193(a)(2) is intended for those situations in
which a rejection is stated (i.e., applied to some claim) in the final
Office action, but due to an amendment under Sec. 1.116 (after final)
such rejection is now applicable to a claim that was added or amended
under Sec. 1.116. For example, when an amendment under Sec. 1.116
cancels a claim (the ``canceled claim'') and incorporates its
limitations into the claim upon which it depends or rewrites the claim
as a new independent claim (the ``appealed claim''), the appealed claim
has become the canceled claim since it now contains the limitations of
the canceled claim (i.e., the only difference between the appealed
claim and the canceled claim is the claim number). In such situations,
the appellant has been given a fair opportunity to react to the ground
of rejection (albeit to a claim having a different claim number). Thus,
the Office does not consider such a rejection to constitute a ``new
ground of rejection'' within the meaning of Sec. 1.193(b).
Nevertheless, Sec. 1.193(b)(2) expressly permits such a rejection on
appeal and further provides that ``[t]he filing of an amendment under
Sec. 1.116 which is entered for purposes of appeal represents
appellant's consent that when so advised any appeal proceed on those
claim(s) added or amended by the amendment under Sec. 1.116 subject to
any rejection set forth in the action from which the appeal was taken''
to eliminate controversy as to the rejection(s) to which claim(s) added
or amended under Sec. 1.116 may be subject on appeal.
The phrase ``individual rejections'' in Sec. 1.193(a)(2) addresses
the situation in which claim 2 (which depends upon claim 1) was
rejected under 35 U.S.C. 103 on the basis of A in view of B and claim 3
(which depends upon claim 1) was rejected under 35 U.S.C. 103 on the
basis of A in view of C, but no claim was rejected under 35 U.S.C. 103
on the basis of A in view of B and C, and an amendment under Sec. 1.116
proposes to combine the limitations of claims 2 and 3 together into new
claim 4. In this situation, the action from which the appeal is taken
sets forth no rejection on the basis of A in view of B and C, and, as
such, Sec. 1.193(a)(2) does not authorize the inclusion of rejection of
newly proposed claim 4 under 35 U.S.C. 103 on the basis of A in view of
B and C in the examiner's answer. Of course, as a claim including the
limitations of both claim 2 and claim 3 is a newly proposed claim in
the application, such an amendment under Sec. 1.116 may properly be
refused entry as raising new issues. Conversely, that Sec. 1.193(a)(2)
would authorize the rejection in an examiner's answer of a claim sought
to be added or amended in an amendment under Sec. 1.116 has no effect
on whether the amendment under Sec. 1.116 is entitled to entry. The
provisions of Sec. 1.116 control whether an amendment under Sec. 1.116
is entitled to entry; the provisions of Sec. 1.193(a)(2) control the
rejections to which a claim added or amended in an amendment under
Sec. 1.116 may be subject in an examiner's answer.
While Sec. 1.193(a) generally prohibits a new ground of rejection
in an examiner's answer, it does not prohibit the examiner from
expanding upon or varying the rationale for a ground of rejection set
forth in the action being appealed. That is, the parenthetical
definition of ``new ground of rejection'' in MPEP 1208.01 as including
an ``other reason for rejection'' of the appealed claims means another
basis for rejection of the appealed claims, and not simply another
argument, rationale, or reason submitted in support of a rejection
previously of record.
There is no new ground of rejection when the basic thrust of the
rejection remains the same such that an appellant has been given a fair
opportunity to react to the rejection. See In re Kronig, 539 F.2d 1300,
1302-03, 190 USPQ 425, 426-27 (CCPA 1976). Where the statutory basis
for the rejection remains the same, and the evidence relied upon in
support of the rejection remains the same, a change in the discussion
of or rationale for supporting the rejection does not constitute a new
ground of rejection. Id. at 1303, 190 USPQ at 427 (reliance upon fewer
references in affirming a rejection under 35 U.S.C. 103 does not
constitute a new ground of rejection). Where the examiner simply
changes (or adds) a rationale for supporting a rejection, but relies
upon the same statutory basis and evidence in support of the rejection,
there is no new ground of rejection.
In any event, an allegation that an examiner's answer contains an
impermissible new ground of rejection is waived if not timely
(Sec. 1.181(f)) raised by way of a petition under Sec. 1.181(a).
Section 1.193(b)(1) provides appellant with a right to file a reply
brief in reply to an examiner's answer which is not dependent upon a
new point of argument being present in the examiner's answer. The
former practice of permitting reply briefs based solely on a finding of
a new point of argument, as set forth in former paragraph (b), is
eliminated thereby preventing present controversies as to whether a new
point of argument has been made by the primary examiner. Appellant
would be assured of having the last submission prior to review by the
Board. Upon receipt of a reply brief, the examiner would either
acknowledge its receipt and entry or reopen prosecution to respond to
any new issues raised in the reply brief. Should the Board desire to
remand the appeal to the primary examiner for comment on the latest
submission by appellant or to clarify an examiner's answer (MPEP 1211,
1211.01, and 1212), appellant would be entitled to submit a reply brief
in reply to the answer by the examiner to the Board's inquiry, which
answer would be by way of a supplemental examiner's answer.
[[Page 53169]]
Thus, Sec. 1.193(a)(2) does not permit a new ground of rejection in
an examiner's answer, and Sec. 1.193(b)(1) does not, in the absence of
a remand by the Board, permit an answer (other than a mere
acknowledgment) to a timely filed reply brief. Section 1.193 requires
the examiner to reopen prosecution to either: (1) enter a new ground of
rejection; or (2) provide a substantive answer to a reply brief.
Section 1.193(b)(2) provides that if appellant desires that the
appeal process be reinstated in reply to the examiner's reopening of
prosecution under Sec. 1.193(b)(1), appellant would be able to file a
request to reinstate the appeal and a supplemental appeal brief as an
alternative to filing a reply (under Secs. 1.111 or 1.113, as
appropriate) to the Office action. Amendments, affidavits or other new
evidence, however, would not be entered if submitted with a request to
reinstate the appeal. Like a reply brief, a supplemental appeal brief
submitted pursuant to Sec. 1.193(b)(2)(ii) need not reiterate the
contentions set forth in a previously filed appeal brief (or reply
brief), but need only set forth appellant's contention with regard to
the new ground of rejection(s) raised in the Office action that
reopened prosecution. The supplemental appeal brief will automatically
incorporate all issues and arguments raised in the previously filed
appeal brief (or reply brief), unless appellant indicates otherwise.
The intent of the change to Sec. 1.193(b) is to give appellant
(rather than the examiner) the option to continue the appeal if desired
(particularly under Pub. L. 103-465), or to continue prosecution before
the examiner in the face of a new ground of rejection. Should a
supplemental appeal brief be elected as the reply to the examiner
reopening prosecution based on a new ground of rejection under
Sec. 1.193(b)(1), the examiner may under Sec. 1.193(a)(1) issue an
examiner's answer. Where an appeal is reinstated pursuant to
Sec. 1.193(b)(2)(ii), no additional appeal fee is currently required.
Comment 90: A number of comments favored permitting appellants to
file a reply brief as a matter of right. One comment argued that the
Board, rather than the examiner, should determine whether the appellant
should be permitted to file a reply brief.
Response: Section 1.193 as adopted permits an appellant to file a
reply brief as a matter of right. This change eliminates the authority
of an examiner to refuse entry of a timely filed reply brief.
Comment 91: One comment suggested that a reasonable page limit
could be placed on reply briefs.
Response: The comment will be studied.
Comment 92: A number of comments opposed the proposed change to
require a substitute appeal brief, rather than a reply brief. These
comments argued that requiring an entirely new brief reiterating
previously submitted arguments, rather than a mere reply to the
examiner's answer, would result in a less readable and coherent record.
Response: Section 1.193 as adopted permits a reply brief (rather
than a substitute appeal brief) where the appellant desires to reply to
an examiner's answer or and a supplemental appeal brief where the
appellant requests reinstatement of an appeal. Contentions (or
information) set forth in a previously filed appeal (or reply brief)
need not be reiterated in a reply brief or supplemental appeal brief.
Comment 93: A number of comments favored prohibiting a new ground
of rejection in an examiner's answer.
Response: Section 1.193 as adopted prohibits a new ground of
rejection in an examiner's answer, except under the limited
circumstance specifically provided for in Sec. 1.193(a)(2).
Comment 94: Two comments suggested that if the examiner reopens
prosecution after an appeal brief has been filed, Secs. 1.193 or 1.113
should be amended to state that the action issued by the examiner
cannot be made final.
Response: The finality of an Office action is determined under MPEP
706.07(a), which states that ``any second or subsequent actions on the
merits shall be final, except where the examiner introduces a new
ground of rejection not necessitated by amendment of the application by
applicant.'' Whether the action subsequent to the reopening of
prosecution may be made final will be determined solely by whether such
action includes a new ground of rejection not necessitated by amendment
of the application by the applicant. Thus, where an amendment under
Sec. 1.116 entered as a result of reopening of prosecution necessitates
a new ground of rejection, the action immediately subsequent to the
reopening of prosecution may be made final. See MPEP 706.07(a) and
1208.01.
Comment 95: One comment would go further in permitting applicant to
reinstate an appeal as a reply to the examiner reopening prosecution by
permitting amendments, affidavits and other evidence to address the new
ground of rejection. Another comment desired the ability to reply
directly to the Board for any new ground of rejection raised by the
Board.
Response: The comments amount to having the Board conduct the
prosecution of the application and not act as an appellate review.
Amended claims, affidavits and other evidence should be seen by the
examiner first for a determination as to whether a new search is
required, to conduct any newly required search, and also to evaluate
the newly submitted and any newly discovered material at the
examination level. See comments to Sec. 1.196(d).
Comment 96: One comment would further amend Sec. 1.193 to waive any
subsequent appeal notice fee and appeal brief fee, and start the time
period for extension of patent from the time of first appeal in that if
the examiner did his or her duty properly there would be no need to
reopen prosecution.
Response: Under current practice, a new fee is due for each notice
of appeal, each brief, and each request for an oral hearing, so long as
a decision on the merits by the Board resulted from the prior notice of
appeal, brief, and request for an oral hearing. Thus, when an examiner
reopens prosecution after appeal but prior to a decision by the Board
on the appeal, the fee for the notice of appeal, brief, and request for
an oral hearing will apply to a later appeal. The change to Sec. 1.193
in this Final Rule is not germane to patent term extension under 35
U.S.C. 154(b) and Sec. 1.701.
In any event, that prosecution is reopened subsequent to the filing
of an appeal brief is not necessarily a concession that the rejection
of the appealed claims was in error. It is often the case that
prosecution is reopened subsequent to the filing of an appeal brief in
the situation in which the examiner considers the rejection of the
appealed claims to be appropriate (and thus the appeal to be without
merit), but discovers a better basis for rejecting the claims at issue
(e.g., even better prior art references). To characterize an examiner,
who decides to reopen prosecution to avoid wasting the Board's
resources (and the appellant's time) with a rejection that is not the
best possible rejection of the appealed claims, as an examiner who is
not properly performing his or her duties, would be non-sensical.
Comment 97: One comment opposed prohibiting a new ground of
rejection in an examiner's answer. The comment argued that this change
will result in unnecessary delays in prosecution.
Response: The proposal to prohibit a new ground of rejection in an
examiner's answer otherwise received overwhelming support. Under Pub.
L.
[[Page 53170]]
103-465, any delay in prosecution resulting from the reopening of
prosecution is to the detriment of the applicant. Thus, it is
considered appropriate to give the applicant the choice of whether to
prosecute the application before the examiner or reinstate the appeal.
Section 1.194
Section 1.194(b) is amended to provide that a request for an oral
hearing must be filed in a separate paper, and to refer to Sec. 1.17(d)
for consistency with the change to Sec. 1.17.
Section 1.194(c) is amended to provide that appellant will be
notified when a requested oral hearing is unnecessary (e.g., a remand
is required).
Comment 98: One comment argued that Sec. 1.194 leaves an open
statement as to when the Board may decide that an oral hearing is not
necessary, in that this section does not limit considering an oral
hearing not necessary to when the application has been remanded to the
examiner.
Response: The situation in which an application has been remanded
to the examiner was simply an exemplary situation of special
circumstances in which the Board may determine that an oral hearing is
not necessary. Section 1.194 was not meant to limit the discretion of
the Board to determine that an oral hearing is not necessary to those
situations when the application has been remanded to the examiner.
Section 1.196
Section 1.196 paragraphs (b) and (d) are combined by amending
paragraph Sec. 1.196(b) to specifically provide therein for a new
ground of rejection for both appealed claims and for allowed claims
present in an application containing claims that have been appealed
rather than the current practice under Sec. 1.196(d) of recommending a
rejection of allowed claims that is binding on the examiner. The effect
of an explicit rejection of an allowed claim by the Board is not seen
to differ from a recommendation of a rejection and would serve to
advance the prosecution of the application by having the rejection made
at an earlier date by the Board rather than waiting for the application
to be forwarded and acted upon by the examiner. The former practice
that the examiner is not bound by the rejection should appellant elect
to proceed under Sec. 1.196(b)(1) and an amendment or showing of facts
not previously of record in the opinion of the examiner overcomes the
new ground of rejection, is not changed. A period of two months is now
explicitly set forth for a reply to a decision by the Board containing
a new ground of rejection pursuant to Sec. 1.196(b), which would alter
the one month previously set forth for replies to recommended
rejections of previously allowed claims. See MPEP 1214.01. Extensions
of time continue to be governed by Sec. 1.196(f) and Sec. 1.136(b) (and
not by Sec. 1.136(a)).
The last sentence of Sec. 1.196(b)(2) is amended to clarify that
appellants do not have to both appeal and file a request for rehearing
where only a rehearing of a portion of the decision is sought. A
decision on a request for rehearing will incorporate the earlier
decision for purposes of appeal of the earlier decision in situations
in which only a partial request for rehearing has been filed.
Additionally, it is clarified that decisions on rehearing are final
unless noted otherwise in the decision in that under some circumstances
it may not be appropriate to make a decision on rehearing final as is
currently automatically provided for. Section 1.196(b) is also amended
to clarify that the appellant must exercise one of the two options with
respect to the new ground of rejection under Sec. 1.196(b) to avoid
termination of proceedings (Sec. 1.197(c)) as to the rejected claims.
Section 1.196(b)(2) (and Secs. 1.197(b) and 1.304(a)(1)) are
amended to change the phrase ``request for reconsideration'' to
``request for rehearing'' for consistency with 35 U.S.C. 7(b). See In
re Alappat, 33 F.3d 1526, 1533, 31 USPQ2d 1545, 1548 (Fed. Cir.
1994)(en banc)(noting ``imprecise regulation drafting'' in regard to
the phrase ``request for reconsideration'' in Sec. 1.197).
Section 1.196(d) is amended to provide the Board with explicit
authority to have an appellant clarify the record in addition to what
is already provided by way of remand to the examiner (MPEP 1211), and
appellant's compliance with the requirements of an appeal brief
(Sec. 1.192(d)). Section 1.196(d) specifically provides that an
appellant may be required to address any matter that is deemed
appropriate for a reasoned decision on the pending appeal, which may
include: (1) The applicability of particular case law that has not been
previously identified as relevant to an issue in the appeal; (2) the
applicability of prior art that has not been made of record; or (3) the
availability of particular test data that would be persuasive in
rebutting a ground of rejection. Section 1.196(d) also provides that
appellant would be given a non-extendable time period (not a time
limit) within which to reply to any requirement under Sec. 1.196(d).
Comment 99: One comment suggested that Sec. 1.196(b) would appear
to authorize the Board to reverse a restriction requirement, as
Sec. 1.196(b) authorizes the Board to reject any pending claim. The
comment suggested that Sec. 1.196(b) authorize the Board to reject any
examined (rather than pending) claim.
Response: Section 1.196(b) authorizes, but does not require, the
Board to reject claims not involved in the appeal. The Board has held
that a restriction requirement is not an adverse decision within the
meaning of 35 U.S.C. 7 and 134 subject to appeal, and the CCPA and
Federal Circuit have supported this position. See In re Hengehold, 440
F.2d 1395, 169 USPQ 473 (CCPA 1971); see also In re Watkinson, 900 F.2d
230, 14 USPQ2d 1407 (Fed. Cir. 1990). Thus, concerns that the Board
will use the provisions of Sec. 1.196(b) to review restriction
requirements are misguided.
Comment 100: Several comments opposed the change to Sec. 1.196(d)
on the basis that it places the Board in the position of acting as an
examiner in the first instance.
Response: Section 1.196(d) authorizes, but does not require, the
Board to require an appellant to clarify the record without remanding
the application to the examiner. This change will authorize the Board
to obtain clarification directly from the appellant in those situations
in which the Board considers a remand to or further action by the
examiner unnecessary. Where the Board considers action by an examiner
in the first instance to be necessary or desirable, the Board retains
the authority to remand the application to the examiner for such
action. Additionally, after reply to an inquiry under Sec. 1.196(d)
(e.g., does there exist test data that would be persuasive in rebutting
a particular ground of rejection), a remand to the examiner may be
deemed to be appropriate (e.g., to evaluate test data received in reply
to an inquiry).
Section 1.197
Section 1.197(b) is amended to eliminate its use of the passive
voice. Section 1.197(b) is also amended to change ``reconsideration or
modification'' to ``rehearing'' for consistency with 35 U.S.C. 7(b).
For consistency with the two-month period set forth in Sec. 1.196(b),
Sec. 1.197(b) is also amended to provide a two-month period (rather
than a one-month period) within which an appellant may file the single
request for rehearing permitted by Sec. 1.197(b).
No comments were received regarding the proposed change to
Sec. 1.197.
[[Page 53171]]
Section 1.291
Section 1.291(c) is amended by removing the blanket limitation of
one protest per protestor and would provide for a second or subsequent
submission in the form of additional prior art. Mere argument that is
later submitted by an initial protestor would continue not to be
entered and would be returned unless it is shown that the argument
relates to a new issue that could not have been earlier raised. See
MPEP 1901.07(b). Although later submitted prior art would be made of
record by a previous protestor without a showing that it relates to a
new issue, it should be noted that entry of later submitted prior art
in the file record does not assure its consideration by the examiner if
submitted late in the examination process. Accordingly, initial
protests should be as complete as possible when first filed.
In view of the amendment to Sec. 1.291(a) in the ``Miscellaneous
Changes in Patent Practice'' Final Rule (discussed supra) to require
that a protest be filed prior to the mailing of a notice of allowance
under Sec. 1.311 to be considered timely (Sec. 1.291(a)(1)), the
restriction of protests by number is deemed unnecessary and is
recognized as ineffective, in that a party may effectively file
multiple protests by submitting each protest through a third party
agent acting on behalf of such party.
Comment 101: One comment suggested that permitting more than one
submission by a particular party relating to prior art poses a risk
that a third party may sequentially submit individual pieces of prior
art as a delaying factor.
Response: Any delay in submission of a piece of prior art by a
third party poses the risk that the later submitted prior art will not
be considered, particularly if it is seen as part of a pattern. The
review of any piece of prior art, assuming it is not part of a large
package, to determine its value is not seen to result in any delay in
issuing an Office action. It is recognized that some delay may result
where a piece of prior art in a second submission by a third party is
utilized in a rejection that could have been made sooner if that art
had been submitted earlier; however, on balance the Office would prefer
to delay prosecution of an application and consider and apply a newly
submitted reference not found by the examiner rather than issue an
invalid claim.
Section 1.291(c) is also amended to (1) delete the sentence ``[t]he
Office may communicate with the applicant regarding any protest and may
require the applicant to reply to specific questions raised by the
protest'' as superfluous as the Office may communicate with an
applicant regarding any matter, and require the applicant to reply to
specific questions, concerning the application; (2) replace ``respond''
with ``reply'' in accordance with the change to Sec. 1.111.
Section 1.293
Section 1.293 paragraph (c) is amended to replace the reference to
Sec. 1.106(e) with a reference to Sec. 1.104(c)(5), to reflect a
transfer of material.
Section 1.294
Section 1.294 paragraph (b) is amended by replacement of
``response'' with ``reply'' in accordance with the change to
Sec. 1.111.
No comments were received regarding the proposed change to
Sec. 1.294.
Section 1.304
Section 1.304(a)(1) is amended to replace ``consideration'' by
``reconsideration'' to correct a typographical error.
No comments were received regarding the proposed change to
Sec. 1.304.
Section 1.312
Section 1.312(b) is amended to have a reference to Sec. 1.175(b)
added in view of the change in Sec. 1.175(b) referencing Sec. 1.312(b).
No comments were received regarding the proposed change to
Sec. 1.312.
Section 1.313
Section 1.313 will not be amended with the addition of paragraph
(c) informing applicants that unless written notification is received
that the application has been withdrawn from issue at least two weeks
prior to the projected date of issue, applicants should expect that the
application will issue as a patent. The matter will be further studied.
It should be noted, however, that once an application has issued, the
Office is without authority to grant a request under Sec. 1.313
notwithstanding submission of the request prior to issuance of the
patent.
Section 1.316
Section 1.316 is amended to include only the language of former
Sec. 1.316(a). The subject matter of former paragraphs (b) through (f)
of Sec. 1.316 were added to Sec. 1.137.
No comments were received regarding the proposed change to
Sec. 1.316.
Section 1.317
Section 1.317 is amended to include only the language of former
Sec. 1.317(a). The subject matter of former paragraphs (b), (c), (e)
and (f) of Sec. 1.317 were added to Sec. 1.137.
No comments were received regarding the proposed change to
Sec. 1.317.
Section 1.318
Section 1.318 is removed and reserved as being an internal Office
instruction.
See comments relating to Sec. 1.101.
Section 1.324
Section 1.324 is amended by creating paragraphs (a) and (b). The
requirement for factual showings to establish a lack of deceptive
intent is deleted, with a statement to that effect being sufficient,
paragraph (a).
Office practice is to require the same type and character of proof
of facts as in petitions under Sec. 1.48(a). See MPEP 1481. Unlike
former Sec. 1.48, former Sec. 1.324 contained no diligence requirement.
See Stark v. Advanced Magnetics, Inc., 29 F.3d 1570, 1574, 31 USPQ2d
1290, 1293 (Fed. Cir. 1994). Section 1.324 (and Sec. 1.48) as adopted
contain no diligence requirement, for the reasons set forth in the
discussion of Sec. 1.48.
Section 1.324(b)(1) is amended to explicitly require a statement
relating to the lack of deceptive intent only from each person who is
being added or deleted as an inventor, as opposed to the current
practice of requiring a statement from each original named inventor and
any inventor to be added.
The current requirements for an oath or declaration under Sec. 1.63
by each actual inventor is replaced, paragraph (b)(2) of Sec. 1.324, by
a statement from the current named inventors who have not submitted a
statement under paragraph (b)(1) of Sec. 1.324 either agreeing to the
change of inventorship or stating that they have no disagreement in
regard to the requested change. Not every original named inventor would
necessarily have knowledge of each of the contributions of the other
inventors and/or how the inventorship error occurred, in which case
their lack of disagreement to the requested change would be sufficient.
Paragraph (b)(3) of Sec. 1.324 requires the written consent of the
assignees of all parties who submitted a statement under paragraph
(b)(1) and (b)(2) of this section similar to the current practice of
consents by the assignees of all the existing patentees. A
clarification reference to Sec. 3.73(b) is added.
Paragraph (b)(4) of Sec. 1.324 states the requirement for a
petition fee as set forth in Sec. 1.20(b).
No adverse comments were received regarding the proposed change to
Sec. 1.324.
[[Page 53172]]
Section 1.325
The proposed removal of Sec. 1.325 is withdrawn. See comments
relating to Sec. 1.101.
Section 1.351
The proposed removal of Sec. 1.351 is withdrawn. See comments
relating to Sec. 1.101.
Section 1.352
Section 1.352 is removed and reserved as unnecessary as an internal
instruction.
See comments relating to Sec. 1.101.
Section 1.366
Section 1.366(b) is amended to remove the term ``certificate'' as
unnecessary. Section 1.366(c) is amended for clarity by changing
``serial number'' to ``application number,'' which consists of the
serial number and the series code (e.g., ``08/'').
Paragraph (d) removes the request for the information concerning
the issue date of the original patent and filing date of the
application for the original patent as unnecessary. The term ``serial''
is also removed from paragraph (d).
No comments were received regarding the proposed change to
Sec. 1.366.
Section 1.377
Section 1.377(c) is amended to remove the requirement that the
petition be verified in accordance with the change to Secs. 1.4(d)(2)
and 10.18.
No comments were received regarding the proposed change to
Sec. 1.377.
Section 1.378
Section 1.378(d) is amended to remove the requirement that the
statement be verified in accordance with the change to Secs. 1.4(d)(2)
and 10.18.
No comments were received regarding the proposed change to
Sec. 1.378.
Section 1.425
Section 1.425 is amended by removing paragraph (a) and its
requirement for proof of the pertinent facts relating to the lack of
cooperation or unavailability of the inventor for which status is
sought. In addition, Sec. 1.425 is further amended by deleting
paragraph (b) and its requirements for proof of the pertinent facts,
presence of a sufficient proprietary interest, and a showing that such
action is necessary to preserve the rights of the parties or to prevent
irreparable damage. Additionally, the requirement that the last known
address of the non-signing inventor be stated has been removed. The
current requirements are thought to be unnecessary in view of the need
for submission of the same information in a petition under Sec. 1.47
during the national stage. The paragraph added parallels the
requirement in PCT Rule 4.15 for a statement explaining to the
satisfaction of the Commissioner the lack of the signature concerned
for submission of the international application.
No comments were received regarding the proposed change to
Sec. 1.425.
Section 1.484
Section 1.484 paragraphs (d) through (f) are amended by replacement
of ``response'' and ``respond'' with ``reply'' in accordance with the
change to Sec. 1.111.
No comments were received regarding the proposed change to
Sec. 1.484.
Section 1.485
Section 1.485(a) is amended by replacement of ``response'' with
``reply'' in accordance with the change to Sec. 1.111.
No comments were received regarding the proposed change to
Sec. 1.485.
Section 1.488
Section 1.488(b)(3) is amended by replacement of ``response'' with
``reply'' in accordance with the change to Sec. 1.111.
No comments were received regarding the proposed change to
Sec. 1.488.
Section 1.492
Section 1.492 is amended to add new paragraph (g). See the
amendment to Sec. 1.16 adding a new paragraph (m).
No comments were received regarding the proposed change to
Sec. 1.492.
Section 1.494
Section 1.494(c) is amended by replacement of ``response'' with
``reply'' in accordance with the change to Sec. 1.111.
No comments were received regarding the proposed change to
Sec. 1.494.
Section 1.495
Section 1.495(c) is amended by replacement of ``response'' with
``reply'' in accordance with the change to Sec. 1.111.
No comments were received regarding the proposed change to
Sec. 1.495.
Section 1.510
Section 1.510(e) is amended to replace a reference to Sec. 1.121(f)
with a reference to Sec. 1.530(d), which sets forth the requirements
for an amendment in a reexamination proceeding.
No comments were received regarding the proposed change to
Sec. 1.510.
Section 1.530
The title has been changed by the addition of a semicolon to
clarify that the section is intended to cover not only amendments
submitted with the statement, but also amendments submitted at any
other stage of the reexamination proceedings.
Section 1.530(d) is replaced by paragraphs (d)(1) through (d)(7)
removing the reference to Sec. 1.121(f) in accordance with the deletion
of Sec. 1.121(f). The manner of proposing amendments in reexamination
proceedings is governed by Sec. 1.530 (d)(1) through (d)(6). Paragraph
(d)(1) is directed to the manner of proposing amendments in the
specification, other than in the claims. Paragraph (d)(1)(i) requires
that amendments including deletions be made by submission of a copy of
one or more newly added or rewritten paragraphs with markings, except
that an entire paragraph may be deleted by a statement deleting the
paragraph without presentation of the text of the paragraph. Paragraph
(d)(1)(ii) requires indication of the precise point in the
specification where the paragraph which is being amended is located.
When a change in one sentence, paragraph, or page results in only
format changes to other pages (e.g., shifting of non-amended text to
subsequent pages) not otherwise being amended, such format changes are
not to be submitted. Paragraph (d)(1)(iii) defines the markings set
forth in paragraph (d)(1)(ii). Proposed paragraph (d)(1)(iii), relating
to a requirement for submission of all amendments be presented when any
amendment to the specification is made, was not implemented.
Paragraph (d)(2) of Sec. 1.530 relates to the manner of proposing
amendments to the claims in reexamination proceedings. Paragraph
(d)(2)(i)(A) of Sec. 1.530 requires that a proposed amendment include
the entire text of each patent claim which is proposed to be amended by
the current amendment and each proposed new claim being added by the
current amendment. Additionally, provision has been made for the
cancellation of a patent claim or of a previously proposed new claim by
a direction to cancel without the need for marking by brackets.
Paragraph (d)(2)(i)(B) prohibits the renumbering of the patent claims
and requires that any proposed new claims follow the number of the
highest numbered patent claim. Paragraph (d)(2)(i)(C) identifies the
type of markings required by paragraph (d)(2)(i)(A), single underlining
for added material and single brackets for material deleted.
[[Page 53173]]
Paragraph (d)(2)(ii) requires the patent owner to set forth the
status (i.e., pending or cancelled) of all patent claims, and of all
currently proposed new claims, as of the date of the submission of each
proposed amendment. The absence of claim status would result in a
notice of informal response.
Paragraph (d)(2)(iii) of Sec. 1.530 requires an explanation of the
support in the disclosure for any amendments to the claims presented
for the first time on pages separate from the amendments along with any
additional comments. The absence of an explanation would result in a
notice of informal response.
Proposed paragraphs (d)(2) (iv) and (v), relating to a requirement
for presentation of all amendments as of the date any amendment to the
claims is made, and to the treatment of the failure to submit a copy of
any added claim as a direction to cancel that claim, were not
implemented.
Paragraph (d)(3) of Sec. 1.530 provides that: (1) an amendment may
not enlarge the scope of the claims of the patent, (2) no amendment may
be proposed for entry in an expired patent, and (3) no amendment will
be incorporated into the patent by certificate issued after the
expiration of the patent.
Paragraph (d)(4) of Sec. 1.530 provides that amendments proposed to
a patent during reexamination proceedings will not be effective until a
reexamination certificate is issued. This replaces paragraph (e) of
Sec. 1.530, which has been removed and reserved.
Paragraph (d)(5) of Sec. 1.530 provides the criteria for the form
of amendments in reexamination proceedings (i.e., paper size must be
either letter size or A4 size, and not legal size).
Paragraph (d)(6) of Sec. 1.530 clarifies that proposed amendments
to the patent drawing sheets are not permitted and that any change must
be by way of a new sheet of drawings with the proposed amended figures
being identified as ``amended'' and with proposed added figures
identified as ``new'' for each sheet that has changed. Material in
paragraph (d)(6) has been transferred from cancelled Sec. 1.115.
Paragraph (d)(7) of Sec. 1.530, has been added in view of the
deletion of Sec. 1.115 paragraph (d), requires amendment of the
disclosure in certain situations (i.e., to correct inaccuracies of
description and definition) and to secure substantial correspondence
between the claims, the remainder of the specification, and the
drawings. The previous requirement for ``correspondence'' has been
modified by use of ``substantial correspondence.'' See comments to
Sec. 1.115.
Paragraph (d)(8) of Sec. 1.530 has been added to clarify that all
amendments to the patent being reexamined must be made relative to
(i.e., vis-a-vis) the patent specification in effect as of the date of
the filing of the request for reexamination (the patent specification
includes the claims). If there was a prior change to the patent (made
via a prior reexamination certificate, reissue of the patent,
certificate of correction, etc.), the first amendment must be made
relative to the patent specification as changed by the prior proceeding
or other mechanism for changing the patent. In addition, all amendments
subsequent to the first amendment must be made relative to the patent
specification in effect as of the date of the filing of the request for
reexamination, and not relative to the prior amendment.
Paragraph (e) of Sec. 1.530 has been removed with the material
formerly contained therein transferred to new paragraph (d)(4) of
Sec. 1.530.
The proposed change in Secs. 1.530, 1.550, and 1.560 to replace
``response,'' ``responses'' and ``respond'' with ``reply'' in
accordance with the change to Sec. 1.111 is not being adopted at this
time. As the term ``reply'' in a reexamination proceeding refers to the
``reply'' of a third party requester (Sec. 1.535), the Office is
withdrawing for further consideration what term should consistently be
used for the ``reply'' or ``response'' by the patent owner and what
term should consistently be used for the ``reply'' by a third party
requester.
Section 1.550
Paragraph (a) of Sec. 1.550 is amended to conform the citation to
Secs. 1.104 through 1.119 to the changes to Secs. 1.104 through 1.119.
Paragraphs (b) and (e) of Sec. 1.550 are amended for clarification
purposes. Paragraph (e) of Sec. 1.550 clarifies present Office practice
of requiring, after filing of a request for reexamination by a third
party requester, the service of any document filed by either the patent
owner or the third party on the other party in the reexamination
proceeding in the manner provided in Sec. 1.248.
No comments were received regarding the proposed change to
Sec. 1.550.
Section 1.770
Section 1.770 is amended by replacement of ``response'' with
``reply'' in accordance with the change to Sec. 1.111.
No comments were received regarding the proposed change to
Sec. 1.770.
Section 1.785
Section 1.785 is amended by replacement of ``response'' with
``reply'' in accordance with the change to Sec. 1.111.
No comments were received regarding the proposed change to
Sec. 1.785.
Section 1.804
Section 1.804(b) is clarified grammatically by changing ``shall
state'' to ``stating'' and is amended to delete the requirement that
the statement be verified in accordance with the change to
Secs. 1.4(d)(2) and 10.18.
No comments were received regarding the proposed change to
Sec. 1.804.
Section 1.805
Section 1.805(c) is amended by deleting ``verified'' in accordance
with the change to Secs. 1.4(d) and 10.18 and removing unnecessary
language noting that an attorney or agent registered to practice need
not verify their statements.
No comments were received regarding the proposed change to
Sec. 1.805.
Part 3
Portions of Part 3 are amended to incorporate Part 7, which part is
removed and reserved.
No comments were received regarding the proposed change to Part 3.
Section 3.11
Section 3.11(a) is created for the current subject matter and a new
paragraph (b) is added citing Executive Order 9424 of February 18, 1944
(9 FR 1959, 3 CFR 1943-1949 Comp., p. 303) and its requirements that
several departments and other executive agencies of the Government
forward items for recording.
Section 3.21
Section 3.21 is amended to replace the reference to
``Sec. 1.53(b)(1)'' with a reference to ``Sec. 1.53(b)'' and to delete
the reference to ``Sec. 1.62'' for consistency with the amendment to
Sec. 1.53 and the deletion of Sec. 1.62.
Section 3.26
Section 3.26 is amended to remove the requirement that an English
language translation be verified in accordance with the change to
Secs. 1.4(d)(2) and 10.18.
Section 3.27
The current subject matter of Sec. 3.27 is designated as paragraph
(a), and a paragraph (b) is added to cite Executive Order 9424 and a
mailing address therefor.
Section 3.31
Section 3.31(c) is added to require that: (1) The cover sheet must
indicate
[[Page 53174]]
that the document is to be recorded on the Governmental Register; (2)
the document is to be recorded on the Secret Register (if applicable);
and (3) the document does not affect title (if applicable).
Section 3.41
The current subject matter of Sec. 3.41 is designated as paragraph
(a), and a paragraph (b) is added to specify when no recording fee is
required for documents required to be filed pursuant to Executive Order
9424.
Section 3.51
Section 3.51 is amended by removing the term ``certification'' as
unnecessary in accordance with the change to Secs. 1.4(d)(2) and 10.18.
Section 3.58
Section 3.58 is added to provide for the maintaining of a
Department Register to record Government interests required by
Executive Order 9424 in Sec. 3.58(a). New Sec. 3.58(b) provides that
the Office maintain a Secret Register to record Government interests
also required by the Executive Order.
Section 3.73
Section 3.73(b) is amended to remove the sentence requiring an
assignee to specifically state that the evidentiary documents have been
reviewed and to certify that title is in the assignee seeking to take
action. The sentence is deemed to be unnecessary in view of the
amendment to Secs. 1.4(d) and 10.18.
Section 3.73 paragraph (b) has also been amended to replace the
language ``assignee of the entire right, title and interest'' with
``assignee.'' This change provides for the applicability of the
paragraph to assignees with a partial interest, such as is often
encountered in reissue applications.
Section 3.73(b) is clarified by addition of a reference to an
example of documentary evidence that can be submitted.
Part 5
No comments were received regarding the proposed change to Part 5.
Section 5.1
Section 5.1 is amended by removing the current subject matter as
being duplicative of material in the other sections of this part and is
replaced by subject matter deleted from Sec. 5.33.
Section 5.2
Section 5.2(b) is amended by removing the subject matter as being
duplicative of material in the other sections of this part and is
replaced with subject matter of the first sentence from Sec. 5.7.
Section 5.2 paragraphs (c) and (d) are removed as repetitive of
material in the other sections of this part.
Section 5.3
Section 5.3 is amended by replacement of ``response'' with
``reply'' in accordance with the change to Sec. 1.111.
Section 5.4
Section 5.4 is amended by removing unnecessary subject matter from
paragraph (a), eliminating, in paragraph (d), the requirement that the
petition be verified in accordance with the amendment to
Secs. 1.4(d)(2) and 10.18, and by adding the first and second sentences
of Sec. 5.8 to Sec. 5.4(d).
Section 5.5
Section 5.5 is amended by removing unnecessary subject matter from
paragraph (b) and by replacing current Sec. 5.5(e) with subject matter
removed from Sec. 5.6(a).
Section 5.6
Section 5.6 is removed and reserved with the subject matter of
Sec. 5.6(a) being placed in Sec. 5.5(e).
Section 5.7
Section 5.7 is removed and reserved with the first sentence thereof
being placed in Sec. 5.2(b).
Section 5.8
Section 5.8 is removed and reserved with the subject matter from
the first and second sentences thereof being placed in Sec. 5.4(d).
Sections 5.11
Section 5.11, paragraphs (b), (c) and (e), are amended to update
the references to other parts of the Code of Federal Regulations.
Section 5.12
Section 5.12(b) is amended to clarify that the petition fee
(Sec. 1.17(h)) is required only when expedited handling is sought for
the petition.
Section 5.13
Section 5.13 is amended by removing the last two sentences which
are considered to be unnecessary. Section 5.13 is also amended to
remove the language concerning the requirement for the petition fee
(Sec. 1.17(h)) for expedited handling of a petition under Sec. 5.12(b),
which is duplicative of the provisions of Sec. 5.12(b). This amendment
does not change current practice.
Section 5.14
Section 5.14(a) is amended by removing unnecessary subject matter
and replacing ``serial number'' with the more appropriate designation
``application number.'' Section 5.14(a) is also amended to remove the
language concerning the requirement for the petition fee (Sec. 1.17(h))
for expedited handling of a petition under Sec. 5.12(b), which is
duplicative of the provisions of Sec. 5.12(b). This amendment does not
change current practice.
Section 5.15
Section 5.15, paragraphs (a), (b), (c), and (e), are amended by
removing unnecessary subject matter and to update the references to
other parts of the Code of Federal Regulations.
Section 5.16
Section 5.16 is removed and reserved as unnecessary.
Section 5.17
Section 5.17 is removed and reserved as unnecessary.
Section 5.18
Section 5.18 is amended to update the references to other parts of
the Code of Federal Regulations.
Sections 5.19
Sections 5.19 (a) and (b) are amended to update the references to
other parts of the Code of Federal Regulations. Section 5.19(c) is
removed as unnecessary.
Section 5.20
Section 5.20 is amended to include only the language of former
Sec. 5.20(a).
Section 5.25
Section 5.25(c) is removed as unnecessary.
Section 5.31
Section 5.31 is removed and reserved as unnecessary.
Section 5.32
Section 5.32 is removed and reserved as unnecessary.
Section 5.33
Section 5.33 is removed and reserved and its subject matter added
to Sec. 5.1.
Part 7
Part 7 is removed and reserved as the substance thereof is
incorporated into part 3.
No comments were received regarding the proposed change to Part 7.
[[Page 53175]]
Part 10
Section 10.18
The heading of Sec. 10.18 is amended to read ``[s]ignature and
certificate for correspondence filed in the Patent and Trademark
Office'' to reflect that it, as amended, applies to correspondence
filed by non-practitioners as well as practitioners.
Section 10.18(a) is amended to provide that for all documents filed
in the Office in patent, trademark, and other non-patent matters,
except for correspondence that is required to be signed by the
applicant or party, each piece of correspondence filed by a
practitioner in the Patent and Trademark Office must bear a signature,
personally signed by such practitioner, in compliance with
Sec. 1.4(d)(1). This amendment is simply a clarification of the
requirements of former Sec. 10.18(a).
Section 10.18 is further amended (in Sec. 10.18 paragraphs (b) and
(c)) to include the changes proposed to Sec. 1.4 paragraphs (d)(2) and
(d)(3). These changes to 37 CFR Part 10 are to avoid a dual standard
between 37 CFR Parts 1 and 10 as to practitioners. In addition, by
operation of Sec. 1.4(d)(2), the provisions of Sec. 10.18 paragraphs
(b) and (c) are applicable to any party (whether a practitioner or non-
practitioner) presenting any paper to the Office. As any party (whether
a practitioner or non-practitioner) presenting any paper to the Office
is subject to the provisions of Sec. 10.18 paragraphs (b) and (c), this
change also avoids a dual standard between practitioners and non-
practitioners as to the certification provisions of Sec. 10.18(b) and
the sanctions provisions of Sec. 10.18(c). The only difference between
a practitioner and a non-practitioner as to Sec. 10.18 paragraphs (b)
and (c) is that a practitioner may also be subject to disciplinary
action for violations of Sec. 10.18(b) in addition to or in lieu of
sanctions under Sec. 10.18(c).
Section 10.18(b)(1) is specifically amended to provide that, by
presenting to the Office (whether by signing, filing, submitting, or
later advocating) any paper, the party presenting such paper (whether a
practitioner or non-practitioner) is certifying that all statements
made therein of the party's own knowledge are true, all statements made
therein on information and belief are believed to be true, and all
statements made therein are made with the knowledge that whoever, in
any matter within the jurisdiction of the Patent and Trademark Office,
knowingly and willfully falsifies, conceals, or covers up by any trick,
scheme, or device a material fact, or makes any false, fictitious or
fraudulent statements or representations, or makes or uses any false
writing or document knowing the same to contain any false, fictitious
or fraudulent statement or entry, shall be subject to the penalties set
forth under 18 U.S.C. 1001, and that violations of this paragraph may
jeopardize the validity of the application or document, or the validity
or enforceability of any patent, trademark registration, or certificate
resulting therefrom.
Section 10.18(b)(2) is specifically amended to provide that, by
presenting to the Office any paper, the party presenting such paper
(whether a practitioner or non-practitioner) is certifying that to the
best of the party's knowledge, information and belief, formed after an
inquiry reasonable under the circumstances, that: (1) the paper is not
being presented for any improper purpose, such as to harass someone or
to cause unnecessary delay or needless increase in the cost of
prosecution before the Office; (2) the claims and other legal
contentions therein are warranted by existing law or by a nonfrivolous
argument for the extension, modification, or reversal of existing law
or the establishment of new law; (3) the allegations and other factual
contentions have evidentiary support or, if specifically so identified,
are likely to have evidentiary support after a reasonable opportunity
for further investigation or discovery; and (4) the denials of factual
contentions are warranted on the evidence, or if specifically so
identified, are reasonably based on a lack of information or belief.
As discussed supra, the amendments to Sec. 10.18, in combination
with the amendment to Sec. 1.4(d), will permit the Office to eliminate
the verification requirement for a number of the rules of practice.
Section 10.18(c) specifically provides that violations of
Sec. 10.18(b)(1) may jeopardize the validity of the application or
document, or the validity or enforceability of any patent, trademark
registration, or certificate resulting therefrom, and that violations
of any of Sec. 10.18 paragraphs (b)(2)(i) through (iv) are, after
notice and reasonable opportunity to respond, subject to such sanctions
as deemed appropriate by the Commissioner, or the Commissioner's
designee, which may include, but are not limited to, any combination
of: (1) holding certain facts to have been established; (2) returning
papers; (3) precluding a party from filing a paper, or presenting or
contesting an issue; (4) imposing a monetary sanction; (5) requiring a
terminal disclaimer for the period of the delay; or (6) terminating the
proceedings in the Patent and Trademark Office.
With regard to the sanctions enumerated in Sec. 10.18(c), 35 U.S.C.
6(a) provides that ``[t]he Commissioner * * * may, subject to the
approval of the Secretary of Commerce, establish regulations, not
inconsistent with law, for the conduct of proceedings in the Patent and
Trademark Office.'' The issue of whether the Office is authorized to
impose monetary sanctions was addressed in the rulemaking entitled
``Patent Appeal and Interference Practice,'' published in the Federal
Register at 60 FR 14488 (March 17, 1995), and in the Official Gazette
at 1173 Off. Gaz. Pat. Office 36 (April 11, 1995).
The Commissioner's authority under 35 U.S.C. 6(a) to impose
monetary sanctions is limited to sanctions which are remedial, and does
not extend to sanctions that are punitive. Id. at 14494-96, 1173 Off.
Gaz. Pat. Office at 41-43. An enabling statute (35 U.S.C. 6(a)) alone
is not the express statutory authorization required for an agency to
impose penal monetary sanctions. See, e.g., Commissioner v. Acker, 361
U.S. 87, 91 (1959); Gold Kist, Inc. v. Department of Agriculture, 741
F.2d 344, 348 (11th Cir. 1984). Thus, the line of demarcation between
permissible and impermissible monetary sanctions under 35 U.S.C. 6(a)
is that: (1) the imposition of a monetary sanction to cover the costs
incurred by the Office due to the violation of Sec. 10.18(b)(2) is a
remedial (and thus permissible) sanction; and (2) the imposition of a
monetary sanction that has no relationship to the costs incurred by the
Office due to the violation of Sec. 10.18(b)(2) (e.g., a pre-
established or arbitrary fine or penalty) is a punitive (and thus
impermissible) sanction. See United States v. Frame, 885 F.2d 1119,
1142-43 (3rd Cir. 1989)(late payment charge no higher than reasonable
to cover lost interest and administrative costs incurred in the
collection effort is a remedial sanction, and not a penalty, and, as
such, is authorized by rulemaking enabling statute), cert. denied, 493
U.S. 1094 (1990); see also Griffin & Dickson v. United States, 16 Cl.
Ct. 347, 356-57 (1989)(agency has the inherent authority to manage its
caseload by imposing sanctions including precluding party from
presenting further evidence, disciplining of representative, or
imposing costs against the representative or the party in interest). As
the Office is an entirely fee-funded entity, it is reasonable to impose
a monetary sanction on a party causing an unnecessary and inordinate
expenditure
[[Page 53176]]
of Office resources to cover the costs incurred by the Office due to
such action, rather than impose these costs on the Office's customers
in general.
Nevertheless, the Office has amended Secs. 1.4(d)(2) and 10.18 with
the objective of discouraging the filing of frivolous or patently
unwarranted correspondence in the Office, not to routinely review
correspondence for compliance with Sec. 10.18(b)(2) and impose
sanctions under Sec. 10.18(c). Thus, the amendment to Secs. 1.4(d)(2)
and 10.18 should cause no concern to practitioners and pro se
applicants engaging in the ordinary course of business before the
Office. The Office anticipates that sanctions under Sec. 10.18(c) will
be imposed only in rare situations in which such action is necessary
for the Office to halt a clear abuse that is resulting in a needless
and inordinate expenditure of Office resources.
Where the circumstances of an application or other proceeding
warrant a determination of whether there has been a violation of
Sec. 10.18(b), the file or the application or other proceeding will be
forwarded to the Office of Enrollment and Discipline (OED) for a
determination of whether there has been a violation of Sec. 10.18(b).
In the event that OED determines that a provision of Sec. 10.18(b) has
been violated, the Commissioner, or the Commissioner's designee, will
determine what (if any) sanction(s) under Sec. 10.18(c) is to be
imposed in the application or other proceeding. In addition, if OED
determines that a provision of Sec. 10.18(b) has been violated by a
practitioner, OED will determine whether such practitioner is to be
subject to disciplinary action (see Secs. 1.4(d)(2) and 10.18(d)). That
is, OED will provide a determination of whether there has been a
violation of Sec. 10.18(b), and if such violation is by a practitioner,
whether such practitioner is to be subject to disciplinary action;
however, OED will not be responsible for imposing sanctions under
Sec. 10.18(c) in an application or other proceeding.
Section 10.18(d) provides that any practitioner violating the
provisions of this section may also be subject to disciplinary action.
This paragraph (and the corresponding provision of Sec. 1.4(d)(2))
clarifies that a practitioner may be subject to disciplinary action in
lieu of, or in addition to, the sanctions set forth in Sec. 10.18(c)
for violations of Sec. 10.18.
Comment 102: A number of comments supported the changes to
Sec. 1.4(d) to make its certification applicable to all papers signed
and submitted to the Office.
Response: The Office will adopt the changes to make such a
certification applicable to all papers filed in the Office, but will do
so by placing the certification requirement in Sec. 10.18, and
providing in Sec. 1.4(d) that the presentation of any paper to the
Office, whether by a practitioner or non-practitioner, constitutes a
certification under Sec. 10.18. Thus, the presentation of a paper to
the Office by any person (even a non-practitioner) constitutes a
certification under Sec. 10.18.
Comment 103: A number of comments opposed the change to Sec. 1.4(d)
as increasing the burden on persons presenting papers to the Office,
and, as such, inconsistent with the stated goal of reducing the burden
on the public. One comment indicated that new burdens in Sec. 1.4(d) on
signers of papers submitted to the Office include: (1) conducting a
reasonable inquiry concerning the document to be submitted to the
Office; (2) not submitting the document to harass or seek a needless
increase in the cost of prosecution; and (3) submitting only documents
likely to have evidentiary support after a reasonable opportunity for
further investigation or discovery.
Response: The change to Secs. 1.4(d) and 10.18 should discourage
the filing of frivolous papers in the Office, and thus reduce the cost
to the Office of treating such papers, which cost is ultimately borne
by the Office's customers. Thus, this change to Secs. 1.4(d) and 10.18
will reduce the burden on the public and to the Office's customers in
general. There is no reasonable argument as to why a person filing a
document in the Office should be permitted to avoid the ``burden'' of
conducting a reasonable inquiry concerning the document to be submitted
to the Office, not submitting the document to harass or seek a needless
increase in the cost of prosecution, or submitting only documents
likely to have evidentiary support after a reasonable opportunity for
further investigation or discovery.
Comment 104: Several comments opposed the addition of
Sec. 1.4(d)(2) (now Sec. 10.18(b)(2)) on the basis that the phrase
``formed after an inquiry reasonable under the circumstances'' was too
vague or was unclear as to how much of an inquiry must be made to meet
the ``reasonable inquiry'' requirement.
Response: The phrase ``formed after an inquiry reasonable under the
circumstances'' is taken from Rule 11(b) of the Federal Rules of Civil
Procedure (Fed. R. Civ. P. 11(b)), which provides that:
Representations to Court. By presenting to the court (whether by
signing, filing, submitting, or later advocating) a pleading,
written motion, or other paper, an attorney or unrepresented party
is certifying that to the best of the person's knowledge,
information and belief, formed after an inquiry reasonable under the
circumstances--
(1) it is not being presented for any improper purpose, such as
to harass or to cause unnecessary delay or needless increase in the
cost of litigation;
(2) the claims, defenses, and other legal contentions therein
are warranted by existing law or by a nonfrivolous argument for the
extension, modification, or reversal of existing law or the
establishment of new law;
(3) the allegations and other factual contentions have
evidentiary support or, if specifically so identified, are likely to
have evidentiary support after a reasonable opportunity for further
investigation or discovery; and
(4) the denials of factual contentions are warranted on the
evidence or, if specifically so identified, are reasonably based on
a lack of information or belief.
See Fed. R. Civ. P. 11(b)(1993).
Section 10.18(b)(2) tracks the language of Fed. R. Civ. P.
11(b)(1993) to avoid confusion as to what certifications a signature
entails. The advisory committee notes to Fed. R. Civ. P. 11(b) provide
further information on the ``inquiry reasonable under the
circumstances'' requirement. See Amendments to the Federal Rules of
Civil Procedure at 50-53 (1993), reprinted in 146 F.R.D. 401, 584-87.
The ``inquiry reasonable under the circumstances'' requirement of
Sec. 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The
Federal courts have stated in regard to the ``reasonable inquiry''
requirement of Fed. R. Civ. P. 11:
In requiring reasonable inquiry before the filing of any
pleading in a civil case in federal district court, Rule 11 demands
``an objective determination of whether a sanctioned party's conduct
was reasonable under the circumstances.'' In effect it imposes a
negligence standard, for negligence is a failure to use reasonable
care. The equation between negligence and the failure to conduct a
reasonable precomplaint inquiry is . . . that ``the amount of
investigation required by Rule 11 depends on both the time available
to investigate and on the probability that more investigation will
turn up important evidence; the Rule does not require steps that are
not cost-justified.''
Hays v. Sony Electronics, 847 F.2d 412, 418, 7 USPQ2d 1043, 1048 (7th.
Cir. 1988)(citations omitted)(decided prior to the 1993 amendment to
Fed. R. Civ. P. 11, but discussing a ``reasonable under the
circumstances'' standard).
Comment 105: One comment opposed the change in Sec. 1.4(d) to
import the verification requirement into any papers signed and
submitted to the Office, on
[[Page 53177]]
the basis that the presence of a verification actually on the paper
signed and submitted to the Office would cause the signer to carefully
consider what is being signed and submitted to the Office.
Response: A separate verification requirement for certain papers
results in delays during the examination of an application when such
verification is omitted. The Office is convinced that people are
inclined to either not make false, misleading or inaccurate statements
in documents they sign, or are not deterred from making such statements
by the presence of a verification clause in the document. The benefit
obtained in the rare instance in which a person otherwise inclined to
make a false, misleading or inaccurate statement is persuaded not to do
so by a verification clause simply does not outweigh the benefit
obtained by the elimination of the delay that results from the
requirement for such a verification clause.
Comment 106: One comment opposed the change to Sec. 1.4(d) (now
Sec. 10.18(b)(2)) on the basis that ``reasonable inquiry'' requirement
therein will expose a practitioner to malpractice liability.
Response: Legal malpractice is not an issue of Federal patent (or
trademark) law, but of common law sounding in tort. See Voight v.
Kraft, 342 F. Supp 821, 822, 174 USPQ 294, 295 (D. Idaho 1972). Section
10.18(b)(2) does not affect the duty (or create a new duty) on the part
of a practitioner to his or her client vis-a-vis the submission of
papers to the Office.
The party's duties under Sec. 10.18 are not to one's own clients;
it is to the public in general, other parties before the Office (the
examination of whose applications are delayed while the Office is, and
whose fees must be applied to the cost of, responding to frivolous
papers), and to the Office. Cf. Mars Steel Corp. v. Continental Bank,
880 F.2d 928, 932 (7th. Cir. 1989)(just as tort law creates duties to
one's client, Fed. R. Civ. P. 11 creates a duty to one's adversary,
other litigants in the courts's queue, and the court itself); Hays, 847
F.2d at 418, 7 USPQ2d at 1049 (same).
Comment 107: One comment indicated that the requirements in
Sec. 1.4(d)(2) (now Sec. 10.18(b)(2)) may be onerous as to persons not
registered to practice before the Office. Another comment opposed this
change on the basis that it would create new issues during litigation,
in that few non-lawyers have enough legal knowledge to accurately
verify that the documents they sign are consistent with the law. The
comment suggested that Sec. 1.4(d)(2) simply be amended to include the
verification statement from Sec. 1.68.
Response: There is no reasonable argument as to why the
certification for papers submitted to the Office should be any less
than the certification required under Fed. R. Civ. P. 11(b) for papers
filed in the Federal courts. The Federal Rules of Civil Procedure do
not permit a pro se litigant to avoid the requirements of Fed. R. Civ.
P. 11(b) (``By presenting * * * an attorney or unrepresented party is
certifying * * * .'' (emphasis added)). It is, however, appropriate to
take account of the special circumstances of pro se applicants in
determining whether sanctions under Sec. 10.18(c) are appropriate. See
advisory committee notes to Fed. R. Civ. P. 11 (1983), reprinted in 97
F.R.D. 165, 198-99 (1983) (``Although the standard is the same for
unrepresented parties, who are obligated themselves to sign the
[papers], the court has sufficient discretion to take account of the
special circumstances that often arise in pro se situations'').
The Office expects that pro se applicants will often submit
arguments that evidence little, if any, appreciation of the applicable
law or procedure. The Office is not adopting Secs. 1.4(d)(2) and 10.18
(b) and (c) for the purpose of imposing, and does not intend to impose,
sanctions on pro se applicants in situations in which they simply
submit arguments lacking an appreciation of the applicable law or
procedure. See Finch v. Hughes Aircraft Co., 926 F.2d 1574, 1582, 17
USPQ2d 1914, 1921 (Fed. Cir. 1991) (``courts are particularly cautious
about imposing sanctions on a pro se litigant, whose improper conduct
may be attributed to ignorance of the law and proper procedures''); see
also Hornback v. U.S., 40 USPQ2d 1694, 1697 (Cl. Ct. 1996) (pro se
without legal training is not held to the same standard as trained
counsel).
Where, however, a pro se applicant engages in a course of conduct
that any reasonable person should have known was improper, and which
causes a needless and inordinate expenditure of Office resources, such
conduct may result in the imposition of sanctions on the pro se
applicant. The Federal courts have subjected pro se litigants to
sanctions for: (1) Taking or persisting in actions that even a non-
lawyer should have known were frivolous; (2) taking or persisting in
actions that, after engaging in a sufficient course of litigation, the
pro se litigant should have known were frivolous; or (3) taking or
persisting in actions after having been warned by the court that such
actions were frivolous. See Constant v. U.S., 929 F.2d 654, 658, 18
USPQ2d 1298, 1301 (Fed. Cir.), cert. denied, 501 U.S. 1206 (1991);
Finch, 926 F.2d at 1582-83, 17 USPQ2d at 1921; U.S. ex rel. Taylor v.
Times Herald Record, 22 USPQ2d 1716, 1718 (S.D.N.Y. 1992), aff'd, 990
F.3d 623 (2d Cir. 1993)(table).
Comment 108: One comment argued that the change to Sec. 1.4(d)
would be particularly difficult to apply in the context of provisional
applications.
Response: The patent statute and rules of practice do not require
any papers other than a disclosure (with or without claims) and a cover
sheet for a provisional application (e.g., an applicant need and should
not submit legal arguments or other contentions with a provisional
application). Thus, it is highly unlikely that the filing of a
provisional application will result in a violation of Sec. 10.18(b).
Comment 109: One comment opposed the change to Sec. 1.4(d) on the
basis that it was not clear whether a practitioner has an obligation in
the case of a submission of a statement of facts to inform the party
making the statement (or the client) of this certification effect, and
the sanctions applicable to noncompliance. Another comment indicated
that practitioners will now be placed under the obligation of
questioning their clients each time they are given information or
instructions.
Response: The submission by an applicant of misleading or
inaccurate statements of facts during the prosecution of applications
for patent has resulted in the patents issuing on such applications
being held unenforceable. See, e.g., Refac International Ltd. v. Lotus
Development Corp., 81 F.3d 1576, 38 USPQ2d 1665 (Fed. Cir. 1996);
Paragon Podiatry Laboratory, Inc. v. KLM Laboratories, Inc., 984 F.2d
1182, 25 USPQ2d 1561 (Fed. Cir 1993); Rohm and Haas Corp. v. Crystal
Chemical Co., 722 F.2d 1556, 200 USPQ 289 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984); Ott v. Goodpasture, 40 USPQ2d 1831 (D.N.
Tex. 1996); Herman v. William Brooks Shoe Co., 39 USPQ2d 1773 (S.D.N.Y.
1996); Golden Valley Microwave Food Inc. v. Weaver Popcorn Co., 837 F.
Supp. 1444, 24 USPQ2d 1801 (N.D. Ind. 1992), aff'd, 11 F.3d 1072 (Fed.
Cir. 1993)(table), cert. denied, 511 U.S. 1128 (1994). Likewise, false
statements by a practitioner in a paper submitted to the Office during
the prosecution of an application for patent has resulted in the patent
issuing on such application also being held unenforceable. See General
Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 30 USPQ2d 1149
(Fed. Cir. 1994)(false statement in
[[Page 53178]]
a petition to make an application special constitutes inequitable
conduct, and renders the patent issuing on such application
unenforceable). In addition, the failure to exercise due care in
ascertaining the accuracy of the statements in a certification
submitted to the Office has also resulted in a patent being held
invalid. See DH Technology, 937 F. Supp. at 910; 40 USPQ2d at 1761.
For the above-stated reasons, it is highly advisable for a
practitioner to advise a client or third party that any information so
provided must be reliable and not misleading, regardless of this
amendment to Secs. 1.4(d)(2) and 10.18. Nevertheless, Secs. 1.4(d)(2)
and 10.18 as adopted do not require a practitioner to advise the client
(or third party) providing information of this certification effect (or
the sanctions applicable to noncompliance), or question the client (or
third party) when such information or instructions are provided. When a
practitioner is submitting information (e.g., a statement of fact) from
the applicant or a third party, or relying in arguments upon
information from the applicant or a third party, the Office will
consider a practitioner's ``inquiry reasonable under the
circumstances'' duty under Sec. 10.18 met so long as the practitioner
has no knowledge of information that is contrary to the information
provided by the applicant or third party or would otherwise indicate
that the information provided by the applicant or third party was so
provided for the purpose of a violation of Sec. 10.18 (e.g., was
submitted to cause unnecessary delay).
An applicant has no duty to conduct a prior art search as a
prerequisite to filing an application for patent. See Nordberg, Inc. v.
Telsmith, Inc., 82 F.3d 394, 397, 38 USPQ2d 1593, 1595-96 (Fed. Cir.
1996); FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 n.6, 5
USPQ2d 1272, 1275-76 n.6 (Fed. Cir. 1987); FMC Corp. v. Manitowoc Co.,
Inc., 835 F.2d 1411, 1415, 5 USPQ2d 1112, 1115 (Fed. Cir. 1987);
American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362,
220 USPQ 763, 772 (Fed. Cir.), cert. denied, 469 U.S. 821, 224 USPQ 520
(1984). The ``inquiry reasonable under the circumstances'' requirement
of Sec. 10.18 does not create any new duty on the part of an applicant
for patent to conduct a prior art search. See MPEP 609; cf. Judin v.
United States, 110 F.3d 780, 42 USPQ2d 1300 (Fed. Cir 1997)(the failure
to obtain and examine the accused infringing device prior to bringing a
civil action for infringement violates the 1983 version of Fed. R. Civ.
P. 11). The ``inquiry reasonable under the circumstances'' requirement
of Sec. 10.18, however, will require an inquiry into the underlying
facts and circumstances when a practitioner provides conclusive
statements to the Office (e.g., a statement that the entire delay in
filing the required reply from the due date for the reply until the
filing of a grantable petition pursuant to Sec. 1.137(b) was
unintentional).
Section 10.23
Section 10.23 is amended to change the phrase ``knowingly signing''
to ``signing.'' This amendment to Sec. 10.23 is for consistency with
Sec. 10.18, which contains no ``knowingly'' provision or requirement.
Review Under the Paperwork Reduction Act of 1995
This final rule contains information collection requirements which
are subject to review by the Office of Management and Budget (OMB)
under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The
principal impact of this Final Rule is: (1) elimination of unnecessary
rules of practice; (2) simplification or elimination of certain
requirements of the rules of practice; (3) rearrangement of certain
rules to improve their context; and (4) clarification of the
requirements of the rules of practice.
The title, description and respondent description of each of the
information collections are shown below with an estimate of each of the
annual reporting burdens. The collections of information in this Final
Rule have been reviewed and approved by OMB under the following control
numbers: 0651-0016, 0651-0021, 0651-0022, 0651-0027, 0651-0031, 0651-
0032, 0651-0033, 0651-0034, 0651-0035, and 0651-0037. Included in each
estimate is the time for reviewing instructions, gathering and
maintaining the data needed, and completing and reviewing the
collection of information.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
OMB Number: 0651-0016.
Title: Rules for Patent Maintenance Fees.
Form Numbers: PTO/SB/45/46/47/65/66.
Type of Review: Approved through July of 1999.
Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 273,800.
Estimated Time Per Response: 0.08 hour.
Estimated Total Annual Burden Hours: 22,640 hours.
Needs and Uses: Maintenance fees are required to maintain a patent,
except for design or plant patents, in force under 35 U.S.C. 41(b).
Payment of maintenance fees are required at 3\1/2\, 7\1/2\ and 11\1/2\
years after the grant of the patent. A patent number and application
number of the patent on which maintenance fees are paid are required in
order to ensure proper crediting of such payments.
OMB Number: 0651-0021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101,ANNEX/134/144, PTO-1382, PCT/IPEA/401,
PCT/IB/328.
Type of Review: Approved through May of 2000.
Affected Public: Individuals or Households, Business or Other For-
Profit, Federal Agencies or Employees, Not-for-Profit Institutions,
Small Businesses or Organizations.
Estimated Number of Respondents: 102,950.
Estimated Time Per Response: 0.9538 hour.
Estimated Total Annual Burden Hours: 98,195 hours.
Needs and Uses: The information collected is required by the Patent
Cooperation Treaty (PCT). The general purpose of the PCT is to simplify
the filing of patent applications on the same invention in different
countries. It provides for a centralized filing procedure and a
standardized application format.
OMB Number: 0651-0022.
Title: Deposit of Biological Materials for Patent Purposes.
Form Numbers: None.
Type of Review: Approved through December of 1997.
Affected Public: Individuals or Households, State or Local
Governments, Farms, Business or Other For-Profit, Federal Agencies or
Employees, Not-for-Profit Institutions, Small Businesses or
Organizations.
Estimated Number of Respondents: 3,325.
Estimated Time Per Response: 1.0 hour.
Estimated Total Annual Burden Hours: 3,325 hours.
Needs and Uses: Information on depositing of biological materials
in depositories is required for (1) Office determination of compliance
with the
[[Page 53179]]
patent statute where the invention sought to be patented relies on
biological material subject to deposit requirement, which includes
notifying interested members of the public where to obtain samples of
deposits, and (2) depositories desiring to be recognized as suitable by
the Office.
OMB Number: 0651-0027.
Title: Changes in Patent and Trademark Assignment Practices.
Form Numbers: PTO-1618 and PTO-1619, PTO/SB/15/41.
Type of Review: Approved through September of 1998.
Affected Public: Individuals or Households and Businesses or Other
For-Profit.
Estimated Number of Respondents: 170,000.
Estimated Time Per Response: 0.57 hour.
Estimated Total Annual Burden Hours: 97,000 hours.
Needs and Uses: The Office records about 170,000 assignments or
documents related to ownership of patent and trademark cases each year.
The Office requires a cover sheet to expedite the processing of these
documents and to ensure that they are properly recorded.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08-12/21-26/31/32/42/43/61-64/67-69/91-93/96/
97.
Type of Review: Approved through October of 1999.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 1,690,690.
Estimated Time Per Response: 0.361 hours.
Estimated Total Annual Burden Hours: 644,844 hours.
Needs and Uses: During the processing for an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the Office concerning the examination of a
specific application. The specific information required or which may be
submitted includes: Information Disclosure Statements; Terminal
Disclaimers; Petitions to Revive; Express Abandonments; Appeal Notices;
Small Entity; Petitions for Access; Powers to Inspect; Certificates of
Mailing; Certificates under Sec. 3.73(b); Amendments, Petitions and
their Transmittal Letters; and Deposit Account Order Forms.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07/17-20/101-109.
Type of Review: Approved through September of 1998.
Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 243,100.
Estimated Time Per Response: 7.88 hours.
Estimated Total Annual Burden Hours: 1,915,500 hours.
Needs and Uses: The purpose of this information collection is to
permit the Office to determine whether an application meets the
criteria set forth in the patent statute and regulations. The standard
Fee Transmittal form, New Utility Patent Application Transmittal form,
New Design Patent Application Transmittal form, New Plant Patent
Application Transmittal form, Plant Color Coding Sheet, Declaration,
and Plant Patent Application Declaration will assist applicants in
complying with the requirements of the patent statute and regulations,
and will further assist the Office in processing and examination of the
application.
OMB Number: 0651-0033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
Type of Review: Approved through June of 1999.
Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 135,190.
Estimated Time Per Response: 0.325 hour.
Estimated Total Annual Burden Hours: 43,893 hours.
Needs and Uses: This collection of information is required to
administer the patent laws pursuant to title 35, U.S.C., concerning the
issuance of patents and related actions including correcting errors in
printed patents, refiling of patent applications, requesting
reexamination of a patent, and requesting a reissue patent to correct
an error in a patent. The affected public includes any individual or
institution whose application for a patent has been allowed or who
takes action as covered by the applicable rules.
OMB Number: 0651-0034.
Title: Secrecy/License to Export.
Form Numbers: None.
Type of Review: Approved through January of 1998.
Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 2,156.
Estimated Time Per Response: 0.5 hour.
Estimated Total Annual Burden Hours: 1,129 hours.
Needs and Uses: In the interest of national security, patent laws
and regulations place certain limitations on the disclosure of
information contained in patents and patent applications and on the
filing of applications for patent in foreign countries.
OMB Number: 0651-0035.
Title: Address-Affecting Provisions.
Form Numbers: PTO/SB/82/83.
Type of Review: Approved through June of 1999.
Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 44,850.
Estimated Time Per Response: 0.2 hour.
Estimated Total Annual Burden Hours: 8,970 hours.
Needs and Uses: Under existing law, a patent applicant or assignee
may appoint, revoke or change a representative to act in a
representative capacity. Also, an appointed representative may withdraw
from acting in a representative capacity. This collection includes the
information needed to ensure that Office correspondence reaches the
appropriate individual.
OMB Number: 0651-0037.
Title: Provisional Applications.
Form Numbers: PTO/SB/16.
Type of Review: Approved through January of 1998.
Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 6,000.
Estimated Time Per Response: 0.2 hour.
Estimated Total Annual Burden Hours: 1,200 hours.
Needs and Uses: The information included on the provisional
application cover sheet is needed by the Office to identify the
submission as a provisional application and not some other kind of
submission, to promptly and properly process the provisional
application, to prepare the provisional application filing receipt
which is sent to the applicant, and to identify those provisional
applications which must be reviewed by the Office for foreign filing
licenses.
[[Page 53180]]
As required by the Paperwork Reduction Act of 1995 (44 U.S.C.
3507(d)), the Office has submitted a copy of this Final Rule to OMB for
its review of these information collections. Interested persons are
requested to send comments regarding these information collections,
including suggestions for reducing this burden, to the Office of
Information and Regulatory Affairs of OMB, New Executive Office Bldg.,
725 17th St. NW, rm. 10235, Washington, DC 20503, Attn: Desk Officer
for the Patent and Trademark Office.
Other Considerations
This Final Rule is in conformity with the requirements of the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order
12612 (October 26, 1987), and the Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.). It has been determined that this rulemaking is
not significant for the purposes of Executive Order 12866 (September
30, 1993).
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 Final Rule would not have a
significant impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The principal impact of
this Final Rule is: (1) elimination of unnecessary rules of practice;
(2) simplification or elimination of certain requirements of the rules
of practice; (3) rearrangement of certain rules to improve their
context; and (4) clarification of the requirements of the rules of
practice.
The Office has determined that this Final Rule has no Federalism
implications affecting the relationship between the National Government
and the States as outlined in Executive Order 12612.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
37 CFR Part 3
Administrative practice and procedure, Inventions and patents,
Reporting and recordkeeping requirements.
37 CFR Part 5
Classified information, Foreign relations, Inventions and patents.
37 CFR Part 7
Administrative practice and procedure, Inventions and patents,
Reporting and recordkeeping requirements.
37 CFR Part 10
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
For the reasons set forth in the preamble, 37 CFR parts 1, 3, 5, 7
and 10 are 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 1.4 is amended by revising paragraph (d) and by adding
paragraph (g) to read as follows:
Sec. 1.4 Nature of correspondence and signature requirements.
* * * * *
(d)(1) Each piece of correspondence, except as provided in
paragraphs (e) and (f) of this section, filed in a patent or trademark
application, reexamination proceeding, patent or trademark interference
proceeding, patent file or trademark registration file, trademark
opposition proceeding, trademark cancellation proceeding, or trademark
concurrent use proceeding, which requires a person's signature, must
either:
(i) Be an original, that is, have an original signature personally
signed in permanent ink by that person; or
(ii) Be a direct or indirect copy, such as a photocopy or facsimile
transmission (Sec. 1.6(d)), of an original. In the event that a copy of
the original is filed, the original should be retained as evidence of
authenticity. If a question of authenticity arises, the Patent and
Trademark Office may require submission of the original.
(2) The presentation to the Office (whether by signing, filing,
submitting, or later advocating) of any paper by a party, whether a
practitioner or non-practitioner, constitutes a certification under
Sec. 10.18(b) of this chapter. Violations of Sec. 10.18(b)(2) of this
chapter by a party, whether a practitioner or non-practitioner, may
result in the imposition of sanctions under Sec. 10.18(c) of this
chapter. Any practitioner violating Sec. 10.18(b) may also be subject
to disciplinary action. See Secs. 10.18(d) and 10.23(c)(15).
* * * * *
(g) An applicant who has not made of record a registered attorney
or agent may be required to state whether assistance was received in
the preparation or prosecution of the patent application, for which any
compensation or consideration was given or charged, and if so, to
disclose the name or names of the person or persons providing such
assistance. Assistance includes the preparation for the applicant of
the specification and amendments or other papers to be filed in the
Patent and Trademark Office, as well as other assistance in such
matters, but does not include merely making drawings by draftsmen or
stenographic services in typing papers.
3. Section 1.6 is amended by revising paragraphs (d)(3), (d)(6),
and (e) and adding paragraph (f) to read as follows:
Sec. 1.6 Receipt of correspondence.
* * * * *
(d) * * *
(3) Correspondence which cannot receive the benefit of the
certificate of mailing or transmission as specified in
Sec. 1.8(a)(2)(i) (A) through (D) and (F), Sec. 1.8(a)(2)(ii)(A), and
Sec. 1.8(a)(2)(iii)(A), except that a continued prosecution application
under Sec. 1.53(d) may be transmitted to the Office by facsimile;
* * * * *
(6) Correspondence to be filed in a patent application subject to a
secrecy order under Secs. 5.1 through 5.5 of this chapter and directly
related to the secrecy order content of the application;
* * * * *
(e) Interruptions in U.S. Postal Service. If interruptions or
emergencies in the United States Postal Service which have been so
designated by the Commissioner occur, the Patent and Trademark Office
will consider as filed on a particular date in the Office any
correspondence which is:
(1) Promptly filed after the ending of the designated interruption
or emergency; and
(2) Accompanied by a statement indicating that such correspondence
would have been filed on that particular date if it were not for the
designated interruption or emergency in the United States Postal
Service.
(f) Facsimile transmission of a patent application under
Sec. 1.53(d). In the event that the Office has no evidence of receipt
of an application under Sec. 1.53(d) (a continued prosecution
application) transmitted to the Office by facsimile transmission, the
party who transmitted the application under Sec. 1.53(d) may petition
the Commissioner to accord the application under Sec. 1.53(d) a filing
date as of the date the application under
[[Page 53181]]
Sec. 1.53(d) is shown to have been transmitted to and received in the
Office,
(1) Provided that the party who transmitted such application under
Sec. 1.53(d):
(i) Informs the Office of the previous transmission of the
application under Sec. 1.53(d) promptly after becoming aware that the
Office has no evidence of receipt of the application under
Sec. 1.53(d);
(ii) Supplies an additional copy of the previously transmitted
application under Sec. 1.53(d); and
(iii) Includes a statement which attests on a personal knowledge
basis or to the satisfaction of the Commissioner to the previous
transmission of the application under Sec. 1.53(d) and is accompanied
by a copy of the sending unit's report confirming transmission of the
application under Sec. 1.53(d) or evidence that came into being after
the complete transmission and within one business day of the complete
transmission of the application under Sec. 1.53(d).
(2) The Office may require additional evidence to determine if the
application under Sec. 1.53(d) was transmitted to and received in the
Office on the date in question.
4. Section 1.8 is amended by revising paragraphs (a)(2)(i)(A) and
(b) to read as follows:
Sec. 1.8 Certificate of mailing or transmission.
(a) * * *
(2) * * *
(i) * * *
(A) The filing of a national patent application specification and
drawing or other correspondence for the purpose of obtaining an
application filing date, including a request for a continued
prosecution application under Sec. 1.53(d);
* * * * *
(b) In the event that correspondence is considered timely filed by
being mailed or transmitted in accordance with paragraph (a) of this
section, but not received in the Patent and Trademark Office, and the
application is held to be abandoned or the proceeding is dismissed,
terminated, or decided with prejudice, the correspondence will be
considered timely if the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of
the correspondence promptly after becoming aware that the Office has no
evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously mailed or
transmitted correspondence and certificate; and
(3) Includes a statement which attests on a personal knowledge
basis or to the satisfaction of the Commissioner to the previous timely
mailing or transmission. If the correspondence was sent by facsimile
transmission, a copy of the sending unit's report confirming
transmission may be used to support this statement.
* * * * *
5. Section 1.9 is amended by revising paragraphs (d) and (f) to
read as follows:
Sec. 1.9 Definitions.
* * * * *
(d) A small business concern as used in this chapter means any
business concern meeting the size standards set forth in 13 CFR Part
121 to be eligible for reduced patent fees. Questions related to size
standards for a small business concern may be directed to: Small
Business Administration, Size Standards Staff, 409 Third Street, SW,
Washington, DC 20416.
* * * * *
(f) A small entity as used in this chapter means an independent
inventor, a small business concern, or a non-profit organization
eligible for reduced patent fees.
* * * * *
6. Section 1.10 is amended by revising paragraphs (d) and (e) to
read as follows:
Sec. 1.10 Filing of correspondence by ``Express Mail.''
* * * * *
(d) Any person filing correspondence under this section that was
received by the Office and delivered by the ``Express Mail Post Office
to Addressee'' service of the USPS, who can show that the ``date-in''
on the ``Express Mail'' mailing label or other official notation
entered by the USPS was incorrectly entered or omitted by the USPS, may
petition the Commissioner to accord the correspondence a filing date as
of the date the correspondence is shown to have been deposited with the
USPS, provided that:
(1) The petition is filed promptly after the person becomes aware
that the Office has accorded, or will accord, a filing date based upon
an incorrect entry by the USPS;
(2) The number of the ``Express Mail'' mailing label was placed on
the paper(s) or fee(s) that constitute the correspondence prior to the
original mailing by ``Express Mail''; and
(3) The petition includes a showing which establishes, to the
satisfaction of the Commissioner, that the requested filing date was
the date the correspondence was deposited in the ``Express Mail Post
Office to Addressee'' service prior to the last scheduled pickup for
that day. Any showing pursuant to this paragraph must be corroborated
by evidence from the USPS or that came into being after deposit and
within one business day of the deposit of the correspondence in the
``Express Mail Post Office to Addressee'' service of the USPS.
(e) Any person mailing correspondence addressed as set out in
Sec. 1.1(a) to the Office with sufficient postage utilizing the
``Express Mail Post Office to Addressee'' service of the USPS but not
received by the Office, may petition the Commissioner to consider such
correspondence filed in the Office on the USPS deposit date, provided
that:
(1) The petition is filed promptly after the person becomes aware
that the Office has no evidence of receipt of the correspondence;
(2) The number of the ``Express Mail'' mailing label was placed on
the paper(s) or fee(s) that constitute the correspondence prior to the
original mailing by ``Express Mail'';
(3) The petition includes a copy of the originally deposited
paper(s) or fee(s) that constitute the correspondence showing the
number of the ``Express Mail'' mailing label thereon, a copy of any
returned postcard receipt, a copy of the ``Express Mail'' mailing label
showing the ``date-in,'' a copy of any other official notation by the
USPS relied upon to show the date of deposit, and, if the requested
filing date is a date other than the ``date-in'' on the ``Express
Mail'' mailing label or other official notation entered by the USPS, a
showing pursuant to paragraph (d)(3) of this section that the requested
filing date was the date the correspondence was deposited in the
``Express Mail Post Office to Addressee'' service prior to the last
scheduled pickup for that day; and
(4) The petition includes a statement which establishes, to the
satisfaction of the Commissioner, the original deposit of the
correspondence and that the copies of the correspondence, the copy of
the ``Express Mail'' mailing label, the copy of any returned postcard
receipt, and any official notation entered by the USPS are true copies
of the originally mailed correspondence, original ``Express Mail''
mailing label, returned postcard receipt, and official notation entered
by the USPS.
* * * * *
7. Section 1.11 is amended by revising paragraph (b) to read as
follows:
Sec. 1.11 Files open to the public.
* * * * *
(b) All reissue applications, all applications in which the Office
has accepted a request to open the complete
[[Page 53182]]
application to inspection by the public, and related papers in the
application file, are open to inspection by the public, and copies may
be furnished upon paying the fee therefor. The filing of reissue
applications, other than continued prosecution applications under
Sec. 1.53(d) of reissue applications, will be announced in the Official
Gazette. The announcement shall include at least the filing date,
reissue application and original patent numbers, title, class and
subclass, name of the inventor, name of the owner of record, name of
the attorney or agent of record, and examining group to which the
reissue application is assigned.
* * * * *
8. Section 1.14 is amended by revising paragraph (a) and adding a
new paragraph (f) to read as follows:
Sec. 1.14 Patent applications preserved in confidence.
(a) 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.
(1) Status information includes information such as whether the
application is pending, abandoned, or patented, as well as the
application number and filing date (or international filing date or
date of entry into the national stage).
(i) Status information concerning an application may be supplied:
(A) When copies of, or access to, the application may be provided
pursuant to paragraph (a)(3) of this section;
(B) When the application is identified by application number or
serial number and filing date in a published patent document or in a
U.S. application open to public inspection; or
(C) When the application is the national stage of an international
application in which the United States of America has been indicated as
a Designated State.
(ii) Status information concerning an application may also be
supplied when the application claims the benefit of the filing date of
an application for which status information may be provided pursuant to
paragraph (a)(1)(i) of this section.
(2) Copies of an application-as-filed may be provided to any
person, upon written request accompanied by the fee set forth in
Sec. 1.19(b)(1), without notice to the applicant, if the application is
incorporated by reference in a U.S. patent.
(3) Copies of (upon payment of the fee set forth in
Sec. 1.19(b)(2)), and access to, an application file wrapper and
contents may be provided to any person, upon written request, without
notice to the applicant, when the application file is available and:
(i) It has been determined by the Commissioner to be necessary for
the proper conduct of business before the Office or warranted by other
special circumstances;
(ii) The application is open to the public as provided in
Sec. 1.11(b);
(iii) Written authority in that application from the applicant, the
assignee of the application, or the attorney or agent of record has
been granted; or
(iv) The application is abandoned, but not if the application is in
the file jacket of a pending application under Sec. 1.53(d), and is:
(A) Referred to in a U.S. patent;
(B) Referred to in a U.S. application open to public inspection;
(C) An application which claims the benefit of the filing date of a
U.S. 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.
* * * * *
(f) Information as to the filing of an application will be
published in the Official Gazette in accordance with Sec. 1.47(a) and
(b).
9. Section 1.16 is amended by revising paragraphs (d) and (l) to
read as follows:
Sec. 1.16 National application filing fees.
* * * * *
(d) In addition to the basic filing fee in an original
application, except provisional applications, if the application
contains, or is amended to contain, a multiple dependent claim(s),
per application:
By a small entity (Sec. 1.9(f))..................................135.00
By other than a small entity.....................................270.00
* * * * *
(l) Surcharge for filing the basic filing fee or cover sheet
(Sec. 1.51(c)(1)) on a date later than the filing date of the
provisional application:
By a small entity (Sec. 1.9(f))...................................25.00
By other than a small entity......................................50.00
* * * * *
10. Section 1.17 is amended by removing and reserving paragraphs
(e) through (g) and revising paragraphs (a) through (d), (h), (i) and
(q) to read as follows:
Sec. 1.17 Patent application processing fees.
(a) Extension fees pursuant to Sec. 1.136(a):
(1) For reply within first month:
By a small entity (Sec. 1.9(f))..................................$55.00
By other than a small entity.....................................110.00
(2) For reply within second month:
By a small entity (Sec. 1.9(f))..................................200.00
By other than a small entity.....................................400.00
(3) For reply within third month:
By a small entity (Sec. 1.9(f))..................................475.00
By other than a small entity.....................................950.00
(4) For reply within fourth month:
By a small entity (Sec. 1.9(f))..................................755.00
By other than a small entity...................................1,510.00
(5) For reply within fifth month:
By a small entity (Sec. 1.9(f))................................1,030.00
By other than a small entity...................................2,060.00
(b) For filing a notice of appeal from the examiner to the Board
of Patent Appeals and Interferences:
By a small entity (Sec. 1.9(f))..................................155.00
By other than a small entity.....................................310.00
(c) In addition to the fee for filing a notice of appeal, for
filing a brief in support of an appeal:
By a small entity (Sec. 1.9(f))..................................155.00
By other than a small entity.....................................310.00
(d) For filing a request for an oral hearing before the Board of
Patent Appeals and Interferences in an appeal under 35 U.S.C. 134:
By a small entity (Sec. 1.9(f))..................................135.00
By other than a small entity.....................................270.00
(e) [Reserved]
(f) [Reserved]
(g) [Reserved]
(h) For filing a petition to the Commissioner under a section
listed below which refers to
this paragraph...................................................130.00
Sec. 1.182--for decision on a question not specifically provided
for.
Sec. 1.183--to suspend the rules.
Sec. 1.295--for review of refusal to publish a statutory
invention registration.
Sec. 1.377--for review of decision refusing to accept and record
payment of a maintenance fee filed prior to expiration of a patent.
Sec. 1.378(e)--for reconsideration of decision on petition
refusing to accept delayed payment of maintenance fee in an expired
patent.
Sec. 1.644(e)--for petition in an interference.
Sec. 1.644(f)--for request for reconsideration of a decision on
petition in an interference.
Sec. 1.666(c)--for late filing of interference settlement
agreement.
Sec. 5.12--for expedited handling of a foreign filing license.
Sec. 5.15--for changing the scope of a license.
Sec. 5.25--for retroactive license.
(i) For filing a petition to the Commissioner under a section
listed below which refers to
this paragraph...................................................130.00
Sec. 1.12--for access to an assignment record.
Sec. 1.14--for access to an application.
Sec. 1.41--to supply the name or names of the inventor or
inventors after the filing date without an oath or declaration as
prescribed by Sec. 1.63, except in provisional applications.
Sec. 1.47--for filing by other than all the inventors or a
person not the inventor.
Sec. 1.48--for correction of inventorship, except in provisional
applications.
Sec. 1.53--to accord a filing date, except in provisional
applications.
Sec. 1.55--for entry of late priority papers.
[[Page 53183]]
Sec. 1.59--for expungement and return of information.
Sec. 1.84--for accepting color drawings or photographs.
Sec. 1.91--for entry of a model or exhibit.
Sec. 1.97(d)--to consider an information disclosure statement.
Sec. 1.102--to make an application special.
Sec. 1.103--to suspend action in application.
Sec. 1.177--for divisional reissues to issue separately.
Sec. 1.312--for amendment after payment of issue fee.
Sec. 1.313--to withdraw an application from issue.
Sec. 1.314--to defer issuance of a patent.
Sec. 1.666(b)--for access to an interference settlement
agreement.
Sec. 3.81--for a patent to issue to assignee, assignment
submitted after payment of the issue fee.
* * * * *
(q) For filing a petition to the Commissioner under a section
listed below
which refers to this paragraph....................................50.00
Sec. 1.41--to supply the names or names of the inventor or
inventors after the filing date without a cover sheet as prescribed
by Sec. 1.51(c)(1) in a provisional application.
Sec. 1.48--for correction of inventorship in a provisional
application.
Sec. 1.53--to accord a provisional application a filing date or
to convert a nonprovisional application filed under Sec. 1.53(b) to
a provisional application under Sec. 1.53(c).
* * * * *
11. Section 1.21 is amended by revising paragraphs (l) and (n) to
read as follows:
Sec. 1.21 Miscellaneous fees and charges.
* * * * *
(l) For processing and retaining any application abandoned
pursuant to Sec. 1.53(f), unless the required basic filing fee
(Sec. 1.16)
has been paid....................................................130.00
* * * * *
(n) For handling an application in which proceedings are
terminated pursuant to
Sec. 1.53(e).....................................................130.00
* * * * *
12. Section 1.26 is amended by revising paragraph (a) to read as
follows:
Sec. 1.26 Refunds.
(a) Any fee paid by actual mistake or in excess of that required
will be refunded, but a mere change of purpose after the payment of
money, as when a party desires to withdraw an application, an appeal,
or a request for oral hearing, will not entitle a party to demand such
a return. Amounts of twenty-five dollars or less will not be returned
unless specifically requested within a reasonable time, nor will the
payer be notified of such amounts; amounts over twenty-five dollars may
be returned by check or, if requested, by credit to a deposit account.
* * * * *
13. Section 1.27 is revised to read as follows:
Sec. 1.27 Statement of status as small entity.
(a) Any person seeking to establish status as a small entity
(Sec. 1.9(f) of this part) for purposes of paying fees in an
application or a patent must file a statement in the application or
patent prior to or with the first fee paid as a small entity. Such a
statement need only be filed once in an application or patent and
remains in effect until changed.
(b) When establishing status as a small entity pursuant to
paragraph (a) of this section, any statement filed on behalf of an
independent inventor must be signed by the independent inventor except
as provided in Sec. 1.42, Sec. 1.43, or Sec. 1.47 of this part and must
state that the inventor qualifies as an independent inventor in
accordance with Sec. 1.9(c) of this part. Where there are joint
inventors in an application, each inventor must file a statement
establishing status as an independent inventor in order to qualify as a
small entity. Where any rights have been assigned, granted, conveyed,
or licensed, or there is an obligation to assign, grant, convey, or
license, any rights to a small business concern, a nonprofit
organization, or any other individual, a statement must be filed by the
individual, the owner of the small business concern, or an official of
the small business concern or nonprofit organization empowered to act
on behalf of the small business concern or nonprofit organization
identifying their status. For purposes of a statement under this
paragraph, a license to a Federal agency resulting from a funding
agreement with that agency pursuant to 35 U.S.C. 202(c)(4) does not
constitute a license as set forth in Sec. 1.9 of this part.
(c)(1) Any statement filed pursuant to paragraph (a) of this
section on behalf of a small business concern must:
(i) Be signed by the owner or an official of the small business
concern empowered to act on behalf of the concern;
(ii) State that the concern qualifies as a small business concern
as defined in Sec. 1.9(d); and
(iii) State that the exclusive rights to the invention have been
conveyed to and remain with the small business concern or, if the
rights are not exclusive, that all other rights belong to small
entities as defined in Sec. 1.9.
(2) Where the rights of the small business concern as a small
entity are not exclusive, a statement must also be filed by the other
small entities having rights stating their status as such. For purposes
of a statement under this paragraph, a license to a Federal agency
resulting from a funding agreement with that agency pursuant to 35
U.S.C. 202(c)(4) does not constitute a license as set forth in Sec. 1.9
of this part.
(d)(1) Any statement filed pursuant to paragraph (a) of this
section on behalf of a nonprofit organization must:
(i) Be signed by an official of the nonprofit organization
empowered to act on behalf of the organization;
(ii) State that the organization qualifies as a nonprofit
organization as defined in Sec. 1.9(e) of this part specifying under
which one of Sec. 1.9(e) (1), (2), (3), or (4) of this part the
organization qualifies; and
(iii) State that exclusive rights to the invention have been
conveyed to and remain with the organization or if the rights are not
exclusive that all other rights belong to small entities as defined in
Sec. 1.9 of this part.
(2) Where the rights of the nonprofit organization as a small
entity are not exclusive, a statement must also be filed by the other
small entities having rights stating their status as such. For purposes
of a statement under this paragraph, a license to a Federal agency
pursuant to 35 U.S.C. 202(c)(4) does not constitute a conveyance of
rights as set forth in this paragraph.
14. Section 1.28 is amended by revising paragraphs (a) and (c) to
read as follows:
Sec. 1.28 Effect on fees of failure to establish status, or change
status, as a small entity.
(a)(1) The failure to establish status as a small entity
(Secs. 1.9(f) and 1.27 of this part) in any application or patent prior
to paying, or at the time of paying, any fee precludes payment of the
fee in the amount established for small entities. A refund pursuant to
Sec. 1.26 of this part, based on establishment of small entity status,
of a portion of fees timely paid in full prior to establishing status
as a small entity may only be obtained if a statement under Sec. 1.27
and a request for a refund of the excess amount are filed within two
months of the date of the timely payment of the full fee. The two-month
time period is not extendable under Sec. 1.136. Status as a small
entity is waived for any fee by the failure to establish the status
prior to paying, at the time of paying, or within two months of the
date of payment of, the fee.
(2) Status as a small entity must be specifically established in
each application or patent in which the status is available and
desired. Status as a small entity in one application or patent does not
affect any other application or patent, including applications or
patents which are directly or indirectly dependent upon the application
or patent in which the status has been
[[Page 53184]]
established. The refiling of an application under Sec. 1.53 as a
continuation, division, or continuation-in-part (including a continued
prosecution application under Sec. 1.53(d)), or the filing of a reissue
application requires a new determination as to continued entitlement to
small entity status for the continuing or reissue application. A
nonprovisional application claiming benefit under 35 U.S.C. 119(e),
120, 121, or 365(c) of a prior application, or a reissue application
may rely on a statement filed in the prior application or in the patent
if the nonprovisional application or the reissue application includes a
reference to the statement in the prior application or in the patent or
includes a copy of the statement in the prior application or in the
patent and status as a small entity is still proper and desired. The
payment of the small entity basic statutory filing fee will be treated
as such a reference for purposes of this section.
(3) Once status as a small entity has been established in an
application or patent, the status remains in that application or patent
without the filing of a further statement pursuant to Sec. 1.27 of this
part unless the Office is notified of a change in status.
* * * * *
(c) If status as a small entity is established in good faith, and
fees as a small entity are paid in good faith, in any application or
patent, and it is later discovered that such status as a small entity
was established in error or that through error the Office was not
notified of a change in status as required by paragraph (b) of this
section, the error will be excused upon payment of the deficiency
between the amount paid and the amount due. The deficiency is based on
the amount of the fee, for other than a small entity, in effect at the
time the deficiency is paid in full.
* * * * *
15. Section 1.33 is amended by revising paragraphs (a) and (b) to
read as follows:
Sec. 1.33 Correspondence respecting patent applications, reexamination
proceedings, and other proceedings.
(a) The applicant, the assignee(s) of the entire interest (see
Secs. 3.71 and 3.73) or an attorney or agent of record (see
Sec. 1.34(b)) may specify a correspondence address to which
communications about the application are to be directed. All notices,
official letters, and other communications in the application will be
directed to the correspondence address or, if no such correspondence
address is specified, to an attorney or agent of record (see
Sec. 1.34(b)), or, if no attorney or agent is of record, to the
applicant, so long as a post office address has been furnished in the
application. Double correspondence with an applicant and an attorney or
agent, or with more than one attorney or agent, will not be undertaken.
If more than one attorney or agent is made of record and a
correspondence address has not been specified, correspondence will be
held with the one last made of record.
(b) Amendments and other papers filed in the application must be
signed by:
(1) An attorney or agent of record appointed in compliance with
Sec. 1.34(b);
(2) A registered attorney or agent not of record who acts in a
representative capacity under the provisions of Sec. 1.34(a);
(3) The assignee of record of the entire interest, if there is an
assignee of record of the entire interest;
(4) An assignee of record of an undivided part interest, and any
assignee(s) of the remaining interest and any applicant retaining an
interest, if there is an assignee of record of an undivided part
interest; or
(5) All of the applicants (Secs. 1.42, 1.43 and 1.47) for patent,
unless there is an assignee of record of the entire interest and such
assignee has taken action in the application in accordance with
Secs. 3.71 and 3.73.
* * * * *
16. Section 1.41 is amended by revising paragraph (a) to read as
follows:
Sec. 1.41 Applicant for patent.
(a) A patent is applied for in the name or names of the actual
inventor or inventors.
(1) The inventorship of a nonprovisional application is that
inventorship set forth in the oath or declaration as prescribed by
Sec. 1.63, except as provided for in Sec. 1.53(d)(4) and Sec. 1.63(d).
If an oath or declaration as prescribed by Sec. 1.63 is not filed
during the pendency of a nonprovisional application, the inventorship
is that inventorship set forth in the application papers filed pursuant
to Sec. 1.53(b), unless a petition under this paragraph accompanied by
the fee set forth in Sec. 1.17(i) is filed supplying or changing the
name or names of the inventor or inventors.
(2) The inventorship of a provisional application is that
inventorship set forth in the cover sheet as prescribed by
Sec. 1.51(c)(1). If a cover sheet as prescribed by Sec. 1.51(c)(1) is
not filed during the pendency of a provisional application, the
inventorship is that inventorship set forth in the application papers
filed pursuant to Sec. 1.53(c), unless a petition under this paragraph
accompanied by the fee set forth in Sec. 1.17(q) is filed supplying or
changing the name or names of the inventor or inventors.
(3) In a nonprovisional application filed without an oath or
declaration as prescribed by Sec. 1.63 or a provisional application
filed without a cover sheet as prescribed by Sec. 1.51(c)(1), the name
or names of person or persons believed to be the actual inventor or
inventors should be provided for identification purposes when the
application papers pursuant to Sec. 1.53(b) or (c) are filed. If no
name of a person believed to be an actual inventor is so provided, the
application should include an applicant identifier consisting of
alphanumeric characters.
* * * * *
17. Section 1.47 is revised to read as follows:
Sec. 1.47 Filing when an inventor refuses to sign or cannot be
reached.
(a) If a joint inventor refuses to join in an application for
patent or cannot be found or reached after diligent effort, the
application may be made by the other inventor on behalf of himself or
herself and the nonsigning inventor. The oath or declaration in such an
application must be accompanied by a petition including proof of the
pertinent facts, the fee set forth in Sec. 1.17(i) and the last known
address of the nonsigning inventor. The Patent and Trademark Office
shall, except in a continued prosecution application under
Sec. 1.53(d), forward notice of the filing of the application to the
nonsigning inventor at said address and publish notice of the filing of
the application in the Official Gazette. The nonsigning inventor may
subsequently join in the application on filing an oath or declaration
complying with Sec. 1.63.
(b) Whenever all of the inventors refuse to execute an application
for patent, or cannot be found or reached after diligent effort, a
person to whom an inventor has assigned or agreed in writing to assign
the invention or who otherwise shows sufficient proprietary interest in
the matter justifying such action may make application for patent on
behalf of and as agent for all the inventors. The oath or declaration
in such an application must be accompanied by a petition including
proof of the pertinent facts, a showing that such action is necessary
to preserve the rights of the parties or to prevent irreparable damage,
the fee set forth in Sec. 1.17(i), and the last known address of all of
the inventors. The Office shall, except in a continued prosecution
application under Sec. 1.53(d), forward
[[Page 53185]]
notice of the filing of the application to all of the inventors at the
addresses stated in the application and publish notice of the filing of
the application in the Official Gazette. An inventor may subsequently
join in the application on filing an oath or declaration complying with
Sec. 1.63.
18. Section 1.48 is revised to read as follows:
Sec. 1.48 Correction of inventorship in a patent application, other
than a reissue application.
(a) If the inventive entity is set forth in error in an executed
Sec. 1.63 oath or declaration in an application, other than a reissue
application, and such error arose without any deceptive intention on
the part of the person named as an inventor in error or on the part of
the person who through error was not named as an inventor, the
application may be amended to name only the actual inventor or
inventors. When the application is involved in an interference, the
amendment must comply with the requirements of this section and must be
accompanied by a motion under Sec. 1.634. Such amendment must be
accompanied by:
(1) A petition including a statement from each person being added
as an inventor and from each person being deleted as an inventor that
the error in inventorship occurred without deceptive intention on his
or her part;
(2) An oath or declaration by the actual inventor or inventors as
required by Sec. 1.63 or as permitted by Secs. 1.42, 1.43 or 1.47;
(3) The fee set forth in Sec. 1.17(i); and
(4) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Sec. 3.73(b)).
(b) If the correct inventors are named in a nonprovisional
application, other than a reissue application, and the prosecution of
the application results in the amendment or cancellation of claims so
that fewer than all of the currently named inventors are the actual
inventors of the invention being claimed in the application, an
amendment must be filed deleting the name or names of the person or
persons who are not inventors of the invention being claimed. When the
application is involved in an interference, the amendment must comply
with the requirements of this section and must be accompanied by a
motion under Sec. 1.634. Such amendment must be accompanied by:
(1) A petition including a statement identifying each named
inventor who is being deleted and acknowledging that the inventor's
invention is no longer being claimed in the application; and
(2) The fee set forth in Sec. 1.17(i).
(c) If a nonprovisional application, other than a reissue
application, discloses unclaimed subject matter by an inventor or
inventors not named in the application, the application may be amended
to add claims to the subject matter and name the correct inventors for
the application. When the application is involved in an interference,
the amendment must comply with the requirements of this section and
must be accompanied by a motion under Sec. 1.634. Such amendment must
be accompanied by:
(1) A petition including a statement from each person being added
as an inventor that the amendment is necessitated by amendment of the
claims and that the inventorship error occurred without deceptive
intention on his or her part;
(2) An oath or declaration by the actual inventor or inventors as
required by Sec. 1.63 or as permitted by Secs. 1.42, 1.43 or 1.47;
(3) The fee set forth in Sec. 1.17(i); and
(4) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Sec. 3.73(b)).
(d) If the name or names of an inventor or inventors were omitted
in a provisional application through error without any deceptive
intention on the part of the omitted inventor or inventors, the
provisional application may be amended to add the name or names of the
omitted inventor or inventors. Such amendment must be accompanied by:
(1) A petition including a statement that the inventorship error
occurred without deceptive intention on the part of the omitted
inventor or inventors; and
(2) The fee set forth in Sec. 1.17(q).
(e) If a person or persons were named as an inventor or inventors
in a provisional application through error without any deceptive
intention on the part of such person or persons, an amendment may be
filed in the provisional application deleting the name or names of the
person or persons who were erroneously named. Such amendment must be
accompanied by:
(1) A petition including a statement by the person or persons whose
name or names are being deleted that the inventorship error occurred
without deceptive intention on the part of such person or persons;
(2) The fee set forth in Sec. 1.17(q); and
(3) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Sec. 3.73(b)).
(f)(1) If the correct inventor or inventors are not named on filing
a nonprovisional application under Sec. 1.53(b) without an executed
oath or declaration under Sec. 1.63, the later submission of an
executed oath or declaration under Sec. 1.63 during the pendency of the
application will act to correct the earlier identification of
inventorship.
(2) If the correct inventor or inventors are not named on filing a
provisional application without a cover sheet under Sec. 1.51(c)(1),
the later submission of a cover sheet under Sec. 1.51(c)(1) during the
pendency of the application will act to correct the earlier
identification of inventorship.
(g) The Office may require such other information as may be deemed
appropriate under the particular circumstances surrounding the
correction of inventorship.
19. Section 1.51 is revised to read as follows:
Sec. 1.51 General requisites of an application.
(a) Applications for patents must be made to the Commissioner of
Patents and Trademarks.
(b) A complete application filed under Sec. 1.53(b) comprises:
(1) A specification as prescribed by 35 U.S.C. 112, including a
claim or claims, see Secs. 1.71 to 1.77;
(2) An oath or declaration, see Sec. 1.63 and Sec. 1.68;
(3) Drawings, when necessary, see Secs. 1.81 to 1.85; and
(4) The prescribed filing fee, see Sec. 1.16.
(c) A complete provisional application filed under Sec. 1.53(c)
comprises:
(1) A cover sheet identifying:
(i) The application as a provisional application,
(ii) The name or names of the inventor or inventors, (see
Sec. 1.41(a)(2)),
(iii) The residence of each named inventor,
(iv) The title of the invention,
(v) The name and registration number of the attorney or agent (if
applicable),
(vi) The docket number used by the person filing the application to
identify the application (if applicable),
(vii) The correspondence address, and
(viii) The name of the U.S. Government agency and Government
contract number (if the invention was made by an agency of the U.S.
Government or under a contract with an agency of the U.S. Government);
(2) A specification as prescribed by the first paragraph of 35
U.S.C. 112, see Sec. 1.71;
[[Page 53186]]
(3) Drawings, when necessary, see Secs. 1.81 to 1.85; and
(4) The prescribed filing fee, see Sec. 1.16.
(d) Applicants are encouraged to file an information disclosure
statement in nonprovisional applications. See Sec. 1.97 and Sec. 1.98.
No information disclosure statement may be filed in a provisional
application.
20. Section 1.52 is amended by revising paragraphs (a), (c) and (d)
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 translation of the application and a translation of any
corrections or amendments into the English language together with a
statement that the translation is accurate. 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.
* * * * *
(c) Any interlineation, erasure, cancellation or other alteration
of the application papers filed should be made on or before the signing
of any accompanying oath or declaration pursuant to Sec. 1.63 referring
to those application papers and should be dated and initialed or signed
by the applicant on the same sheet of paper. Application papers
containing alterations made after the signing of an oath or declaration
referring to those application papers must be supported by a
supplemental oath or declaration under Sec. 1.67(c). After the signing
of the oath or declaration referring to the application papers,
amendments may only be made in the manner provided by Sec. 1.121.
(d) An application may be filed in a language other than English.
An English translation of the non-English-language application, a
statement that the translation is accurate, and the fee set forth in
Sec. 1.17(k) are required to be filed with the application or within
such time as may be set by the Office.
21. Section 1.53 is revised to read as follows:
Sec. 1.53 Application number, filing date, and completion of
application.
(a) Application number. Any papers received in the Patent and
Trademark Office which purport to be an application for a patent will
be assigned an application number for identification purposes.
(b) Application filing requirements--Nonprovisional application.
The filing date of an application for patent filed under this section,
except for a provisional application under paragraph (c) of this
section or a continued prosecution application under paragraph (d) of
this section, is the date on which a specification as prescribed by 35
U.S.C. 112 containing a description pursuant to Sec. 1.71 and at least
one claim pursuant to Sec. 1.75, and any drawing required by
Sec. 1.81(a) are filed in the Patent and Trademark Office. No new
matter may be introduced into an application after its filing date. A
continuing application, which may be a continuation, divisional, or
continuation-in-part application, may be filed under the conditions
specified in 35 U.S.C. 120, 121 or 365(c) and Sec. 1.78(a).
(1) A continuation or divisional application that names as
inventors the same or fewer than all of the inventors named in the
prior application may be filed under this paragraph or paragraph (d) of
this section.
(2) A continuation-in-part application (which may disclose and
claim subject matter not disclosed in the prior application) or a
continuation or divisional application naming an inventor not named in
the prior application must be filed under this paragraph.
(c) Application filing requirements--Provisional application. The
filing date of a provisional application is the date on which a
specification as prescribed by the first paragraph of 35 U.S.C. 112,
and any drawing required by Sec. 1.81(a) are filed in the Patent and
Trademark Office. No amendment, other than to make the provisional
application comply with the patent statute and all applicable
regulations, may be made to the provisional application after the
filing date of the provisional application.
(1) A provisional application must also include the cover sheet
required by Sec. 1.51(c)(1) or a cover letter identifying the
application as a provisional application. Otherwise, the application
will be treated as an application filed under paragraph (b) of this
section.
(2) An application for patent filed under paragraph (b) of this
section may be converted to a provisional application and be accorded
the original filing date of the application filed under paragraph (b)
of this section,
(i) Provided that a petition requesting the conversion, with the
fee set forth in Sec. 1.17(q), is filed prior to the earliest of:
(A) Abandonment of the application filed under paragraph (b) of
this section;
(B) Payment of the issue fee on the application filed under
paragraph (b) of this section;
(C) Expiration of twelve months after the filing date of the
application filed under paragraph (b) of this section; or
(D) The filing of a request for a statutory invention registration
under Sec. 1.293 in the application filed under paragraph (b) of this
section.
(ii) The grant of any such petition will not entitle applicant to a
refund of the fees which were properly paid in the application filed
under paragraph (b) of this section.
(3) A provisional application is not entitled to the right of
priority under 35 U.S.C. 119 or 365(a) or Sec. 1.55, or to the benefit
of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or
Sec. 1.78 of any other application. No claim for priority under
Sec. 1.78(a)(3) may be made in a design application based on a
provisional application. No request under Sec. 1.293 for a statutory
invention registration may be filed in a provisional application. The
requirements of Secs. 1.821 through 1.825 regarding application
disclosures containing nucleotide and/or amino acid sequences are not
mandatory for provisional applications.
(d) Application filing requirements--Continued prosecution
(nonprovisional) application. (1) A continuation or divisional
application (but not a continuation-in-part) of a prior nonprovisional
application may be filed as a continued prosecution application under
this paragraph, provided that:
(i) The prior nonprovisional application is either:
(A) Complete as defined by Sec. 1.51(b) and filed on or after June
8, 1995; or
(B) The national stage of an international application in
compliance with 35 U.S.C. 371 and filed on or after June 8, 1995; and
[[Page 53187]]
(ii) The application under this paragraph is filed before the
earliest of:
(A) Payment of the issue fee on the prior application, unless a
petition under Sec. 1.313(b)(5) is granted in the prior application;
(B) Abandonment of the prior application; or
(C) Termination of proceedings on the prior application.
(2) The filing date of a continued prosecution application is the
date on which a request on a separate paper for an application under
this paragraph is filed. An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the
prior application;
(iii) Names as inventors the same inventors named in the prior
application on the date the application under this paragraph was filed,
except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph,
will utilize the file jacket and contents of the prior application,
including the specification, drawings and oath or declaration from the
prior application, to constitute the new application, and will be
assigned the application number of the prior application for
identification purposes; and
(v) Is a request to expressly abandon the prior application as of
the filing date of the request for an application under this paragraph.
(3) The filing fee for a continued prosecution application filed
under this paragraph is:
(i) The basic filing fee as set forth in Sec. 1.16; and
(ii) Any additional Sec. 1.16 fee due based on the number of claims
remaining in the application after entry of any amendment accompanying
the request for an application under this paragraph and entry of any
amendments under Sec. 1.116 unentered in the prior application which
applicant has requested to be entered in the continued prosecution
application.
(4) An application filed under this paragraph may be filed by fewer
than all the inventors named in the prior application, provided that
the request for an application under this paragraph when filed is
accompanied by a statement requesting deletion of the name or names of
the person or persons who are not inventors of the invention being
claimed in the new application. No person may be named as an inventor
in an application filed under this paragraph who was not named as an
inventor in the prior application on the date the application under
this paragraph was filed, except by way of a petition under Sec. 1.48.
(5) Any new change must be made in the form of an amendment to the
prior application as it existed prior to the filing of an application
under this paragraph. No amendment in an application under this
paragraph (a continued prosecution application) may introduce new
matter or matter that would have been new matter in the prior
application. Any new specification filed with the request for an
application under this paragraph will not be considered part of the
original application papers, but will be treated as a substitute
specification in accordance with Sec. 1.125.
(6) The filing of a continued prosecution application under this
paragraph will be construed to include a waiver of confidentiality 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,
copies of, or information concerning either the prior application or
any continuing application filed under the provisions of this
paragraph, may be given similar access to, copies of, or similar
information concerning the other application or applications in the
file jacket.
(7) A request for an application under this paragraph is the
specific reference required by 35 U.S.C. 120 to every application
assigned the application number identified in such request. No
amendment in an application under this paragraph may delete this
specific reference to any prior application.
(8) In addition to identifying the application number of the prior
application, applicant should furnish in the request for an application
under this paragraph the following information relating to the prior
application to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) Envelopes containing only requests and fees for filing an
application under this paragraph should be marked ``Box CPA.'' Requests
for an application under this paragraph filed by facsimile transmission
should be clearly marked ``Box CPA.''
(e) Failure to meet filing date requirements. (1) If an application
deposited under paragraph (b), (c), or (d) of this section does not
meet the requirements of such paragraph to be entitled to a filing
date, applicant will be so notified, if a correspondence address has
been provided, and given a time period within which to correct the
filing error.
(2) Any request for review of a notification pursuant to paragraph
(e)(1) of this section, or a notification that the original application
papers lack a portion of the specification or drawing(s), must be by
way of a petition pursuant to this paragraph. Any petition under this
paragraph must be accompanied by the fee set forth in Sec. 1.17(i) in
an application filed under paragraphs (b) or (d) of this section, and
the fee set forth in Sec. 1.17(q) in an application filed under
paragraph (c) of this section. In the absence of a timely
(Sec. 1.181(f)) petition pursuant to this paragraph, the filing date of
an application in which the applicant was notified of a filing error
pursuant to paragraph (e)(1) of this section will be the date the
filing error is corrected.
(3) If an applicant is notified of a filing error pursuant to
paragraph (e)(1) of this section, but fails to correct the filing error
within the given time period or otherwise timely (Sec. 1.181(f)) take
action pursuant to this paragraph, proceedings in the application will
be considered terminated. Where proceedings in an application are
terminated pursuant to this paragraph, the application may be disposed
of, and any filing fees, less the handling fee set forth in
Sec. 1.21(n), will be refunded.
(f) Completion of application subsequent to filing--Nonprovisional
(including continued prosecution) application. If an application which
has been accorded a filing date pursuant to paragraph (b) of this
section, including a continuation, divisional, or continuation-in-part
application, does not include the appropriate filing fee or an oath or
declaration by the applicant pursuant to Sec. 1.63 or Sec. 1.175, or,
if an application which has been accorded a filing date pursuant to
paragraph (d) of this section does not include the appropriate filing
fee, applicant will be so notified, if a correspondence address has
been provided, and given a period of time within which to file the fee,
oath or declaration, and the surcharge as set forth in Sec. 1.16(e) in
order to prevent abandonment of the application. See Sec. 1.63(d)
concerning the submission of a copy of the oath or declaration from the
prior application for a continuation or divisional application. If the
required filing fee is not timely paid, or if the processing and
retention fee set forth in Sec. 1.21(l) is not paid within one year of
the date of mailing of the notification required by this paragraph, the
application may be disposed of. The notification pursuant to this
paragraph may be made simultaneously with any notification pursuant to
paragraph (e) of
[[Page 53188]]
this section. If no correspondence address is included in the
application, applicant has two months from the filing date to file the
basic filing fee, the oath or declaration in an application under
paragraph (b) of this section, and the surcharge as set forth in
Sec. 1.16(e) in order to prevent abandonment of the application; or, if
no basic filing fee has been paid, one year from the filing date to pay
the processing and retention fee set forth in Sec. 1.21(l) to prevent
disposal of the application.
(g) Completion of application subsequent to filing--Provisional
application. If a provisional application which has been accorded a
filing date pursuant to paragraph (c) of this section does not include
the appropriate filing fee or the cover sheet required by
Sec. 1.51(c)(1), applicant will be so notified, if a correspondence
address has been provided, and given a period of time within which to
file the fee, cover sheet, and the surcharge as set forth in
Sec. 1.16(l) in order to prevent abandonment of the application. If the
required filing fee is not timely paid, the application may be disposed
of. The notification pursuant to this paragraph may be made
simultaneously with any notification pursuant to paragraph (e) of this
section. If no correspondence address is included in the application,
applicant has two months from the filing date to file the basic filing
fee, cover sheet, and the surcharge as set forth in Sec. 1.16(l) in
order to prevent abandonment of the application.
(h) Subsequent treatment of application--Nonprovisional (including
continued prosecution) application. An application for a patent filed
under paragraphs (b) or (d) of this section will not be placed on the
files for examination until all its required parts, complying with the
rules relating thereto, are received, except that certain minor
informalities may be waived subject to subsequent correction whenever
required.
(i) Subsequent treatment of application--Provisional application. A
provisional application for a patent filed under paragraph (c) of this
section will not be placed on the files for examination and will become
abandoned no later than twelve months after its filing date pursuant to
35 U.S.C. 111(b)(1).
(j) Filing date of international application. The filing date of an
international application designating the United States of America is
treated as the filing date in the United States of America under PCT
Article 11(3), except as provided in 35 U.S.C. 102(e).
22. Section 1.54 is revised to read as follows:
Sec. 1.54 Parts of application to be filed together; filing receipt.
(a) It is desirable that all parts of the complete application be
deposited in the Office together; otherwise, a letter must accompany
each part, accurately and clearly connecting it with the other parts of
the application. See Sec. 1.53 (f) and (g) with regard to completion of
an application.
(b) Applicant will be informed of the application number and filing
date by a filing receipt, unless the application is an application
filed under Sec. 1.53(d).
23. Section 1.55 is amended by revising paragraph (a) to read as
follows:
Sec. 1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the
benefit of the filing date of one or more prior foreign applications
under the conditions specified in 35 U.S.C. 119 (a) through (d) and
172. The claim to priority need be in no special form and may be made
by the attorney or agent if the foreign application is referred to in
the oath or declaration as required by Sec. 1.63. The claim for
priority and the certified copy of the foreign application specified in
35 U.S.C. 119(b) must be filed in the case of an interference
(Sec. 1.630), when necessary to overcome the date of a reference relied
upon by the examiner, when specifically required by the examiner, and
in all other situations, before the patent is granted. If the claim for
priority or the certified copy of the foreign application is filed
after the date the issue fee is paid, it must be accompanied by a
petition requesting entry and by the fee set forth in Sec. 1.17(i). If
the certified copy is not in the English language, a translation need
not be filed except in the case of interference; or when necessary to
overcome the date of a reference relied upon by the examiner; or when
specifically required by the examiner, in which event an English
language translation must be filed together with a statement that the
translation of the certified copy is accurate.
* * * * *
24. Section 1.59 is revised to read as follows:
Sec. 1.59 Expungement of information or copy of papers in application
file.
(a) (1) Information in an application will not be expunged and
returned, except as provided in paragraph (b) of this section. See
Sec. 1.618 for return of unauthorized and improper papers in
interferences.
(2) Information forming part of the original disclosure (i.e.,
written specification including the claims, drawings, and any
preliminary amendment specifically incorporated into an executed oath
or declaration under Secs. 1.63 and 1.175) will not be expunged from
the application file.
(b) Information, other than what is excluded by paragraph (a)(2) of
this section, may be requested to be expunged and returned to applicant
upon petition under this paragraph and payment of the petition fee set
forth in Sec. 1.17(i). Any petition to expunge and return information
from an application must establish to the satisfaction of the
Commissioner that the return of the information is appropriate.
(c) Upon request by an applicant and payment of the fee specified
in Sec. 1.19(b), the Office will furnish copies of an application,
unless the application has been disposed of (see Sec. 1.53 (e), (f) and
(g)). The Office cannot provide or certify copies of an application
that has been disposed of.
Sec. 1.60 [Removed and reserved]
25. Section 1.60 is removed and reserved.
Sec. 1.62 [Removed and reserved]
26. Section 1.62 is removed and reserved.
27. Section 1.63 is amended by revising paragraphs (a) and (d) and
adding a paragraph (e) to read as follows:
Sec. 1.63 Oath or declaration.
(a) An oath or declaration filed under Sec. 1.51(b)(2) as a part of
an application must:
(1) Be executed in accordance with either Sec. 1.66 or Sec. 1.68;
(2) Identify the specification to which it is directed;
(3) Identify each inventor by: full name, including the family
name, and at least one given name without abbreviation together with
any other given name or initial, and the residence, post office address
and country of citizenship of each inventor; and
(4) State whether the inventor is a sole or joint inventor of the
invention claimed.
* * * * *
(d)(1) A newly executed oath or declaration is not required under
Sec. 1.51(b)(2) and Sec. 1.53(f) in a continuation or divisional
application, provided that:
(i) The prior nonprovisional application contained an oath or
declaration as prescribed by paragraphs (a) through (c) of this
section;
(ii) The continuation or divisional application was filed by all or
by fewer than all of the inventors named in the prior application;
(iii) The specification and drawings filed in the continuation or
divisional
[[Page 53189]]
application contain no matter that would have been new matter in the
prior application; and
(iv) A copy of the executed oath or declaration filed in the prior
application, showing the signature or an indication thereon that it was
signed, is submitted for the continuation or divisional application.
(2) The copy of the executed oath or declaration submitted under
this paragraph for a continuation or divisional application must be
accompanied by a statement requesting the deletion of the name or names
of the person or persons who are not inventors in the continuation or
divisional application.
(3) Where the executed oath or declaration of which a copy is
submitted for a continuation or divisional application was originally
filed in a prior application accorded status under Sec. 1.47, the copy
of the executed oath or declaration for such prior application must be
accompanied by:
(i) A copy of the decision granting a petition to accord Sec. 1.47
status to the prior application, unless all inventors or legal
representatives have filed an oath or declaration to join in an
application accorded status under Sec. 1.47 of which the continuation
or divisional application claims a benefit under 35 U.S.C. 120, 121, or
365(c); and
(ii) If one or more inventor(s) or legal representative(s) who
refused to join in the prior application or could not be found or
reached has subsequently joined in the prior application or another
application of which the continuation or divisional application claims
a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the
subsequently executed oath(s) or declaration(s) filed by the inventor
or legal representative to join in the application.
(4) Where the power of attorney (or authorization of agent) or
correspondence address was changed during the prosecution of the prior
application, the change in power of attorney (or authorization of
agent) or correspondence address must be identified in the continuation
or divisional application. Otherwise, the Office may not recognize in
the continuation or divisional application the change of power of
attorney (or authorization of agent) or correspondence address during
the prosecution of the prior application.
(5) A newly executed oath or declaration must be filed in a
continuation or divisional application naming an inventor not named in
the prior application.
(e) A newly executed oath or declaration must be filed in any
continuation-in-part application, which application may name all, more,
or fewer than all of the inventors named in the prior application. The
oath or declaration in any continuation-in-part application must also
state that the person making the oath or declaration acknowledges the
duty to disclose to the Office all information known to the person to
be material to patentability as defined in Sec. 1.56 which became
available between the filing date of the prior application and the
national or PCT international filing date of the continuation-in-part
application.
28. Section 1.67 is amended by revising paragraph (b) to read as
follows:
Sec. 1.67 Supplemental oath or declaration.
* * * * *
(b) A supplemental oath or declaration meeting the requirements of
Sec. 1.63 must be filed when a claim is presented for matter originally
shown or described but not substantially embraced in the statement of
invention or claims originally presented or when an oath or declaration
submitted in accordance with Sec. 1.53(f) after the filing of the
specification and any required drawings specifically and improperly
refers to an amendment which includes new matter. No new matter may be
introduced into a nonprovisional application after its filing date even
if a supplemental oath or declaration is filed. In proper situations,
the oath or declaration here required may be made on information and
belief by an applicant other than the inventor.
* * * * *
29. Section 1.69 is amended by revising paragraph (b) to read as
follows:
Sec. 1.69 Foreign language oaths and declarations.
* * * * *
(b) Unless the text of any oath or declaration in a language other
than English is a form provided or approved by the Patent and Trademark
Office, it must be accompanied by an English translation together with
a statement that the translation is accurate, except that in the case
of an oath or declaration filed under Sec. 1.63, the translation may be
filed in the Office no later than two months from the date applicant is
notified to file the translation.
30. Section 1.78 is amended by revising paragraph (a) to read as
follows:
Sec. 1.78 Claiming benefit of earlier filing date and cross-references
to other applications.
(a)(1) A nonprovisional application may claim an invention
disclosed in one or more prior filed copending nonprovisional
applications or copending international applications designating the
United States of America. In order for a nonprovisional application to
claim the benefit of a prior filed copending nonprovisional application
or copending international application designating the United States of
America, each prior application must name as an inventor at least one
inventor named in the later filed nonprovisional application and
disclose the named inventor's invention claimed in at least one claim
of the later filed nonprovisional application in the manner provided by
the first paragraph of 35 U.S.C. 112. In addition, each prior
application must be:
(i) An international application entitled to a filing date in
accordance with PCT Article 11 and designating the United States of
America; or
(ii) Complete as set forth in Sec. 1.51(b); or
(iii) Entitled to a filing date as set forth in Sec. 1.53(b) or
Sec. 1.53(d) and include the basic filing fee set forth in Sec. 1.16;
or
(iv) Entitled to a filing date as set forth in Sec. 1.53(b) and
have paid therein the processing and retention fee set forth in
Sec. 1.21(l) within the time period set forth in Sec. 1.53(f).
(2) Except for a continued prosecution application filed under
Sec. 1.53(d), 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. The request for a continued prosecution application under
Sec. 1.53(d) is the specific reference required by 35 U.S.C. 120 to the
prior application. The identification of an application by application
number under this section is the specific reference required by 35
U.S.C. 120 to every application assigned that application number.
Cross-references to other related applications may be made when
appropriate (see Sec. 1.14(a)).
(3) A nonprovisional application other than for a design patent may
claim an invention disclosed in one or more prior filed copending
provisional applications. Since a provisional application can be
pending for no more than twelve months, the last day of pendency may
occur on a Saturday,
[[Page 53190]]
Sunday, or Federal holiday within the District of Columbia which for
copendency would require the nonprovisional application to be filed on
or prior to the Saturday, Sunday, or Federal holiday. In order for a
nonprovisional application to claim the benefit of one or more prior
filed copending provisional applications, each prior provisional
application must name as an inventor at least one inventor named in the
later filed nonprovisional application and disclose the named
inventor's invention claimed in at least one claim of the later filed
nonprovisional application in the manner provided by the first
paragraph of 35 U.S.C. 112. In addition, each prior provisional
application must be:
(i) Complete as set forth in Sec. 1.51(c); or
(ii) Entitled to a filing date as set forth in Sec. 1.53(c) and
include the basic filing fee set forth in Sec. 1.16(k).
(4) Any nonprovisional application claiming the benefit of one or
more prior filed copending provisional applications must contain or be
amended to contain in the first sentence of the specification following
the title a reference to each such prior provisional application,
identifying it as a provisional application, and including the
provisional application number (consisting of series code and serial
number).
* * * * *
31. Section 1.84 is amended by revising paragraphs (a)(2)(i), (b),
(c) and (g) to read as follows:
Sec. 1.84 Standards for drawings.
(a) * * *
(2) * * *
(i) The fee set forth in Sec. 1.17(i);
* * * * *
(b) Photographs--(1) Black and white. Photographs are not
ordinarily permitted in utility patent applications. However, the
Office will accept photographs in utility patent applications only
after the granting of a petition filed under this paragraph which
requests that photographs be accepted. Any such petition must include
the following:
(i) The fee set forth in Sec. 1.17(i); and
(ii) Three (3) sets of photographs. Photographs must either be
developed on double weight photographic paper or be permanently mounted
on bristol board. The photographs must be of sufficient quality so that
all details in the drawings are reproducible in the printed patent.
(2) Color. Color photographs will be accepted in utility patent
applications if the conditions for accepting color drawings have been
satisfied. See paragraph (a)(2) of this section.
(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. (\5/8\ inch) from
the top of the sheet.
* * * * *
(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.
(\5/8\ 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.
* * * * *
32. Section 1.91 is revised to read as follows:
Sec. 1.91 Models or exhibits not generally admitted as part of
application or patent.
(a) A model or exhibit will not be admitted as part of the record
of an application unless it:
(1) Substantially conforms to the requirements of Sec. 1.52 or
Sec. 1.84;
(2) Is specifically required by the Office; or
(3) Is filed with a petition under this section including:
(i) The petition fee as set forth in Sec. 1.17(i); and
(ii) An explanation of why entry of the model or exhibit in the
file record is necessary to demonstrate patentability.
(b) Notwithstanding the provisions of paragraph (a) of this
section, a model, working model, or other physical exhibit may be
required by the Office if deemed necessary for any purpose in
examination of the application.
Sec. 1.92 [Removed and reserved]
33. Section 1.92 is removed and reserved.
34. Section 1.97 is amended by revising paragraphs (c) through (e)
to read as follows:
Sec. 1.97 Filing of information disclosure statement.
* * * * *
(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 information disclosure
statement is filed before the mailing date of either a final action
under Sec. 1.113, or a notice of allowance under Sec. 1.311, whichever
occurs first, and is accompanied by either:
(1) A statement as specified in paragraph (e) of this section; or
(2) The fee set forth in Sec. 1.17(p).
(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 information disclosure
statement is filed on or before payment of the issue fee and is
accompanied by:
(1) A statement 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).
(e) A statement under this section must state either:
(1) That each item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application not more than three months
prior to the filing of the information disclosure statement; or
(2) That no item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application, and, to the knowledge of
the person signing the statement after making reasonable inquiry, no
item of information contained in the information disclosure statement
was known to any individual designated in Sec. 1.56(c) more than three
months prior to the filing of the information disclosure statement.
* * * * *
Sec. 1.101 [Removed and reserved]
35. Section 1.101 is removed and reserved.
36. Section 1.102 is amended by revising paragraph (a) to read as
follows:
[[Page 53191]]
Sec. 1.102 Advancement of examination.
(a) Applications will not be advanced out of turn for examination
or for further action except as provided by this part, or upon order of
the Commissioner to expedite the business of the Office, or upon filing
of a request under paragraph (b) of this section or upon filing a
petition under paragraphs (c) or (d) of this section with a showing
which, in the opinion of the Commissioner, will justify so advancing
it.
* * * * *
37. Section 1.103 is amended by revising paragraph (a) to read as
follows:
Sec. 1.103 Suspension of action.
(a) Suspension of action by the Office will be granted for good and
sufficient cause and for a reasonable time specified upon petition by
the applicant and, if such cause is not the fault of the Office, the
payment of the fee set forth in Sec. 1.17(i). Action will not be
suspended when a reply by the applicant to an Office action is
required.
* * * * *
38. Section 1.104 is revised to read as follows:
Sec. 1.104 Nature of examination.
(a) Examiner's action. (1) On taking up an application for
examination or a patent in a reexamination proceeding, the examiner
shall make a thorough study thereof and shall make a thorough
investigation of the available prior art relating to the subject matter
of the claimed invention. The examination shall be complete with
respect both to compliance of the application or patent under
reexamination with the applicable statutes and rules and to the
patentability of the invention as claimed, as well as with respect to
matters of form, unless otherwise indicated.
(2) The applicant, or in the case of a reexamination proceeding,
both the patent owner and the requester, will be notified of the
examiner's action. The reasons for any adverse action or any objection
or requirement will be stated and such information or references will
be given as may be useful in aiding the applicant, or in the case of a
reexamination proceeding the patent owner, to judge the propriety of
continuing the prosecution.
(3) An international-type search will be made in all national
applications filed on and after June 1, 1978.
(4) Any national application may also have an international-type
search report prepared thereon at the time of the national examination
on the merits, upon specific written request therefor and payment of
the international-type search report fee set forth in Sec. 1.21(e). The
Patent and Trademark Office does not require that a formal report of an
international-type search be prepared in order to obtain a search fee
refund in a later filed international application.
(5) Copending applications will be considered by the examiner to be
owned by, or subject to an obligation of assignment to, the same person
if:
(i) The application files refer to assignments recorded in the
Patent and Trademark Office in accordance with part 3 of this chapter
which convey the entire rights in the applications to the same person
or organization; or
(ii) Copies of unrecorded assignments which convey the entire
rights in the applications to the same person or organization are filed
in each of the applications; or
(iii) An affidavit or declaration by the common owner is filed
which states that there is common ownership and states facts which
explain why the affiant or declarant believes there is common
ownership, which affidavit or declaration may be signed by an official
of the corporation or organization empowered to act on behalf of the
corporation or organization when the common owner is a corporation or
other organization; or
(iv) Other evidence is submitted which establishes common ownership
of the applications.
(b) Completeness of examiner's action. The examiner's action will
be complete as to all matters, except that in appropriate
circumstances, such as misjoinder of invention, fundamental defects in
the application, and the like, the action of the examiner may be
limited to such matters before further action is made. However, matters
of form need not be raised by the examiner until a claim is found
allowable.
(c) Rejection of claims. (1) If the invention is not considered
patentable, or not considered patentable as claimed, the claims, or
those considered unpatentable will be rejected.
(2) In rejecting claims for want of novelty or for obviousness, the
examiner must cite the best references at his or her command. When a
reference is complex or shows or describes inventions other than that
claimed by the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence of each reference,
if not apparent, must be clearly explained and each rejected claim
specified.
(3) In rejecting claims the examiner may rely upon admissions by
the applicant, or the patent owner in a reexamination proceeding, as to
any matter affecting patentability and, insofar as rejections in
applications are concerned, may also rely upon facts within his or her
knowledge pursuant to paragraph (d)(2) of this section.
(4) Subject matter which is developed by another person which
qualifies as prior art only under 35 U.S.C. 102(f) or (g) may be used
as prior art under 35 U.S.C. 103 against a claimed invention unless the
entire rights to the subject matter and the claimed invention were
commonly owned by the same person or organization or subject to an
obligation of assignment to the same person or organization at the time
the claimed invention was made.
(5) The claims in any original application naming an inventor will
be rejected as being precluded by a waiver in a published statutory
invention registration naming that inventor if the same subject matter
is claimed in the application and the statutory invention registration.
The claims in any reissue application naming an inventor will be
rejected as being precluded by a waiver in a published statutory
invention registration naming that inventor if the reissue application
seeks to claim subject matter:
(i) Which was not covered by claims issued in the patent prior to
the date of publication of the statutory invention registration; and
(ii) Which was the same subject matter waived in the statutory
invention registration.
(d) Citation of references. (1) 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.
(2) When a rejection in an application is based on facts within the
personal knowledge of an employee of the Office, the data shall be as
specific as possible, and the reference must be supported, when called
for by the applicant, by the affidavit of such employee, and such
affidavit shall be subject to contradiction or explanation by the
[[Page 53192]]
affidavits of the applicant and other persons.
(e) Reasons for allowance. If the examiner believes that the record
of the prosecution as a whole does not make clear his or her reasons
for allowing a claim or claims, the examiner may set forth such
reasoning. The reasons shall be incorporated into an Office action
rejecting other claims of the application or patent under reexamination
or be the subject of a separate communication to the applicant or
patent owner. The applicant or patent owner may file a statement
commenting on the reasons for allowance within such time as may be
specified by the examiner. Failure to file such a statement does not
give rise to any implication that the applicant or patent owner agrees
with or acquiesces in the reasoning of the examiner.
Sec. 1.105 [Removed and reserved]
39. Section 1.105 is removed and reserved.
Sec. 1.106 [Removed and reserved]
40. Section 1.106 is removed and reserved.
Sec. 1.107 [Removed and reserved]
41. Section 1.107 is removed and reserved.
Sec. 1.108 [Removed and reserved]
42. Section 1.108 is removed and reserved.
Sec. 1.109 [Removed and reserved]
43. Section 1.109 is removed and reserved.
44. Section 1.111 is amended by revising paragraph (b) to read as
follows:
Sec. 1.111 Reply by applicant or patent owner.
* * * * *
(b) In order to be entitled to reconsideration or further
examination, the applicant or patent owner must reply to the Office
action. The reply by the applicant or patent owner must be reduced to a
writing which distinctly and specifically points out the supposed
errors in the examiner's action and must reply to every ground of
objection and rejection in the prior Office action. The reply must
present arguments pointing out the specific distinctions believed to
render the claims, including any newly presented claims, patentable
over any applied references. If the reply is with respect to an
application, a request may be made that objections or requirements as
to form not necessary to further consideration of the claims be held in
abeyance until allowable subject matter is indicated. The applicant's
or patent owner's reply must appear throughout to be a bona fide
attempt to advance the application or the reexamination proceeding to
final action. A general allegation that the claims define a patentable
invention without specifically pointing out how the language of the
claims patentably distinguishes them from the references does not
comply with the requirements of this section.
* * * * *
45. Section 1.112 is revised to read as follows:
Sec. 1.112 Reconsideration before final action.
After reply by applicant or patent owner (Sec. 1.111) to a non-
final action, the application or patent under reexamination will be
reconsidered and again examined. The applicant or patent owner will be
notified if claims are rejected, or objections or requirements made, in
the same manner as after the first examination. Applicant or patent
owner may reply to such Office action in the same manner provided in
Sec. 1.111, with or without amendment, unless such Office action
indicates that it is made final (Sec. 1.113).
46. Section 1.113 is revised to read as follows:
Sec. 1.113 Final rejection or action.
(a) On the second or any subsequent examination or consideration by
the examiner the rejection or other action may be made final, whereupon
applicant's or patent owner's reply is limited to appeal in the case of
rejection of any claim (Sec. 1.191), or to amendment as specified in
Sec. 1.116. Petition may be taken to the Commissioner in the case of
objections or requirements not involved in the rejection of any claim
(Sec. 1.181). Reply to a final rejection or action must include
cancellation of, or appeal from the rejection of, each rejected claim.
If any claim stands allowed, the reply to a final rejection or action
must comply with any requirements or objections as to form.
(b) In making such final rejection, the examiner shall repeat or
state all grounds of rejection then considered applicable to the claims
in the application, clearly stating the reasons in support thereof.
Sec. 1.115 [Removed and Reserved]
47. Section 1.115 is removed and reserved.
48. Section 1.116 is amended by revising its heading and paragraph
(a) to read as follows:
Sec. 1.116 Amendments after final action or appeal.
(a) After a final rejection or other final action (Sec. 1.113),
amendments may be made cancelling claims or complying with any
requirement of form expressly set forth in a previous Office action.
Amendments presenting rejected claims in better form for consideration
on appeal may be admitted. The admission of, or refusal to admit, any
amendment after final rejection, and any related proceedings, will not
operate to relieve the application or patent under reexamination from
its condition as subject to appeal or to save the application from
abandonment under Sec. 1.135.
* * * * *
Sec. 1.117 [Removed and reserved]
49. Section 1.117 is removed and reserved.
Sec. 1.118 [Removed and reserved]
50. Section 1.118 is removed and reserved.
Sec. 1.119 [Removed and reserved]
51. Section 1.119 is removed and reserved.
52. Section 1.121 is revised to read as follows:
Sec. 1.121 Manner of making amendments.
(a) Amendments in nonprovisional applications, other than reissue
applications: Amendments in nonprovisional applications, excluding
reissue applications, are made by filing a paper, in compliance with
Sec. 1.52, directing that specified amendments be made.
(1) Specification other than the claims. Except as provided in
Sec. 1.125, amendments to add matter to, or delete matter from, the
specification, other than to the claims, may only be made as follows:
(i) Instructions for insertions: The precise point in the
specification must be indicated where an insertion is to be made, and
the matter to be inserted must be set forth.
(ii) Instructions for deletions: The precise point in the
specification must be indicated where a deletion is to be made, and the
matter to be deleted must be set forth or otherwise indicated.
(iii) Matter deleted by amendment can be reinstated only by a
subsequent amendment presenting the previously deleted matter as a new
insertion.
(2) Claims. Amendments to the claims may only be made as follows:
(i) Instructions for insertions and deletions: A claim may be
amended by specifying only the exact matter to be deleted or inserted
by an amendment and the precise point where the deletion or insertion
is to be made, where the changes are limited to:
(A) Deletions and/or
[[Page 53193]]
(B) The addition of no more than five (5) words in any one claim;
or
(ii) Claim cancellation or rewriting: A claim may be amended by
directions to cancel the claim or by rewriting such claim with
underlining below the matter added and brackets around the matter
deleted. The rewriting of a claim in this form will be construed as
directing the deletion of the previous version of that claim. If a
previously rewritten claim is again rewritten, underlining and
bracketing will be applied relative to the previous version of the
claim, with the parenthetical expression ``twice amended,'' ``three
times amended,'' etc., following the original claim number. The
original claim number followed by that parenthetical expression must be
used for the rewritten claim. No interlineations or deletions of any
prior amendment may appear in the currently submitted version of the
claim. A claim canceled by amendment (not deleted and rewritten) can be
reinstated only by a subsequent amendment presenting the claim as a new
claim with a new claim number.
(3) Drawings. (i) Amendments to the original application drawings
are not permitted. Any change to the application drawings must be by
way of a substitute sheet of drawings for each sheet changed submitted
in compliance with Sec. 1.84.
(ii) Where a change to the drawings is desired, a sketch in
permanent ink showing proposed changes in red, to become part of the
record, must be filed for approval by the examiner and should be in a
separate paper.
(4) Any amendment to an application that is present in a substitute
specification submitted pursuant to Sec. 1.125 must be presented under
the provisions of this paragraph either prior to or concurrent with
submission of the substitute specification.
(5) The disclosure must be amended, when required by the Office, to
correct inaccuracies of description and definition, and to secure
substantial correspondence between the claims, the remainder of the
specification, and the drawings.
(6) No amendment may introduce new matter into the disclosure of an
application.
(b) Amendments in reissue applications: Amendments in reissue
applications are made by filing a paper, in compliance with Sec. 1.52,
directing that specified amendments be made.
(1) Specification other than the claims. Amendments to the
specification, other than to the claims, may only be made as follows:
(i) Amendments must be made by submission of the entire text of a
newly added or rewritten paragraph(s) with markings pursuant to
paragraph (b)(1)(iii) of this section, except that an entire paragraph
may be deleted by a statement deleting the paragraph without
presentation of the text of the paragraph.
(ii) The precise point in the specification must be indicated where
the paragraph to be amended is located.
(iii) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.
(2) Claims. Amendments to the claims may only be made as follows:
(i)(A) The amendment must be made relative to the patent claims in
accordance with paragraph (b)(6) of this section and must include the
entire text of each claim which is being amended by the current
amendment and of each claim being added by the current amendment with
markings pursuant to paragraph (b)(2)(i)(C) of this section, except
that a patent claim or added claim should be cancelled by a statement
cancelling the patent claim or added claim without presentation of the
text of the patent claim or added claim.
(B) Patent claims must not be renumbered and the numbering of any
claims added to the patent must follow the number of the highest
numbered patent claim.
(C) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made. If a claim is amended pursuant
to paragraph (b)(2)(i)(A) of this section, a parenthetical expression
``amended,'' ``twice amended,'' etc., should follow the original claim
number.
(ii) Each amendment submission must set forth the status (i.e.,
pending or cancelled) as of the date of the amendment, of all patent
claims and of all added claims.
(iii) Each amendment when originally submitted must be accompanied
by an explanation of the support in the disclosure of the patent for
the amendment along with any additional comments on page(s) separate
from the page(s) containing the amendment.
(3) Drawings. (i) Amendments to the original patent drawings are
not permitted. Any change to the patent drawings must be by way of a
new sheet of drawings with the amended figures identified as
``amended'' and with added figures identified as ``new'' for each sheet
changed submitted in compliance with Sec. 1.84.
(ii) Where a change to the drawings is desired, a sketch in
permanent ink showing proposed changes in red, to become part of the
record, must be filed for approval by the examiner and should be in a
separate paper.
(4) The disclosure must be amended, when required by the Office, to
correct inaccuracies of description and definition, and to secure
substantial correspondence between the claims, the remainder of the
specification, and the drawings.
(5) No reissue patent shall be granted enlarging the scope of the
claims of the original patent unless applied for within two years from
the grant of the original patent, pursuant to 35 U.S.C. 251. No
amendment to the patent may introduce new matter or be made in an
expired patent.
(6) All amendments must be made relative to the patent
specification, including the claims, and drawings, which is in effect
as of the date of filing of the reissue application.
(c) Amendments in reexamination proceedings: Any proposed amendment
to the description and claims in patents involved in reexamination
proceedings must be made in accordance with Sec. 1.530(d).
Sec. 1.122 [Removed and reserved]
53. Section 1.122 is removed and reserved.
Sec. 1.123 [Removed and reserved]
54. Section 1.123 is removed and reserved.
Sec. 1.124 [Removed and reserved]
55. Section 1.124 is removed and reserved.
56. Section 1.125 is revised to read as follows:
Sec. 1.125 Substitute specification.
(a) If the number or nature of the amendments or the legibility of
the application papers renders it difficult to consider the
application, or to arrange the papers for printing or copying, the
Office may require the entire specification, including the claims, or
any part thereof, be rewritten.
(b) A substitute specification, excluding the claims, may be filed
at any point up to payment of the issue fee if it is accompanied by:
(1) A statement that the substitute specification includes no new
matter; and
(2) A marked-up copy of the substitute specification showing the
matter being added to and the matter being deleted from the
specification of record.
(c) A substitute specification submitted under this section must be
submitted in clean form without markings as to amended material.
[[Page 53194]]
(d) A substitute specification under this section is not permitted
in a reissue application or in a reexamination proceeding.
57. Section 1.126 is revised to read as follows:
Sec. 1.126 Numbering of claims.
The original numbering of the claims must be preserved throughout
the prosecution. When claims are canceled the remaining claims must not
be renumbered. When claims are added, they must be numbered by the
applicant consecutively beginning with the number next following the
highest numbered claim previously presented (whether entered or not).
When the application is ready for allowance, the examiner, if
necessary, will renumber the claims consecutively in the order in which
they appear or in such order as may have been requested by applicant.
58. Section 1.133 is amended by revising paragraph (b) to read as
follows:
Sec. 1.133 Interviews.
* * * * *
(b) In every instance where reconsideration is requested in view of
an interview with an examiner, a complete written statement of the
reasons presented at the interview as warranting favorable action must
be filed by the applicant. An interview does not remove the necessity
for reply to Office actions as specified in Secs. 1.111 and 1.135.
Subpart B--[Amended]
59. The undesignated center heading in Subpart B--National
Processing Provisions, following Sec. 1.133 is revised to read as
follows:
Time for Reply by Applicant; Abandonment of Application
60. Section 1.134 is revised to read as follows:
Sec. 1.134 Time period for reply to an Office action.
An Office action will notify the applicant of any non-statutory or
shortened statutory time period set for reply to an Office action.
Unless the applicant is notified in writing that a reply is required in
less than six months, a maximum period of six months is allowed.
61. Section 1.135 is revised to read as follows:
Sec. 1.135 Abandonment for failure to reply within time period.
(a) If an applicant of a patent application fails to reply within
the time period provided under Sec. 1.134 and Sec. 1.136, the
application will become abandoned unless an Office action indicates
otherwise.
(b) Prosecution of an application to save it from abandonment
pursuant to paragraph (a) of this section must include such complete
and proper reply as the condition of the application may require. The
admission of, or refusal to admit, any amendment after final rejection
or any amendment not responsive to the last action, or any related
proceedings, will not operate to save the application from abandonment.
(c) When reply by the applicant is a bona fide attempt to advance
the application to final action, and is substantially a complete reply
to the non-final Office action, but consideration of some matter or
compliance with some requirement has been inadvertently omitted,
applicant may be given a new time period for reply under Sec. 1.134 to
supply the omission.
62. Section 1.136 is revised to read as follows:
Sec. 1.136 Extensions of time
(a)(1) If an applicant is required to reply within a nonstatutory
or shortened statutory time period, applicant may extend the time
period for reply up to the earlier of the expiration of any maximum
period set by statute or five months after the time period set for
reply, if a petition for an extension of time and the fee set in
Sec. 1.17(a) are filed, unless:
(i) Applicant is notified otherwise in an Office action;
(ii) The reply is a reply brief submitted pursuant to
Sec. 1.193(b);
(iii) The reply is a request for an oral hearing submitted pursuant
to Sec. 1.194(b);
(iv) The reply is to a decision by the Board of Patent Appeals and
Interferences pursuant to Sec. 1.196, Sec. 1.197 or Sec. 1.304; or
(v) The application is involved in an interference declared
pursuant to Sec. 1.611.
(2) The date on which the petition and the fee have been filed is
the date for purposes of determining the period of extension and the
corresponding amount of the fee. The expiration of the time period is
determined by the amount of the fee paid. A reply must be filed prior
to the expiration of the period of extension to avoid abandonment of
the application (Sec. 1.135), but in no situation may an applicant
reply later than the maximum time period set by statute, or be granted
an extension of time under paragraph (b) of this section when the
provisions of this paragraph are available. See Sec. 1.136(b) for
extensions of time relating to proceedings pursuant to Secs. 1.193(b),
1.194, 1.196 or 1.197; Sec. 1.304 for extension of time to appeal to
the U.S. Court of Appeals for the Federal Circuit or to commence a
civil action; Sec. 1.550(c) for extension of time in reexamination
proceedings; and Sec. 1.645 for extension of time in interference
proceedings.
(3) A written request may be submitted in an application that is an
authorization to treat any concurrent or future reply, requiring a
petition for an extension of time under this paragraph for its timely
submission, as incorporating a petition for extension of time for the
appropriate length of time. An authorization to charge all required
fees, fees under Sec. 1.17, or all required extension of time fees will
be treated as a constructive petition for an extension of time in any
concurrent or future reply requiring a petition for an extension of
time under this paragraph for its timely submission. Submission of the
fee set forth in Sec. 1.17(a) will also be treated as a constructive
petition for an extension of time in any concurrent reply requiring a
petition for an extension of time under this paragraph for its timely
submission.
(b) When a reply cannot be filed within the time period set for
such reply and the provisions of paragraph (a) of this section are not
available, the period for reply will be extended only for sufficient
cause and for a reasonable time specified. Any request for an extension
of time under this paragraph must be filed on or before the day on
which such reply is due, but the mere filing of such a request will not
effect any extension under this paragraph. In no situation can any
extension carry the date on which reply is due beyond the maximum time
period set by statute. See Sec. 1.304 for extension of time to appeal
to the U.S. Court of Appeals for the Federal Circuit or to commence a
civil action; Sec. 1.645 for extension of time in interference
proceedings; and Sec. 1.550(c) for extension of time in reexamination
proceedings.
63. Section 1.137 is revised to read as follows:
Sec. 1.137 Revival of abandoned application or lapsed patent.
(a) Unavoidable. Where the delay in reply was unavoidable, a
petition may be filed to revive an abandoned application or a lapsed
patent pursuant to this paragraph. A grantable petition pursuant to
this paragraph must be accompanied by:
(1) The required reply, unless previously filed. In a
nonprovisional application abandoned for failure to prosecute, the
required reply may be met by the filing of a continuing
[[Page 53195]]
application. In an application or patent, abandoned or lapsed for
failure to pay the issue fee or any portion thereof, the required reply
must be the payment of the issue fee or any outstanding balance
thereof;
(2) The petition fee as set forth in Sec. 1.17(l);
(3) A showing to the satisfaction of the Commissioner that the
entire delay in filing the required reply from the due date for the
reply until the filing of a grantable petition pursuant to this
paragraph was unavoidable; and
(4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d))
required pursuant to paragraph (c) of this section.
(b) Unintentional. Where the delay in reply was unintentional, a
petition may be filed to revive an abandoned application or a lapsed
patent pursuant to this paragraph. A grantable petition pursuant to
this paragraph must be accompanied by:
(1) The required reply, unless previously filed. In a
nonprovisional application abandoned for failure to prosecute, the
required reply may be met by the filing of a continuing application. In
an application or patent, abandoned or lapsed for failure to pay the
issue fee or any portion thereof, the required reply must be the
payment of the issue fee or any outstanding balance thereof;
(2) The petition fee as set forth in Sec. 1.17(m);
(3) A statement that the entire delay in filing the required reply
from the due date for the reply until the filing of a grantable
petition pursuant to this paragraph was unintentional. The Commissioner
may require additional information where there is a question whether
the delay was unintentional; and
(4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d))
required pursuant to paragraph (c) of this section.
(c) In a design application, a utility application filed before
June 8, 1995, or a plant application filed before June 8, 1995, any
petition to revive pursuant to this section must be accompanied by a
terminal disclaimer and fee as set forth in Sec. 1.321 dedicating to
the public a terminal part of the term of any patent granted thereon
equivalent to the period of abandonment of the application. Any
terminal disclaimer pursuant to this paragraph must also apply to any
patent granted on any continuing application that contains a specific
reference under 35 U.S.C. 120, 121, or 365(c) to the application for
which revival is sought. The provisions of this paragraph do not apply
to lapsed patents.
(d) Any request for reconsideration or review of a decision
refusing to revive an abandoned application or lapsed patent upon
petition filed pursuant to this section, to be considered timely, must
be filed within two months of the decision refusing to revive or within
such time as set in the decision. Unless a decision indicates
otherwise, this time period may be extended under the provisions of
Sec. 1.136.
(e) A provisional application, abandoned for failure to timely
respond to an Office requirement, may be revived pursuant to this
section so as to be pending for a period of no longer than twelve
months from its filing date. Under no circumstances will a provisional
application be regarded as pending after twelve months from its filing
date.
Sec. 1.139 [Removed and reserved]
64. Section 1.139 is removed and reserved.
65. Section 1.142 is amended by revising paragraph (a) to read as
follows:
Sec. 1.142 Requirement for restriction.
(a) If two or more independent and distinct inventions are claimed
in a single application, the examiner in an Office action will require
the applicant in the reply to that action to elect an invention to
which the claims will be restricted, this official action being called
a requirement for restriction (also known as a requirement for
division). Such requirement will normally be made before any action on
the merits; however, it may be made at any time before final action.
* * * * *
66. Section 1.144 is revised to read as follows:
Sec. 1.144 Petition from requirement for restriction.
After a final requirement for restriction, the applicant, in
addition to making any reply due on the remainder of the action, may
petition the Commissioner to review the requirement. Petition may be
deferred until after final action on or allowance of claims to the
invention elected, but must be filed not later than appeal. A petition
will not be considered if reconsideration of the requirement was not
requested (see Sec. 1.181).
67. Section 1.146 is revised to read as follows:
Sec. 1.146 Election of species.
In the first action on an application containing a generic claim to
a generic invention (genus) and claims to more than one patentably
distinct species embraced thereby, the examiner may require the
applicant in the reply to that action to elect a species of his or her
invention to which his or her claim will be restricted if no claim to
the genus is found to be allowable. However, if such application
contains claims directed to more than a reasonable number of species,
the examiner may require restriction of the claims to not more than a
reasonable number of species before taking further action in the
application.
68. Section 1.152 is revised to read as follows:
Sec. 1.152 Design drawings.
(a) The design must be represented by a drawing that complies with
the requirements of Sec. 1.84, and must contain a sufficient number of
views to constitute a complete disclosure of the appearance of the
design.
(1) Appropriate and adequate surface shading should be used to show
the character or contour of the surfaces represented. Solid black
surface shading is not permitted except when used to represent the
color black as well as color contrast. Broken lines may be used to show
visible environmental structure, but may not be used to show hidden
planes and surfaces which cannot be seen through opaque materials.
Alternate positions of a design component, illustrated by full and
broken lines in the same view are not permitted in a design drawing.
(2) Color photographs and color drawings are not permitted in
design applications in the absence of a grantable petition pursuant to
Sec. 1.84(a)(2). Photographs and ink drawings are not permitted to be
combined as formal drawings in one application. Photographs submitted
in lieu of ink drawings in design patent applications must comply with
Sec. 1.84(b) and must not disclose environmental structure but must be
limited to the design for the article claimed.
(b) Any detail shown in the ink or color drawings or photographs
(formal or informal) deposited with the original application papers
constitutes an integral part of the disclosed and claimed design,
except as otherwise provided in this paragraph. This detail may
include, but is not limited to, color or contrast, graphic or written
indicia, including identifying indicia of a proprietary nature, surface
ornamentation on an article, or any combination thereof.
(1) When any detail shown in informal drawings or photographs does
not constitute an integral part of the disclosed and claimed design, a
specific disclaimer must appear in the original application papers
either in the specification or directly on the drawings or photographs.
This specific disclaimer
[[Page 53196]]
in the original application papers will provide antecedent basis for
the omission of the disclaimed detail(s) in later-filed drawings or
photographs.
(2) When informal color drawings or photographs are deposited with
the original application papers without a disclaimer pursuant to
paragraph (b)(1) of this section, formal color drawings or photographs,
or a black and white drawing lined to represent color, will be
required.
69. Section 1.154 is amended by revising its heading and paragraph
(a)(3) as to read follows:
Sec. 1.154 Arrangement of application elements.
(a) * * *
(3) Preamble, stating name of the applicant, title of the design,
and a brief description of the nature and intended use of the article
in which the design is embodied.
* * * * *
70. Section 1.155 is revised to read as follows:
Sec. 1.155 Issue of design patents.
If, on examination, it appears that the applicant is entitled to a
design patent under the law, a notice of allowance will be sent to the
applicant, or applicant's attorney or agent, calling for the payment of
the issue fee (Sec. 1.18(b)). If this issue fee is not paid within
three months of the date of the notice of allowance, the application
shall be regarded as abandoned.
71. Section 1.163 is amended by revising its heading and paragraph
(b) to read as follows:
Sec. 1.163 Specification and arrangement of application elements.
* * * * *
(b) Two copies of the specification (including the claim) must be
submitted, but only one signed oath or declaration is required.
* * * * *
72. Section 1.167 is revised to read as follows:
Sec. 1.167 Examination.
Applications may be submitted by the Patent and Trademark Office to
the Department of Agriculture for study and report.
73. Section 1.171 is revised to read as follows:
Sec. 1.171 Application for reissue.
An application for reissue must contain the same parts required for
an application for an original patent, complying with all the rules
relating thereto except as otherwise provided, and in addition, must
comply with the requirements of the rules relating to reissue
applications.
74. Section 1.172 is amended by revising paragraph (a) to read as
follows:
Sec. 1.172 Applicants, assignees.
(a) A reissue oath must be signed and sworn to or declaration made
by the inventor or inventors except as otherwise provided (see
Secs. 1.42, 1.43, 1.47), and must be accompanied by the written consent
of all assignees, if any, owning an undivided interest in the patent,
but a reissue oath may be made and sworn to or declaration made by the
assignee of the entire interest if the application does not seek to
enlarge the scope of the claims of the original patent. All assignees
consenting to the reissue must establish their ownership interest in
the patent by filing in the reissue application a submission in
accordance with the provisions of Sec. 3.73(b) of this chapter.
* * * * *
75. Section 1.175 is revised to read as follows:
Sec. 1.175 Reissue oath or declaration.
(a) The reissue oath or declaration in addition to complying with
the requirements of Sec. 1.63, must also state that:
(1) The applicant believes the original patent to be wholly or
partly inoperative or invalid by reason of a defective specification or
drawing, or by reason of the patentee claiming more or less than the
patentee had the right to claim in the patent, stating at least one
error being relied upon as the basis for reissue; and
(2) All errors being corrected in the reissue application up to the
time of filing of the oath or declaration under this paragraph arose
without any deceptive intention on the part of the applicant.
(b)(1) For any error corrected, which is not covered by the oath or
declaration submitted under paragraph (a) of this section, applicant
must submit a supplemental oath or declaration stating that every such
error arose without any deceptive intention on the part of the
applicant. Any supplemental oath or declaration required by this
paragraph must be submitted before allowance and may be submitted:
(i) With any amendment prior to allowance; or
(ii) In order to overcome a rejection under 35 U.S.C. 251 made by
the examiner where it is indicated that the submission of a
supplemental oath or declaration as required by this paragraph will
overcome the rejection.
(2) For any error sought to be corrected after allowance, a
supplemental oath or declaration must accompany the requested
correction stating that the error(s) to be corrected arose without any
deceptive intention on the part of the applicant.
(c) Having once stated an error upon which the reissue is based, as
set forth in paragraph (a)(1), unless all errors previously stated in
the oath or declaration are no longer being corrected, a subsequent
oath or declaration under paragraph (b) of this section need not
specifically identify any other error or errors being corrected.
(d) The oath or declaration required by paragraph (a) of this
section may be submitted under the provisions of Sec. 1.53(f).
76. Section 1.182 is revised to read as follows:
Sec. 1.182 Questions not specifically provided for.
All situations not specifically provided for in the regulations of
this part will be decided in accordance with the merits of each
situation by or under the authority of the Commissioner, subject to
such other requirements as may be imposed, and such decision will be
communicated to the interested parties in writing. Any petition seeking
a decision under this section must be accompanied by the petition fee
set forth in Sec. 1.17(h).
77. Section 1.184 is removed and reserved.
Sec. 1.184 [Removed and reserved]
78. Section 1.191 is amended by revising paragraphs (a) and (b) to
read as follows:
Sec. 1.191 Appeal to Board of Patent Appeals and Interferences.
(a) Every applicant for a patent or for reissue of a patent, and
every owner of a patent under reexamination, any of whose claims has
been twice or finally (Sec. 1.113) rejected, may appeal from the
decision of the examiner to the Board of Patent Appeals and
Interferences by filing a notice of appeal and the fee set forth in
Sec. 1.17(b) within the time period provided under Secs. 1.134 and
1.136 for reply.
(b) The signature requirement of Sec. 1.33 does not apply to a
notice of appeal filed under this section.
* * * * *
79. Section 1.192 is amended by revising paragraph (a) to read as
follows:
Sec. 1.192 Appellant's brief.
(a) Appellant must, within two months from the date of the notice
of appeal under Sec. 1.191 or within the time allowed for reply to the
action from which the appeal was taken, if such
[[Page 53197]]
time is later, file a brief in triplicate. The brief must be
accompanied by the fee set forth in Sec. 1.17(c) and must set forth the
authorities and arguments on which appellant will rely to maintain the
appeal. Any arguments or authorities not included in the brief will be
refused consideration by the Board of Patent Appeals and Interferences,
unless good cause is shown.
* * * * *
80. Section 1.193 is revised to read as follows:
Sec. 1.193 Examiner's answer and reply brief.
(a) (1) The primary examiner may, within such time as may be
directed by the Commissioner, furnish a written statement in answer to
appellant's brief including such explanation of the invention claimed
and of the references and grounds of rejection as may be necessary,
supplying a copy to appellant. If the primary examiner finds that the
appeal is not regular in form or does not relate to an appealable
action, the primary examiner shall so state.
(2) An examiner's answer must not include a new ground of
rejection, but if an amendment under Sec. 1.116 proposes to add or
amend one or more claims and appellant was advised that the amendment
under Sec. 1.116 would be entered for purposes of appeal and which
individual rejection(s) set forth in the action from which the appeal
was taken would be used to reject the added or amended claim(s), then
the appeal brief must address the rejection(s) of the claim(s) added or
amended by the amendment under Sec. 1.116 as appellant was so advised
and the examiner's answer may include the rejection(s) of the claim(s)
added or amended by the amendment under Sec. 1.116 as appellant was so
advised. The filing of an amendment under Sec. 1.116 which is entered
for purposes of appeal represents appellant's consent that when so
advised any appeal proceed on those claim(s) added or amended by the
amendment under Sec. 1.116 subject to any rejection set forth in the
action from which the appeal was taken.
(b) (1) Appellant may file a reply brief to an examiner's answer
within two months from the date of such examiner's answer. See
Sec. 1.136(b) for extensions of time for filing a reply brief in a
patent application and Sec. 1.550(c) for extensions of time for filing
a reply brief in a reexamination proceeding. The primary examiner must
either acknowledge receipt and entry of the reply brief or withdraw the
final rejection and reopen prosecution to respond to the reply brief. A
supplemental examiner's answer is not permitted, unless the application
has been remanded by the Board of Patent Appeals and Interferences for
such purpose.
(2) Where prosecution is reopened by the primary examiner after an
appeal or reply brief has been filed, appellant must exercise one of
the following two options to avoid abandonment of the application:
(i) File a reply under Sec. 1.111, if the Office action is not
final, or a reply under Sec. 1.113, if the Office action is final; or
(ii) Request reinstatement of the appeal. If reinstatement of the
appeal is requested, such request must be accompanied by a supplemental
appeal brief, but no new amendments, affidavits (Secs. 1.130, 1.131 or
1.132) or other evidence are permitted.
81. Section 1.194 is revised to read as follows:
Sec. 1.194 Oral hearing.
(a) An oral hearing should be requested only in those circumstances
in which appellant considers such a hearing necessary or desirable for
a proper presentation of the appeal. An appeal decided without an oral
hearing will receive the same consideration by the Board of Patent
Appeals and Interferences as appeals decided after oral hearing.
(b) If appellant desires an oral hearing, appellant must file, in a
separate paper, a written request for such hearing accompanied by the
fee set forth in Sec. 1.17(d) within two months from the date of the
examiner's answer. If appellant requests an oral hearing and submits
therewith the fee set forth in Sec. 1.17(d), an oral argument may be
presented by, or on behalf of, the primary examiner if considered
desirable by either the primary examiner or the Board. See
Sec. 1.136(b) for extensions of time for requesting an oral hearing in
a patent application and Sec. 1.550(c) for extensions of time for
requesting an oral hearing in a reexamination proceeding.
(c) If no request and fee for oral hearing have been timely filed
by appellant, the appeal will be assigned for consideration and
decision. If appellant has requested an oral hearing and has submitted
the fee set forth in Sec. 1.17(d), a day of hearing will be set, and
due notice thereof given to appellant and to the primary examiner. A
hearing will be held as stated in the notice, and oral argument will be
limited to twenty minutes for appellant and fifteen minutes for the
primary examiner unless otherwise ordered before the hearing begins. If
the Board decides that a hearing is not necessary, the Board will so
notify appellant.
82. Section 1.196 is amended by revising paragraphs (b) and (d) to
read as follows:
Sec. 1.196 Decision by the Board of Patent Appeals and Interferences.
* * * * *
(b) Should the Board of Patent Appeals and Interferences have
knowledge of any grounds not involved in the appeal for rejecting any
pending claim, it may include in the decision a statement to that
effect with its reasons for so holding, which statement constitutes a
new ground of rejection of the claim. A new ground of rejection shall
not be considered final for purposes of judicial review. When the Board
of Patent Appeals and Interferences makes a new ground of rejection,
the appellant, within two months from the date of the decision, must
exercise one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (Sec. 1.197(c))
as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which event the application
will be remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or showing of facts not
previously of record be made which, in the opinion of the examiner,
overcomes the new ground of rejection stated in the decision. Should
the examiner reject the claims, appellant may again appeal pursuant to
Secs. 1.191 through 1.195 to the Board of Patent Appeals and
Interferences.
(2) Request that the application be reheard under Sec. 1.197(b) by
the Board of Patent Appeals and Interferences upon the same record. The
request for rehearing must address the new ground of rejection and
state with particularity the points believed to have been
misapprehended or overlooked in rendering the decision and also state
all other grounds upon which rehearing is sought. Where request for
such rehearing is made, the Board of Patent Appeals and Interferences
shall rehear the new ground of rejection and, if necessary, render a
new decision which shall include all grounds of rejection upon which a
patent is refused. The decision on rehearing is deemed to incorporate
the earlier decision for purposes of appeal, except for those portions
specifically withdrawn on rehearing, and is final for the purpose of
judicial review, except when noted otherwise in the decision.
* * * * *
[[Page 53198]]
(d) The Board of Patent Appeals and Interferences may require
appellant to address any matter that is deemed appropriate for a
reasoned decision on the pending appeal. Appellant will be given a non-
extendable time period within which to respond to such a requirement.
* * * * *
83. Section 1.197 is amended by revising paragraphs (a) and (b) to
read as follows:
Sec. 1.197 Action following decision.
(a) After decision by the Board of Patent Appeals and
Interferences, the application will be returned to the examiner,
subject to appellant's right of appeal or other review, for such
further action by appellant or by the examiner, as the condition of the
application may require, to carry into effect the decision.
(b) Appellant may file a single request for rehearing within two
months from the date of the original decision, unless the original
decision is so modified by the decision on rehearing as to become, in
effect, a new decision, and the Board of Patent Appeals and
Interferences so states. The request for rehearing must state with
particularity the points believed to have been misapprehended or
overlooked in rendering the decision and also state all other grounds
upon which rehearing is sought. See Sec. 1.136(b) for extensions of
time for seeking rehearing in a patent application and Sec. 1.550(c)
for extensions of time for seeking rehearing in a reexamination
proceeding.
* * * * *
84. Section 1.291 is amended by revising paragraph (c) to read as
follows:
Sec. 1.291 Protests by the public against pending applications.
* * * * *
(c) A member of the public filing a protest in an application under
paragraph (a) of this section will not receive any communications from
the Office relating to the protest, other than the return of a self-
addressed postcard which the member of the public may include with the
protest in order to receive an acknowledgment by the Office that the
protest has been received. In the absence of a request by the Office,
an applicant has no duty to, and need not, reply to a protest. The
limited involvement of the member of the public filing a protest
pursuant to paragraph (a) of this section ends with the filing of the
protest, and no further submission on behalf of the protestor will be
considered, except for additional prior art, or unless such submission
raises new issues which could not have been earlier presented.
85. Section 1.293 is amended by revising paragraph (c) to read as
follows:
Sec. 1.293 Statutory invention registration.
* * * * *
(c) A waiver filed with a request for a statutory invention
registration will be effective, upon publication of the statutory
invention registration, to waive the inventor's right to receive a
patent on the invention claimed in the statutory invention
registration, in any application for an original patent which is
pending on, or filed after, the date of publication of the statutory
invention registration. A waiver filed with a request for a statutory
invention registration will not affect the rights of any other inventor
even if the subject matter of the statutory invention registration and
an application of another inventor are commonly owned. A waiver filed
with a request for a statutory invention registration will not affect
any rights in a patent to the inventor which issued prior to the date
of publication of the statutory invention registration unless a reissue
application is filed seeking to enlarge the scope of the claims of the
patent. See also Sec. 1.104(c)(5).
86. Section 1.294 is amended by revising paragraph (b) to read as
follows:
Sec. 1.294 Examination of request for publication of a statutory
invention registration and patent application to which the request is
directed.
* * * * *
(b) Applicant will be notified of the results of the examination
set forth in paragraph (a) of this section. If the requirements of
Sec. 1.293 and this section are not met by the request filed, the
notification to applicant will set a period of time within which to
comply with the requirements in order to avoid abandonment of the
application. If the application does not meet the requirements of 35
U.S.C. 112, the notification to applicant will include a rejection
under the appropriate provisions of 35 U.S.C. 112. The periods for
reply established pursuant to this section are subject to the extension
of time provisions of Sec. 1.136. After reply by the applicant, the
application will again be considered for publication of a statutory
invention registration. If the requirements of Sec. 1.293 and this
section are not timely met, the refusal to publish will be made final.
If the requirements of 35 U.S.C. 112 are not met, the rejection
pursuant to 35 U.S.C. 112 will be made final.
* * * * *
87. Section 1.304 is amended by revising paragraph (a)(1) to read
as follows:
Sec. 1.304 Time for appeal or civil action.
(a)(1) The time for filing the notice of appeal to the U.S. Court
of Appeals for the Federal Circuit (Sec. 1.302) or for commencing a
civil action (Sec. 1.303) is two months from the date of the decision
of the Board of Patent Appeals and Interferences. If a request for
rehearing or reconsideration of the decision is filed within the time
period provided under Sec. 1.197(b) or Sec. 1.658(b), the time for
filing an appeal or commencing a civil action shall expire two months
after action on the request. In interferences, the time for filing a
cross-appeal or cross-action expires:
(i) 14 days after service of the notice of appeal or the summons
and complaint; or
(ii) Two months after the date of decision of the Board of Patent
Appeals and Interferences, whichever is later.
* * * * *
88. Section 1.312 is amended by revising paragraph (b) to read as
follows:
Sec. 1.312 Amendments after allowance.
* * * * *
(b) Any amendment pursuant to paragraph (a) of this section filed
after the date the issue fee is paid must be accompanied by a petition
including the fee set forth in Sec. 1.17(i) and a showing of good and
sufficient reasons why the amendment is necessary and was not earlier
presented. For reissue applications, see Sec. 1.175(b), which requires
a supplemental oath or declaration to accompany the amendment.
89. Section 1.316 is revised to read as follows:
Sec. 1.316 Application abandoned for failure to pay issue fee.
If the issue fee is not paid within three months from the date of
the notice of allowance, the application will be regarded as abandoned.
Such an abandoned application will not be considered as pending before
the Patent and Trademark Office.
90. Section 1.317 is revised to read as follows:
Sec. 1.317 Lapsed patents; delayed payment of balance of issue fee.
If the issue fee paid is the amount specified in the notice of
allowance, but a higher amount is required at the time the issue fee is
paid, any remaining balance of the issue fee is to be paid within three
months from the date of notice thereof and, if not paid, the patent
will lapse at the termination of the three-month period.
Sec. 1.318 [Removed and reserved]
91. Section 1.318 is removed and reserved.
[[Page 53199]]
92. Section 1.324 is revised to read as follows:
Sec. 1.324 Correction of inventorship in patent.
(a) Whenever through error a person is named in an issued patent as
the inventor, or through error an inventor is not named in an issued
patent and such error arose without any deceptive intention on his or
her part, the Commissioner may, on petition, or on order of a court
before which such matter is called in question, issue a certificate
naming only the actual inventor or inventors. A petition to correct
inventorship of a patent involved in an interference must comply with
the requirements of this section and must be accompanied by a motion
under Sec. 1.634.
(b) Any petition pursuant to paragraph (a) of this section must be
accompanied by:
(1) A statement from each person who is being added as an inventor
and from each person who is being deleted as an inventor that the
inventorship error occurred without any deceptive intention on his or
her part;
(2) A statement from the current named inventors who have not
submitted a statement under paragraph (b)(1) of this section either
agreeing to the change of inventorship or stating that they have no
disagreement in regard to the requested change;
(3) A statement from all assignees of the parties submitting a
statement under paragraphs (b)(1) and (b)(2) of this section agreeing
to the change of inventorship in the patent, which statement must
comply with the requirements of Sec. 3.73(b) of this chapter; and
(4) The fee set forth in Sec. 1.20(b).
Sec. 1.352 [Removed and reserved]
93. Section 1.352 is removed and reserved.
94. Section 1.366 is amended by revising paragraphs (b) through (d)
to read as follows:
Sec. 1.366 Submission of maintenance fees.
* * * * *
(b) A maintenance fee and any necessary surcharge submitted for a
patent must be submitted in the amount due on the date the maintenance
fee and any necessary surcharge are paid. A maintenance fee or
surcharge may be paid in the manner set forth in Sec. 1.23 or by an
authorization to charge a deposit account established pursuant to
Sec. 1.25. Payment of a maintenance fee and any necessary surcharge or
the authorization to charge a deposit account must be submitted within
the periods set forth in Sec. 1.362 (d), (e), or (f). Any payment or
authorization of maintenance fees and surcharges filed at any other
time will not be accepted and will not serve as a payment of the
maintenance fee except insofar as a delayed payment of the maintenance
fee is accepted by the Commissioner in an expired patent pursuant to a
petition filed under Sec. 1.378. Any authorization to charge a deposit
account must authorize the immediate charging of the maintenance fee
and any necessary surcharge to the deposit account. Payment of less
than the required amount, payment in a manner other than that set forth
Sec. 1.23, or in the filing of an authorization to charge a deposit
account having insufficient funds will not constitute payment of a
maintenance fee or surcharge on a patent. The procedures set forth in
Sec. 1.8 or Sec. 1.10 may be utilized in paying maintenance fees and
any necessary surcharges.
(c) In submitting maintenance fees and any necessary surcharges,
identification of the patents for which maintenance fees are being paid
must include the following:
(1) The patent number; and
(2) The application number of the United States application for the
patent on which the maintenance fee is being paid.
(d) Payment of maintenance fees and any surcharges should identify
the fee being paid for each patent as to whether it is the 3\1/2\-,
7\1/2\-, or 11\1/2\-year fee, whether small entity status is being
changed or claimed, the amount of the maintenance fee and any surcharge
being paid, and any assigned customer number. If the maintenance fee
and any necessary surcharge is being paid on a reissue patent, the
payment must identify the reissue patent by reissue patent number and
reissue application number as required by paragraph (c) of this section
and should also include the original patent number.
* * * * *
95. Section 1.377 is amended by revising paragraph (c) to read as
follows:
Sec. 1.377 Review of decision refusing to accept and record payment of
a maintenance fee filed prior to expiration of patent.
* * * * *
(c) Any petition filed under this section must comply with the
requirements of Sec. 1.181(b) and must be signed by an attorney or
agent registered to practice before the Patent and Trademark Office, or
by the patentee, the assignee, or other party in interest.
96. Section 1.378 is amended by revising paragraph (d) to read as
follows:
Sec. 1.378 Acceptance of delayed payment of maintenance fee in expired
patent to reinstate patent.
* * * * *
(d) Any petition under this section must be signed by an attorney
or agent registered to practice before the Patent and Trademark Office,
or by the patentee, the assignee, or other party in interest.
* * * * *
97. Section 1.425 is revised to read as follows:
Sec. 1.425 Filing by other than inventor.
Where an international application which designates the United
States of America is filed and where one or more inventors refuse to
sign the Request for the international application or cannot be found
or reached after diligent effort, the Request need not be signed by
such inventor if it is signed by another applicant. Such international
application must be accompanied by a statement explaining to the
satisfaction of the Commissioner the lack of the signature concerned.
98. Section 1.484 is amended by revising paragraphs (d) through (f)
to read as follows:
Sec. 1.484 Conduct of international preliminary examination.
* * * * *
(d) The International Preliminary Examining Authority will
establish a written opinion if any defect exists or if the claimed
invention lacks novelty, inventive step or industrial applicability and
will set a non-extendable time limit in the written opinion for the
applicant to reply.
(e) If no written opinion under paragraph (d) of this section is
necessary, or after any written opinion and the reply thereto or the
expiration of the time limit for reply to such written opinion, an
international preliminary examination report will be established by the
International Preliminary Examining Authority. One copy will be
submitted to the International Bureau and one copy will be submitted to
the applicant.
(f) An applicant will be permitted a personal or telephone
interview with the examiner, which must be conducted during the non-
extendable time limit for reply by the applicant to a written opinion.
Additional interviews may be conducted where the examiner determines
that such additional interviews may be helpful to advancing the
international preliminary examination procedure. A summary of any such
personal or telephone interview must be filed by the applicant as a
part of the reply to the written
[[Page 53200]]
opinion or, if applicant files no reply, be made of record in the file
by the examiner.
99. Section 1.485 is amended by revising paragraph (a) to read as
follows:
Sec. 1.485 Amendments by applicant during international preliminary
examination.
(a) The applicant may make amendments at the time of filing of the
Demand and within the time limit set by the International Preliminary
Examining Authority for reply to any notification under Sec. 1.484(b)
or to any written opinion. Any such amendments must:
(1) Be made by submitting a replacement sheet for every sheet of
the application which differs from the sheet it replaces unless an
entire sheet is cancelled; and
(2) Include a description of how the replacement sheet differs from
the replaced sheet.
* * * * *
100. Section 1.488 is amended by revising paragraph (b)(3) to read
as follows:
Sec. 1.488 Determination of unity of invention before the
International Preliminary Examining Authority.
* * * * *
(b) * * *
(3) If applicant fails to restrict the claims or pay additional
fees within the time limit set for reply, the International Preliminary
Examining Authority will issue a written opinion and/or establish an
international preliminary examination report on the main invention and
shall indicate the relevant facts in the said report. In case of any
doubt as to which invention is the main invention, the invention first
mentioned in the claims and previously searched by an International
Searching Authority shall be considered the main invention.
* * * * *
101. Section 1.492 is amended by adding a new paragraph (g) to read
as follows:
Sec. 1.492 National stage fees.
* * * * *
(g) If the additional fees required by paragraphs (b), (c), and (d)
of this section are not paid on presentation of the claims for which
the additional fees are due, they must be paid or the claims cancelled
by amendment, prior to the expiration of the time period set for reply
by the Office in any notice of fee deficiency.
102. Section 1.494 is amended by revising paragraph (c) to read as
follows:
Sec. 1.494 Entering the national stage in the United States of America
as a Designated Office.
* * * * *
(c) If applicant complies with paragraph (b) of this section before
expiration of 20 months from the priority date but omits:
(1) A translation of the international application, as filed, into
the English language, if it was originally filed in another language
(35 U.S.C. 371(c)(2)); and/or
(2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4);
see Sec. 1.497), applicant will be so notified and given a period of
time within which to file the translation and/or oath or declaration in
order to prevent abandonment of the application. The payment of the
processing fee set forth in Sec. 1.492(f) is required for acceptance of
an English translation later than the expiration of 20 months after the
priority date. The payment of the surcharge set forth in Sec. 1.492(e)
is required for acceptance of the oath or declaration of the inventor
later than the expiration of 20 months after the priority date. A copy
of the notification mailed to applicant should accompany any reply
thereto submitted to the Office.
* * * * *
103. Section 1.495 is amended by revising paragraph (c) to read as
follows:
Sec. 1.495 Entering the national stage in the United States of America
as an Elected Office.
* * * * *
(c) If applicant complies with paragraph (b) of this section before
expiration of 30 months from the priority date but omits:
(1) A translation of the international application, as filed, into
the English language, if it was originally filed in another language
(35 U.S.C. 371(c)(2)); and/or
(2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4);
see Sec. 1.497), applicant will be so notified and given a period of
time within which to file the translation and/or oath or declaration in
order to prevent abandonment of the application. The payment of the
processing fee set forth in Sec. 1.492(f) is required for acceptance of
an English translation later than the expiration of 30 months after the
priority date. The payment of the surcharge set forth in Sec. 1.492(e)
is required for acceptance of the oath or declaration of the inventor
later than the expiration of 30 months after the priority date. A copy
of the notification mailed to applicant should accompany any reply
thereto submitted to the Office.
* * * * *
104. Section 1.510 is amended by revising paragraph (e) to read as
follows:
Sec. 1.510 Request for reexamination.
* * * * *
(e) A request filed by the patent owner may include a proposed
amendment in accordance with Sec. 1.530(d).
* * * * *
105. Section 1.530 is amended by removing paragraph (e) and
revising the section heading and paragraph (d) to read as follows:
Sec. 1.530 Statement; amendment by patent owner.
* * * * *
(d) Amendments in reexamination proceedings. Amendments in
reexamination proceedings are made by filing a paper, in compliance
with paragraph (d)(5) of this section, directing that specified
amendments be made.
(1) Specification other than the claims. Amendments to the
specification, other than to the claims, may only be made as follows:
(i) Amendments must be made by submission of the entire text of a
newly added or rewritten paragraph(s) with markings pursuant to
paragraph (d)(1)(iii) of this section, except that an entire paragraph
may be deleted by a statement deleting the paragraph without
presentation of the text of the paragraph.
(ii) The precise point in the specification must be indicated where
the paragraph to be amended is located.
(iii) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.
(2) Claims. Amendments to the claims may only be made as follows:
(i)(A) The amendment must be made relative to the patent claims in
accordance with paragraph (d)(8) of this section and must include the
entire text of each claim which is being proposed to be amended by the
current amendment and each proposed new claim being added by the
current amendment with markings pursuant to paragraph (d)(2)(i)(C) of
this section, except that a patent claim or previously proposed new
claim should be cancelled by a statement cancelling the patent claim or
proposed new claim without presentation of the text of the patent claim
or proposed new claim.
(B) Patent claims must not be renumbered and the numbering of any
new claims proposed to be added to the patent must follow the number of
the highest numbered patent claim.
(C) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the
[[Page 53201]]
amendments being made. If a claim is amended pursuant to paragraph
(d)(2)(i)(A) of this section, a parenthetical expression ``amended,''
``twice amended,'' etc., should follow the original claim number.
(ii) Each amendment submission must set forth the status (i.e.,
pending or cancelled) as of the date of the amendment, of all patent
claims and of all new claims currently or previously proposed.
(iii) Each amendment, when submitted for the first time, must be
accompanied by an explanation of the support in the disclosure of the
patent for the amendment along with any additional comments on page(s)
separate from the page(s) containing the amendment.
(3) No amendment may enlarge the scope of the claims of the patent
or introduce new matter. No amendment may be proposed for entry in an
expired patent. Moreover, no amendment will be incorporated into the
patent by certificate issued after the expiration of the patent.
(4) Although the Office actions will treat proposed amendments as
though they have been entered, the proposed amendments will not be
effective until the reexamination certificate is issued.
(5) The form of amendments other than to the patent drawings must
be in accordance with the following requirements. All amendments must
be in the English language and must be legibly written either by a
typewriter or mechanical printer in at least 11 point type in permanent
dark ink or its equivalent in portrait orientation on flexible, strong,
smooth, non-shiny, durable, white paper. All amendments 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 or optical character
recognition. If the amendments are not of the required quality,
substitute typewritten or mechanically printed papers of suitable
quality will be required. The papers, including the drawings, must have
each page plainly written on only one side of a sheet of paper. 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 must be double spaced, or one and one-half spaced. The pages must
be numbered consecutively, starting with 1, the numbers being centrally
located, preferably below the text, or above the text.
(6) Drawings. (i) The original patent drawing sheets may not be
altered. Any proposed change to the patent drawings must be by way of a
new sheet of drawings with the amended figures identified as
``amended'' and with added figures identified as ``new'' for each sheet
change submitted in compliance with Sec. 1.84.
(ii) Where a change to the drawings is desired, a sketch in
permanent ink showing proposed changes in red, to become part of the
record, must be filed for approval by the examiner and should be in a
separate paper.
(7) The disclosure must be amended, when required by the Office, to
correct inaccuracies of description and definition and to secure
substantial correspondence between the claims, the remainder of the
specification, and the drawings.
(8) All amendments to the patent must be made relative to the
patent specification, including the claims, and drawings, which is in
effect as of the date of filing of the request for reexamination.
106. Section 1.550 is amended by revising paragraphs (a), (b) and
(e) to read as follows:
Sec. 1.550 Conduct of reexamination proceedings.
(a) All reexamination proceedings, including any appeals to the
Board of Patent Appeals and Interferences, will be conducted with
special dispatch within the Office. After issuance of the reexamination
order and expiration of the time for submitting any responses thereto,
the examination will be conducted in accordance with Secs. 1.104, 1.110
through 1.113 and 1.116, and will result in the issuance of a
reexamination certificate under Sec. 1.570.
(b) The patent owner will be given at least thirty days to respond
to any Office action. Such response may include further statements in
response to any rejections or proposed amendments or new claims to
place the patent in a condition where all claims, if amended as
proposed, would be patentable.
* * * * *
(e) The reexamination requester will be sent copies of Office
actions issued during the reexamination proceeding. After filing of a
request for reexamination by a third party requester, any document
filed by either the patent owner or the third party requester must be
served on the other party in the reexamination proceeding in the manner
provided by Sec. 1.248. The document must reflect service or the
document may be refused consideration by the Office.
(1) The active participation of the reexamination requester ends
with the reply pursuant to Sec. 1.535, and no further submissions on
behalf of the reexamination requester will be acknowledged or
considered. Further, no submissions on behalf of any third parties will
be acknowledged or considered unless such submissions are:
(i) In accordance with Sec. 1.510; or
(ii) Entered in the patent file prior to the date of the order to
reexamine pursuant to Sec. 1.525.
(2) Submissions by third parties, filed after the date of the order
to reexamine pursuant to Sec. 1.525, must meet the requirements of and
will be treated in accordance with Sec. 1.501(a).
107. Section 1.770 is revised to read as follows:
Sec. 1.770 Express withdrawal of application for extension of patent
term.
An application for extension of patent term may be expressly
withdrawn before a determination is made pursuant to Sec. 1.750 by
filing in the Office, in duplicate, a written declaration of withdrawal
signed by the owner of record of the patent or its agent. An
application may not be expressly withdrawn after the date permitted for
reply to the final determination on the application. An express
withdrawal pursuant to this section is effective when acknowledged in
writing by the Office. The filing of an express withdrawal pursuant to
this section and its acceptance by the Office does not entitle
applicant to a refund of the filing fee (Sec. 1.20(j)) or any portion
thereof.
108. Section 1.785 is amended by revising paragraph (d) to read as
follows:
Sec. 1.785 Multiple applications for extension of term of the same
patent or of different patents for the same regulatory review period
for a product.
* * * * *
(d) An application for extension shall be considered complete and
formal regardless of whether it contains the identification of the
holder of the regulatory approval granted with respect to the
regulatory review period. When an application contains such
information, or is amended to contain such information, it will be
considered in determining whether an application is eligible for an
extension under this section. A request may be made of any applicant to
supply such information
[[Page 53202]]
within a non-extendable period of not less than one month whenever
multiple applications for extension of more than one patent are
received and rely upon the same regulatory review period. Failure to
provide such information within the period for reply set shall be
regarded as conclusively establishing that the applicant is not the
holder of the regulatory approval.
* * * * *
109. Section 1.804 is amended by revising paragraph (b) to read as
follows:
Sec. 1.804 Time of making an original deposit.
* * * * *
(b) When the original deposit is made after the effective filing
date of an application for patent, the applicant must promptly submit a
statement from a person in a position to corroborate the fact, stating
that the biological material which is deposited is a biological
material specifically identified in the application as filed.
110. Section 1.805 is amended by revising paragraph (c) to read as
follows:
Sec. 1.805 Replacement or supplement of deposit.
* * * * *
(c) A request for a certificate of correction under this section
shall not be granted unless the request is made promptly after the
replacement or supplemental deposit has been made and the request:
(1) Includes a statement of the reason for making the replacement
or supplemental deposit;
(2) Includes a statement from a person in a position to corroborate
the fact, and stating that the replacement or supplemental deposit is
of a biological material which is identical to that originally
deposited;
(3) Includes a showing that the patent owner acted diligently--
(i) In the case of a replacement deposit, in making the deposit
after receiving notice that samples could no longer be furnished from
an earlier deposit; or
(ii) In the case of a supplemental deposit, in making the deposit
after receiving notice that the earlier deposit had become contaminated
or had lost its capability to function as described in the
specification;
(4) Includes a statement that the term of the replacement or
supplemental deposit expires no earlier than the term of the deposit
being replaced or supplemented; and
(5) Otherwise establishes compliance with these regulations.
* * * * *
PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
111. The authority citation for 37 CFR part 3 continues to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
112. Section 3.11 is revised to read as follows:
Sec. 3.11 Documents which will be recorded.
(a) Assignments of applications, patents, and registrations,
accompanied by completed cover sheets as specified in Secs. 3.28 and
3.31, will be recorded in the Office. Other documents, accompanied by
completed cover sheets as specified in Secs. 3.28 and 3.31, affecting
title to applications, patents, or registrations, will be recorded as
provided in this part or at the discretion of the Commissioner.
(b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR
1943-1948 Comp., p. 303) requires the several departments and other
executive agencies of the Government, including Government-owned or
Government-controlled corporations, to forward promptly to the
Commissioner of Patents and Trademarks for recording all licenses,
assignments, or other interests of the Government in or under patents
or patent applications. Assignments and other documents affecting title
to patents or patent applications and documents not affecting title to
patents or patent applications required by Executive Order 9424 to be
filed will be recorded as provided in this part.
113. Section 3.21 is revised to read as follows:
Sec. 3.21 Identification of patents and patent applications.
An assignment relating to a patent must identify the patent by the
patent number. An assignment relating to a national patent application
must identify the national patent application by the application number
(consisting of the series code and the serial number, e.g., 07/
123,456). An assignment relating to an international patent application
which designates the United States of America must identify the
international application by the international application number
(e.g., PCT/US90/01234). If an assignment of a patent application filed
under Sec. 1.53(b) is executed concurrently with, or subsequent to, the
execution of the patent application, but before the patent application
is filed, it must identify the patent application by its date of
execution, name of each inventor, and title of the invention so that
there can be no mistake as to the patent application intended. If an
assignment of a provisional application under Sec. 1.53(c) is executed
before the provisional application is filed, it must identify the
provisional application by name of each inventor and title of the
invention so that there can be no mistake as to the provisional
application intended.
114. Section 3.26 is revised to read as follows:
Sec. 3.26 English language requirement.
The Office will accept and record non-English language documents
only if accompanied by an English translation signed by the individual
making the translation.
115. Section 3.27 is revised to read as follows:
Sec. 3.27 Mailing address for submitting documents to be recorded.
(a) Except as provided in paragraph (b) of this section, documents
and cover sheets to be recorded should be addressed to the Commissioner
of Patents and Trademarks, Box Assignment, Washington, D.C. 20231,
unless they are filed together with new applications or with a petition
under Sec. 3.81(b).
(b) A document required by Executive Order 9424 to be filed which
does not affect title and is so identified in the cover sheet (see
Sec. 3.31(c)(2)) must be addressed and mailed to the Commissioner of
Patents and Trademarks, Box Government Interest, Washington, D.C.
20231.
116. Section 3.31 is amended by adding paragraph (c) to read as
follows:
Sec. 3.31 Cover sheet content.
* * * * *
(c) Each patent cover sheet required by Sec. 3.28 seeking to record
a governmental interest as provided by Sec. 3.11(b) must:
(1) Indicate that the document is to be recorded on the
Governmental Register, and, if applicable, that the document is to be
recorded on the Secret Register (see Sec. 3.58); and
(2) Indicate, if applicable, that the document to be recorded is
not a document affecting title (see Sec. 3.41(b)).
117. Section 3.41 is revised to read as follows:
Sec. 3.41 Recording fees.
(a) All requests to record documents must be accompanied by the
appropriate fee. Except as provided in paragraph (b) of this section, a
fee is required for each application, patent and registration against
which the document is recorded as identified in the cover sheet. The
recording fee is set in Sec. 1.21(h) of this chapter for patents
[[Page 53203]]
and in Sec. 2.6(q) of this chapter for trademarks.
(b) No fee is required for each patent application and patent
against which a document required by Executive Order 9424 is to be
filed if:
(1) The document does not affect title and is so identified in the
cover sheet (see Sec. 3.31(c)(2)); and
(2) The document and cover sheet are mailed to the Office in
compliance with Sec. 3.27(b).
118. Section 3.51 is revised to read as follows:
Sec. 3.51 Recording date.
The date of recording of a document is the date the document
meeting the requirements for recording set forth in this part is filed
in the Office. A document which does not comply with the identification
requirements of Sec. 3.21 will not be recorded. Documents not meeting
the other requirements for recording, for example, a document submitted
without a completed cover sheet or without the required fee, will be
returned for correction to the sender where a correspondence address is
available. The returned papers, stamped with the original date of
receipt by the Office, will be accompanied by a letter which will
indicate that if the returned papers are corrected and resubmitted to
the Office within the time specified in the letter, the Office will
consider the original date of filing of the papers as the date of
recording of the document. The procedure set forth in Sec. 1.8 or
Sec. 1.10 of this chapter may be used for resubmissions of returned
papers to have the benefit of the date of deposit in the United States
Postal Service. If the returned papers are not corrected and
resubmitted within the specified period, the date of filing of the
corrected papers will be considered to be the date of recording of the
document. The specified period to resubmit the returned papers will not
be extended.
119. Section 3.58 is added to read as follows:
Sec. 3.58 Governmental registers.
(a) The Office will maintain a Departmental Register to record
governmental interests required to be recorded by Executive Order 9424.
This Departmental Register will not be open to public inspection but
will be available for examination and inspection by duly authorized
representatives of the Government. Governmental interests recorded on
the Departmental Register will be available for public inspection as
provided in Sec. 1.12.
(b) The Office will maintain a Secret Register to record
governmental interests required to be recorded by Executive Order 9424.
Any instrument to be recorded will be placed on this Secret Register at
the request of the department or agency submitting the same. No
information will be given concerning any instrument in such record or
register, and no examination or inspection thereof or of the index
thereto will be permitted, except on the written authority of the head
of the department or agency which submitted the instrument and
requested secrecy, and the approval of such authority by the
Commissioner of Patents and Trademarks. No instrument or record other
than the one specified may be examined, and the examination must take
place in the presence of a designated official of the Patent and
Trademark Office. When the department or agency which submitted an
instrument no longer requires secrecy with respect to that instrument,
it must be recorded anew in the Departmental Register.
Sec. 3.61 [Amended]
120. The undesignated center heading in Part 3--Assignment,
Recording and Rights of Assignee, following Sec. 3.61 is revised to
read as follows:
Action Taken by Assignee
121. Section 3.73 is amended by revising its heading and paragraph
(b) to read as follows:
Sec. 3.73 Establishing right of assignee to take action.
* * * * *
(b) When an assignee seeks to take action in a matter before the
Office with respect to a patent application, trademark application,
patent, registration, or reexamination proceeding, the assignee must
establish its ownership of the property to the satisfaction of the
Commissioner. Ownership is established by submitting to the Office, in
the Office file related to the matter in which action is sought to be
taken, documentary evidence of a chain of title from the original owner
to the assignee (e.g., copy of an executed assignment submitted for
recording) or by specifying (e.g., reel and frame number) where such
evidence is recorded in the Office. The submission establishing
ownership must be signed by a party authorized to act on behalf of the
assignee. Documents submitted to establish ownership may be required to
be recorded as a condition to permitting the assignee to take action in
a matter pending before the Office.
PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND
FILE APPLICATIONS IN FOREIGN COUNTRIES
122. The authority citation for 37 CFR Part 5 continues to read as
follows:
Authority: 35 U.S.C. 6, 41, 181-188, as amended by the Patent
Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102
Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C. 2751
et seq.; the Atomic Energy Act of 1954, as amended, 42 U.S.C. 2011
et seq.; and the Nuclear Non-Proliferation Act of 1978, 22 U.S.C.
3201 et seq.; and the delegations in the regulations under these
Acts to the Commissioner (15 CFR 370.10(j), 22 CFR 125.04, and 10
CFR 810.7).
123. Section 5.1 is revised to read as follows:
Sec. 5.1 Correspondence.
All correspondence in connection with this part, including
petitions, must be addressed to ``Assistant Commissioner for Patents
(Attention Licensing and Review), Washington, DC 20231.''
124. Section 5.2 is amended by removing paragraphs (c) and (d) and
revising paragraph (b) to read as follows:
Sec. 5.2 Secrecy order.
* * * * *
(b) Any request for compensation as provided in 35 U.S.C. 183 must
not be made to the Patent and Trademark Office, but directly to the
department or agency which caused the secrecy order to be issued.
125. Section 5.3 is amended by revising paragraph (c) to read as
follows:
Sec. 5.3 Prosecution of application under secrecy orders; withholding
patent.
* * * * *
(c) When the national application is found to be in condition for
allowance except for the secrecy order the applicant and the agency
which caused the secrecy order to be issued will be notified. This
notice (which is not a notice of allowance under Sec. 1.311 of this
chapter) does not require reply by the applicant and places the
national application in a condition of suspension until the secrecy
order is removed. When the secrecy order is removed the Patent and
Trademark Office will issue a notice of allowance under Sec. 1.311 of
this chapter, or take such other action as may then be warranted.
* * * * *
126. Section 5.4 is amended by revising paragraphs (a) and (d) to
read as follows:
[[Page 53204]]
Sec. 5.4 Petition for rescission of secrecy order.
(a) A petition for rescission or removal of a secrecy order may be
filed by, or on behalf of, any principal affected thereby. Such
petition may be in letter form, and it must be in duplicate.
* * * * *
(d) Appeal to the Secretary of Commerce, as provided by 35 U.S.C.
181, from a secrecy order cannot be taken until after a petition for
rescission of the secrecy order has been made and denied. Appeal must
be taken within sixty days from the date of the denial, and the party
appealing, as well as the department or agency which caused the order
to be issued, will be notified of the time and place of hearing.
127. Section 5.5 is amended by revising paragraphs (b) and (e) to
read as follows:
Sec. 5.5 Permit to disclose or modification of secrecy order.
* * * * *
(b) Petitions for a permit or modification must fully recite the
reason or purpose for the proposed disclosure. Where any proposed
disclosee is known to be cleared by a defense agency to receive
classified information, adequate explanation of such clearance should
be made in the petition including the name of the agency or department
granting the clearance and the date and degree thereof. The petition
must be filed in duplicate.
* * * * *
(e) Organizations requiring consent for disclosure of applications
under secrecy order to persons or organizations in connection with
repeated routine operation may petition for such consent in the form of
a general permit. To be successful such petitions must ordinarily
recite the security clearance status of the disclosees as sufficient
for the highest classification of material that may be involved.
Sec. 5.6 [Removed and reserved]
128. Section 5.6 is removed and reserved.
Sec. 5.7 [Removed and reserved]
129. Section 5.7 is removed and reserved.
Sec. 5.8 [Removed and reserved]
130. Section 5.8 is removed and reserved.
131. Section 5.11 is amended by revising paragraphs (b), (c) and
(e)(3) to read as follows:
Sec. 5.11 License for filing in a foreign country an application on an
invention made in the United States or for transmitting international
application.
* * * * *
(b) The license from the Commissioner of Patents and Trademarks
referred to in paragraph (a) would also authorize the export of
technical data abroad for purposes relating to the preparation, filing
or possible filing and prosecution of a foreign patent application
without separately complying with the regulations contained in 22 CFR
parts 121 through 130 (International Traffic in Arms Regulations of the
Department of State), 15 CFR part 779 (Regulations of the Office of
Export Administration, International Trade Administration, Department
of Commerce) and 10 CFR part 810 (Foreign Atomic Energy Programs of the
Department of Energy).
(c) Where technical data in the form of a patent application, or in
any form, is being exported for purposes related to the preparation,
filing or possible filing and prosecution of a foreign patent
application, without the license from the Commissioner of Patents and
Trademarks referred to in paragraphs (a) or (b) of this section, or on
an invention not made in the United States, the export regulations
contained in 22 CFR parts 120 through 130 (International Traffic in
Arms Regulations of the Department of State), 15 CFR parts 768-799
(Export Administration Regulations of the Department of Commerce) and
10 CFR part 810 (Assistance to Foreign Atomic Energy Activities
Regulations of the Department of Energy) must be complied with unless a
license is not required because a United States application was on file
at the time of export for at least six months without a secrecy order
under Sec. 5.2 being placed thereon. The term ``exported'' means export
as it is defined in 22 CFR part 120, 15 CFR part 779 and activities
covered by 10 CFR part 810.
* * * * *
(e) * * *
(3) For subsequent modifications, amendments and supplements
containing additional subject matter to, or divisions of, a foreign
patent application if:
(i) A license is not, or was not, required under paragraph (e)(2)
of this section for the foreign patent application;
(ii) The corresponding United States application was not required
to be made available for inspection under 35 U.S.C. 181; and
(iii) Such modifications, amendments, and supplements do not, or
did not, change the general nature of the invention in a manner which
would require any corresponding United States application to be or have
been available for inspection under 35 U.S.C. 181.
* * * * *
132. Section 5.12 is amended by revising paragraph (b) to read as
follows:
Sec. 5.12 Petition for license.
* * * * *
(b) Petitions for license should be presented in letter form, and
must include the petitioner's address and full instructions for
delivery of the requested license when it is to be delivered to other
than the petitioner. If expedited handling of the petition under this
paragraph is sought, the petition must also include the fee set forth
in Sec. 1.17(h).
133. Section 5.13 is revised to read as follows:
Sec. 5.13 Petition for license; no corresponding application.
If no corresponding national or international application has been
filed in the United States, the petition for license under Sec. 5.12(b)
must also be accompanied by a legible copy of the material upon which a
license is desired. This copy will be retained as a measure of the
license granted.
134. Section 5.14 is amended by revising paragraph (a) to read as
follows:
Sec. 5.14 Petition for license; corresponding U.S. application.
(a) When there is a corresponding United States application on
file, a petition for license under Sec. 5.12(b) must also identify this
application by application number, filing date, inventor, and title,
but a copy of the material upon which the license is desired is not
required. The subject matter licensed will be measured by the
disclosure of the United States application.
* * * * *
135. Section 5.15 is amended by revising paragraphs (a), (b), (c)
and (e) to read as follows:
Sec. 5.15 Scope of license.
(a) Applications or other materials reviewed pursuant to Secs. 5.12
through 5.14, which were not required to be made available for
inspection by defense agencies under 35 U.S.C. 181, will be eligible
for a license of the scope provided in this paragraph. This license
permits subsequent modifications, amendments, and supplements
containing additional subject matter to, or divisions of, a foreign
patent application, if such changes to the application do not alter the
general nature of the invention in a manner
[[Page 53205]]
which would require the United States application to have been made
available for inspection under 35 U.S.C. 181. Grant of this license
authorizing the export and filing of an application in a foreign
country or the transmitting of an international application to any
foreign patent agency or international patent agency when the subject
matter of the foreign or international application corresponds to that
of the domestic application. This license includes authority:
(1) To export and file all duplicate and formal application papers
in foreign countries or with international agencies;
(2) To make amendments, modifications, and supplements, including
divisions, changes or supporting matter consisting of the illustration,
exemplification, comparison, or explanation of subject matter disclosed
in the application; and
(3) To take any action in the prosecution of the foreign or
international application provided that the adding of subject matter or
taking of any action under paragraphs (a)(1) or (2) of this section
does not change the general nature of the invention disclosed in the
application in a manner which would require such application to have
been made available for inspection under 35 U.S.C. 181 by including
technical data pertaining to:
(i) Defense services or articles designated in the United States
Munitions List applicable at the time of foreign filing, the unlicensed
exportation of which is prohibited pursuant to the Arms Export Control
Act, as amended, and 22 CFR parts 121 through 130; or
(ii) Restricted Data, sensitive nuclear technology or technology
useful in the production or utilization of special nuclear material or
atomic energy, dissemination of which is subject to restrictions of the
Atomic Energy Act of 1954, as amended, and the Nuclear Non-
Proliferation Act of 1978, as implemented by the regulations for
Unclassified Activities in Foreign Atomic Energy Programs, 10 CFR part
810, in effect at the time of foreign filing.
* * * * *
(b) Applications or other materials which were required to be made
available for inspection under 35 U.S.C. 181 will be eligible for a
license of the scope provided in this paragraph. Grant of this license
authorizes the export and filing of an application in a foreign country
or the transmitting of an international application to any foreign
patent agency or international patent agency. Further, this license
includes authority to export and file all duplicate and formal papers
in foreign countries or with foreign and international patent agencies
and to make amendments, modifications, and supplements to, file
divisions of, and take any action in the prosecution of the foreign or
international application, provided subject matter additional to that
covered by the license is not involved.
(c) A license granted under Sec. 5.12(b) pursuant to Sec. 5.13 or
Sec. 5.14 shall have the scope indicated in paragraph (a) of this
section, if it is so specified in the license. A petition, accompanied
by the required fee (Sec. 1.17(h)), may also be filed to change a
license having the scope indicated in paragraph (b) of this section to
a license having the scope indicated in paragraph (a) of this section.
No such petition will be granted if the copy of the material filed
pursuant to Sec. 5.13 or any corresponding United States application
was required to be made available for inspection under 35 U.S.C. 181.
The change in the scope of a license will be effective as of the date
of the grant of the petition.
* * * * *
(e) Any paper filed abroad or transmitted to an international
patent agency following the filing of a foreign or international
application which changes the general nature of the subject matter
disclosed at the time of filing in a manner which would require such
application to have been made available for inspection under 35 U.S.C.
181 or which involves the disclosure of subject matter listed in
paragraphs (a)(3)(i) or (ii) of this section must be separately
licensed in the same manner as a foreign or international application.
Further, if no license has been granted under Sec. 5.12(a) on filing
the corresponding United States application, any paper filed abroad or
with an international patent agency which involves the disclosure of
additional subject matter must be licensed in the same manner as a
foreign or international application.
* * * * *
Sec. 5.16 [Removed and reserved]
136. Section 5.16 is removed and reserved.
Sec. 5.17 [Removed and reserved]
137. Section 5.17 is removed and reserved.
138. Section 5.18 is revised to read as follows:
Sec. 5.18 Arms, ammunition, and implements of war.
(a) The exportation of technical data relating to arms, ammunition,
and implements of war generally is subject to the International Traffic
in Arms Regulations of the Department of State (22 CFR parts 120
through 130); the articles designated as arms, ammunitions, and
implements of war are enumerated in the U.S. Munitions List (22 CFR
part 121). However, if a patent applicant complies with regulations
issued by the Commissioner of Patents and Trademarks under 35 U.S.C.
184, no separate approval from the Department of State is required
unless the applicant seeks to export technical data exceeding that used
to support a patent application in a foreign country. This exemption
from Department of State regulations is applicable regardless of
whether a license from the Commissioner is required by the provisions
of Secs. 5.11 and 5.12 (22 CFR part 125).
(b) When a patent application containing subject matter on the
Munitions List (22 CFR part 121) is subject to a secrecy order under
Sec. 5.2 and a petition is made under Sec. 5.5 for a modification of
the secrecy order to permit filing abroad, a separate request to the
Department of State for authority to export classified information is
not required (22 CFR part 125).
139. Section 5.19 is revised to read as follows:
Sec. 5.19 Export of technical data.
(a) Under regulations (15 CFR 770.10(j)) established by the
Department of Commerce, a license is not required in any case to file a
patent application or part thereof in a foreign country if the foreign
filing is in accordance with the regulations (Secs. 5.11 through 5.25)
of the Patent and Trademark Office.
(b) An export license is not required for data contained in a
patent application prepared wholly from foreign-origin technical data
where such application is being sent to the foreign inventor to be
executed and returned to the United States for subsequent filing in the
U.S. Patent and Trademark Office (15 CFR 779A.3(e)).
140. Section 5.20 is revised to read as follows:
Sec. 5.20 Export of technical data relating to sensitive nuclear
technology.
Under regulations (10 CFR 810.7) established by the United States
Department of Energy, an application filed in accordance with the
regulations (Secs. 5.11 through 5.25) of the Patent and Trademark
Office and eligible for foreign filing under 35 U.S.C. 184, is
considered to be information available to the public in published form
and a generally authorized activity for the purposes of the Department
of Energy regulations.
[[Page 53206]]
Sec. 5.25 [Amended]
141. Section 5.25 is amended by removing paragraph (c).
Sec. 5.31 [Removed and reserved]
142. Section 5.31 is removed and reserved.
Sec. 5.32 [Removed and reserved]
143. Section 5.32 is removed and reserved.
Sec. 5.33 [Removed and reserved]
144. Section 5.33 is removed and reserved.
PART 7--REGISTER OF GOVERNMENT INTERESTS IN PATENTS [REMOVED AND
RESERVED]
145. Part 7 is removed and reserved.
PART 10--REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK
OFFICE
146. The authority citation for 37 CFR part 10 continues to read as
follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32,
41.
147. Section 10.18 is revised to read as follows:
Sec. 10.18 Signature and certificate for correspondence filed in the
Patent and Trademark Office.
(a) For all documents filed in the Office in patent, trademark, and
other non-patent matters, except for correspondence that is required to
be signed by the applicant or party, each piece of correspondence filed
by a practitioner in the Patent and Trademark Office must bear a
signature, personally signed by such practitioner, in compliance with
Sec. 1.4(d)(1) of this chapter.
(b) By presenting to the Office (whether by signing, filing,
submitting, or later advocating) any paper, the party presenting such
paper, whether a practitioner or non-practitioner, is certifying that--
(1) All statements made therein of the party's own knowledge are
true, all statements made therein on information and belief are
believed to be true, and all statements made therein are made with the
knowledge that whoever, in any matter within the jurisdiction of the
Patent and Trademark Office, knowingly and willfully falsifies,
conceals, or covers up by any trick, scheme, or device a material fact,
or makes any false, fictitious or fraudulent statements or
representations, or makes or uses any false writing or document knowing
the same to contain any false, fictitious or fraudulent statement or
entry, shall be subject to the penalties set forth under 18 U.S.C.
1001, and that violations of this paragraph may jeopardize the validity
of the application or document, or the validity or enforceability of
any patent, trademark registration, or certificate resulting therefrom;
and
(2) To the best of the party's knowledge, information and belief,
formed after an inquiry reasonable under the circumstances, that--
(i) The paper is not being presented for any improper purpose, such
as to harass someone or to cause unnecessary delay or needless increase
in the cost of prosecution before the Office;
(ii) The claims and other legal contentions therein are warranted
by existing law or by a nonfrivolous argument for the extension,
modification, or reversal of existing law or the establishment of new
law;
(iii) The allegations and other factual contentions have
evidentiary support or, if specifically so identified, are likely to
have evidentiary support after a reasonable opportunity for further
investigation or discovery; and
(iv) The denials of factual contentions are warranted on the
evidence, or if specifically so identified, are reasonably based on a
lack of information or belief.
(c) Violations of paragraph (b)(1) of this section by a
practitioner or non-practitioner may jeopardize the validity of the
application or document, or the validity or enforceability of any
patent, trademark registration, or certificate resulting therefrom.
Violations of any of paragraphs (b)(2) (i) through (iv) of this section
are, after notice and reasonable opportunity to respond, subject to
such sanctions as deemed appropriate by the Commissioner, or the
Commissioner's designee, which may include, but are not limited to, any
combination of--
(1) Holding certain facts to have been established;
(2) Returning papers;
(3) Precluding a party from filing a paper, or presenting or
contesting an issue;
(4) Imposing a monetary sanction;
(5) Requiring a terminal disclaimer for the period of the delay; or
(6) Terminating the proceedings in the Patent and Trademark Office.
(d) Any practitioner violating the provisions of this section may
also be subject to disciplinary action. See Sec. 10.23(c)(15).
148. Section 10.23 is amended by revising paragraph (c)(15) to read
as follows:
Sec. 10.23 Misconduct.
* * * * *
(c) * * *
(15) Signing a paper filed in the Office in violation of the
provisions of Sec. 10.18 or making a scandalous or indecent statement
in a paper filed in the Office.
* * * * *
Dated: September 26, 1997.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 97-26339 Filed 10-9-97; 8:45 am]
BILLING CODE 3510-16-P
