[Federal Register Volume 61, Number 185 (Monday, September 23, 1996)]
[Proposed Rules]
[Pages 49820-49868]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 96-23665]
[[Page 49819]]
_______________________________________________________________________
Part II
Department of Commerce
_______________________________________________________________________
Patent and Trademark Office
_______________________________________________________________________
37 CFR Part 1, et al.
1996 Changes to Patent Practice and Procedure; Proposed Rule
Federal Register / Vol. 61, No. 185 / Monday, September 23, 1996 /
Proposed Rules
[[Page 49820]]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 3, 5, and 7
[Docket No. 960606163-6163-01]
RIN 0651-AA80
1996 Changes to Patent Practice and Procedure
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The Patent and Trademark Office (Office) is proposing to amend
the rules of practice in patent cases 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. The procedure for filing of continuation and divisional
applications would be simplified. Another type of simplification being
proposed that would affect several rules is the acceptance of a
statement that errors were made without deceptive intent, unaccompanied
by any further showing of facts and circumstances. The naming of
inventors would no longer be required on filing of the application in
order to obtain a filing date, which would eliminate the need for
certain petitions to correct inventorship.
DATES: Written comments must be received on or before November 22,
1996, to ensure consideration.
Comments will be available for public inspection after receipt and
will be available on the Internet (address: [email protected]).
Commentators should note that since their comments will be made
publicly available, information that is not desired to be made public,
such as the address and phone number of the commentator, should not be
included in the comments. A public hearing will not be conducted.
ADDRESSES: Comments should be sent by mail message over the Internet
addressed to [email protected]
Comments may also be submitted by mail addressed to: Box Comments--
Patents, Assistant Commissioner for Patents, Washington, DC 20231,
Attention: Jeffrey V. Nase or by FAX to (703) 308-6916. Although
comments may be submitted by mail or FAX, the Office prefers to receive
comments via the Internet. Where comments are submitted by mail, the
Office would appreciate the comments to be electronically filed on a
DOS formatted 3\1/4\ inch disk along with a paper copy of the comments.
The comments will be available for public inspection in Suite 520,
of One Crystal Park, 2011 Crystal Drive, Arlington, Virginia.
FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein, 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 FAX to (703) 308-6916.
SUPPLEMENTARY INFORMATION: This proposed rule change seeks to implement
President Clinton's program of reducing the regulatory burden on the
American public, which program is supported by the Office as published
in the Official Gazette on June 6, 1995. 1175 Off. Gaz. Pat. Office 19,
20 and 22. The proposed changes are directed towards: (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 affairs 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.
The Office is particularly interested in comments as to whether the
proposed rules if adopted should be applied to already pending reissue
oaths or declarations under the new proposed standards of Sec. 1.175 as
it is to be amended under the final rule and already pending petitions
and papers under Secs. 1.28(c)(2), 1.48 and 1.324 as they are to be
amended under the final rule for such papers submitted prior to the
effective date of any final rule change, i.e., should the advantages
proposed by these suggested rule changes that are incorporated into the
final rule be applied retroactively to papers submitted prior to the
effective date of the final rule.
Discussion of Specific Rules
If Title 37 of the Code of Federal Regulations, Parts 1, 3, 5 and 7
are amended as proposed:
Section 1.4(d) paragraphs (1) and (2) would be amended to place the
current subject matter of both paragraphs into paragraphs (d)(1) (i)
and (ii) with a clarifying reference in paragraph (d)(1)(ii) to the
submission of a copy of a copy.
Paragraph (d)(2) of Sec. 1.4 would be amended so that the
certifications set forth in the rule would be automatically made upon
presenting any paper to the Office by the party presenting the paper
and in an added paragraph (d)(3)(ii) identifying by the statute, 18
U.S.C. 1001 that sets forth the required standards of conduct.
Sanctions would be set forth in a Sec. 1.4(d)(3)(i) for violation of
the certifications in Sec. 1.4(d)(2) and for violations of the
standards of conduct in Sec. 1.4(d)(3)(ii).
The proposed amendments to Sec. 1.4(d) would support proposed
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, (1.821 and 1.825 will
be reviewed at a later date in connection with other matters), 3.26,
and 5.4 that would 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 proposed change to Sec. 1.4(d) would automatically incorporate
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 proposed amendments to Sec. 1.4(d) would
support a proposed amendment to Secs. 1.97 (Secs. 1.637 and 1.673 will
be reviewed at a later date in connection with other matters) that
would change the requirements for certifications to requirements for
statements. The oath or declaration under Secs. 1.63 and affidavits
under Secs. 1.131 and 1.132 would not be affected. The requirement in
Sec. 5.25(a)(3) for a verified statement would be maintained, as the
required explanation must include a showing of facts (evidence), not
mere allegations, which will be weighed by the official deciding the
petition for 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 would be maintained, as
such requirements are made rarely and only when deemed necessary (when
persons persist in translations which appear on their face to be
inaccurate, for example). The requirements for certification of service
on parties in Secs. 1.248, 1.510, 1.637 and 10.142 would be maintained.
[[Page 49821]]
Section 1.4 would also have 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 proposed to
be transferred from Sec. 1.33(b) for consistent contextual purposes.
Section 1.6 paragraph (e)(2) would be amended to remove the
requirement that the statement be verified in accordance with the
proposed change to Sec. 1.4(d)(2).
Section 1.8 paragraph (b)(3) would be amended to remove the
requirement that the statement be verified in accordance with the
proposed change to Sec. 1.4(d)(2).
Section 1.10 would be amended to remove the requirement for a
statement that is verified. See comments to Sec. 1.4(d). It is also
proposed to clarify the section by substitution of ``averring to the
fact'' with ``stating.''
Section 1.14 would have the title and paragraphs (a) and (e)
amended to replace the term ``secrecy'' by ``confidence'' to conform to
the usage in 35 U.S.C. 122. Paragraph (a) of Sec. 1.14 would have a
reference to serial number changed to application number. Section 1.14
would also be amended to have paragraph (f) added to recognize the
proposed change to Sec. 1.47 (a) and (b) that are also exceptions to
maintaining pending applications in confidence by providing public
notice of the prospective issuance of a pending application to
nonsigning inventors.
Section 1.17 (and Sec. 1.136(a)) would add 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 specifically proposed to be 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 proposed in Revision of Patent Fees for Fiscal Year 1997, 1186
Off. Gaz. Pat. Office 14 (May 7, 1996); 61 FR 19224 (May 1, 1996).
Paragraph (a)(5) would provide the small and other than small entity
amounts for the newly proposed fifth-month extension fee. Sections 1.17
(b), (c) and (d) are proposed to be removed as unnecessary in view of
proposed Sec. 1.17 (a)(1) through (a)(5).
Fee levels, as proposed by the Revision of Patent Fees for Fiscal
Year 1997, were used in establishing the fifth-month extension of time
fees for large and small entities for paragraph (a)(5) of Sec. 1.17. A
shortened statutory period for reply of one month may be set, thereby
allowing a fifth month for reply within the six-month statutory period
for response. Section 1.17(a) is being amended to recognize the
availability of a fifth-month extension of time when a one-month or a
thirty-day shortened statutory period is set (e.g., in a written
requirement for restriction). The addition of a fifth-month would then
also become available for replies with nonstatutory periods of time
set, such as for replies to Notices to File Missing Parts of
Applications.
Section 1.17(i), as proposed, would: add a petition fee under
Sec. 1.59 for expungement and return of papers, delete the references
to petitions under Secs. 1.60 and 1.62 to accord a filing date in view
of the proposed deletion of Secs. 1.60 and 1.62, and to change
``divisional reissues'' to ``multiple reissue applications.'' Moreover,
Sec. 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, 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, (1.821 will be reviewed at a later date in
connection with other matters), and 5.3, would replace the phrases
``response'' and ``respond'' with ``reply'' for consistency with
Sec. 1.111.
Section 1.21(n), as proposed, would delete the reference to an
improper application under Secs. 1.60 or 1.62 in view of the proposed
deletion of Secs. 1.60 and 1.62.
Section 1.26(a) is proposed to be amended to better track the
statutory language of 35 U.S.C. 42(d) by deleting ``[m]oney'' and
``actual,'' adding ``fee'' and adding 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.
Section 1.27 (a) through (d) would be amended to remove the
requirement that a statement filed thereunder be ``verified.'' See
comments relating to Sec. 1.4(d). Section 1.27(b) is proposed to be
amended for clarification with the movement of a clause relating to
``any verified statement'' within a sentence.
Section 1.28(a) would be amended to remove the requirement for a
statement that is ``verified.'' See comments relating to Sec. 1.4(d).
Section 1.28(a) would also be amended to provide that a new small
entity statement would not be required for reissue or continued
prosecution (Sec. 1.53(b)(3)) applications where small entity status is
still proper and reliance is had 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) would be further amended to state that the payment
of a small entity basic statutory filing fee in a nonprovisional
continuing application, which claims benefit under 35 U.S.C. 119(e),
120, 121, or 365(c) of a prior application or in a continuing
prosecution application, or in a reissue application, wherein the prior
application or the patent has small entity status, will substitute for
the 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 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(b)(3) 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.
Section 1.28(c) would have the requirement removed for a statement
of facts explaining how an error in payment of small entity fees
occurred in good faith and how and when the error was discovered. A fee
deficiency payment based on the difference between fees originally paid
as a small entity and the current large entity amount at the time of
full payment of the fee deficiency will be deemed to constitute a
belief by the party submitting the deficiency 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.
Section 1.33 would 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) would be
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 in current Sec. 1.33(a), is inconsistent with current
Sec. 1.63(c) that states the residence must appear in the oath or
declaration. The requirement for placement of the post office address
is proposed to be made equivalent to the requirement for the residence
to
[[Page 49822]]
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 including a reference to Sec. 1.34(b), use of the
terms ``provided,'' ``furnished'' rather than ``notified,'' and
``application'' rather than ``case,'' while ``of which the Office''
would be deleted.
Section 1.33(b) would be removed and the subject matter transferred
to new Sec. 1.4(g).
Section 1.41(a) (and Sec. 1.53) would no longer require that a
patent be applied for in the name of the actual inventors for an
application for patent to receive a filing date. The requirement for
use of full names would be moved to Sec. 1.63(a) for better context.
The requirement for naming of the inventor or inventors would be
replaced with only a request that such names or an identifying name be
submitted on filing of the application. The use of very short
identifiers should be avoided to prevent confusion. Without supplying
at least an identifying name that is specific 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 must be specific, alphanumeric characters of
reasonable length, and must 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
continue to use an inventor's name for identification purposes. Failure
to apprise the Office of the application identifier being used will
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.
Paragraph (a) of Sec. 1.41 would also be amended to recite that the
actual inventor or inventors of an application are set forth in an
executed Sec. 1.63 oath or declaration to correspond to the proposed
change in Sec. 1.53(b)(1)(iii). Hence, the recitation of the
inventorship in an application submitted under Sec. 1.53(d) without an
executed oath or declaration 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. 1.48.
Section 1.47 would be amended to provide for publication in the
Official Gazette of a notice of filing for all applications 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 includes: The Application number, filing date, invention
title and inventors identifying the missing inventor.
Section 1.47 would also be amended for clarification purposes. A
reference to an ``omitted inventor'' in Sec. 1.47(a) would be replaced
with ``nonsigning inventor.'' Statements in Secs. 1.47 (a) and (b) that
a patent will be granted upon a satisfactory showing to the
Commissioner would be deleted as unnecessary. Section 1.47(b) is
proposed to be amended to clarify that it applies only where none of
the inventors are willing or can be found to sign the Declaration by
substitution of ``an inventor'' by ``all the inventors.'' The use of
``must state'' in regard to the last known address would be 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 would be deleted as redundant in view of the
requirement appearing earlier in Sec. 1.47(b) calling for ``proof of
pertinent facts.''
Section 1.48 for inventorship corrections in an application
(Sec. 1.324, for inventorship corrections in a patent, and Sec. 1.175,
for reissue declarations) would no longer require factual showings to
establish a lack of deceptive intent. All that will be needed is a
statement to that effect.
Section 1.48 would be amended in its title to clarify that the
section is related to patent applications as opposed to patents.
Section 1.48(a) would 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 proposed to
be amended to apply only to correction of inventor or inventors from
that named in an originally filed executed oath or declaration and not
to the naming of inventors or others for identification purposes as is
currently proposed under Sec. 1.41. The statement to be submitted would
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 present requirement that any amendment of the inventorship
under Sec. 1.48(a) be ``diligently'' made would be removed. The
applicability of a rejection under 35 U.S.C. 102(f)/(g) against an
application with the wrong inventorship set forth therein and any
patent that would issue thereon is deemed to provide sufficient
motivation for prompt correction of the inventorship without the need
for a separate requirement for diligence.
A clarifying reference to Sec. 1.634 would be 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 would require 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 is proposed to be deleted. Additionally, the
persons from whom a statement is required now includes any person not
named in error 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 would be amended to remove the
requirement that the statement be verified in accordance with the
proposed change to Sec. 1.4(d)(2).
Section 1.48(a)(2) would be 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
each actual inventor. Section 1.47 would only be 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) would be 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
[[Page 49823]]
Sec. 1.48(a). Section 1.48(a)(4) would also be 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) would also be amended to remove the requirement
that a petition thereunder be diligently filed. The applicability of a
rejection under 35 U.S.C. 102(f)/(g) against an application with the
wrong inventorship set forth therein and any patent that would issue
thereon is deemed to provide sufficient motivation for prompt
correction of the inventorship without the need for a separate
requirement for diligence.
Section 1.48(b) would have a clarifying reference to Sec. 1.634
added for instances when inventorship correction is necessary during an
interference.
Section 1.48(c) would be amended so that a petition thereunder no
longer need meet the current requirements of Sec. 1.48(a), which are
also proposed to be 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 would be
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(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 current requirement for
diligence in filing the petition based on an amendment to the claims
would not be 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. The statement of facts must be a verified statement if
made by a person not registered to practice before the Patent and
Trademark Office.
Section 1.48(c)(2) would 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 would only be 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) would 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) would be presented.
Section 1.48(d) would be 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) would also be clarified
to identify 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.
Automatic correction of the inventorship is not possible as is the case
for nonprovisional applications when an executed oath or declaration
under Sec. 1.63 with the correct inventorship is later filed; since an
oath or declaration is not to be submitted in provisional applications,
Sec. 1.51(a)(2).
Section 1.48(d)(1) would be amended to remove the requirement that
the statement be verified in accordance with the proposed change to
Sec. 1.4(d)(2).
Section 1.48(e)(1) would be 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,'' thereby requiring
only a statement that the inventorship error occurred without deceptive
intent. Paragraph (e)(1) would also be amended to remove the
requirement that the statement be verified in accordance with the
proposed change to Sec. 1.4(d)(2). 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, Sec. 1.53(e)(2), 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 continuing application.
Section 1.48(e)(3) would be 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 and a reference to Sec. 3.73(b) would be added.
Section 1.48(f) would be added to provide that the later filing of
an executed oath or declaration would act to correct the inventorship
without a specific petition for such correction and would be used to
issue a filing receipt and process the application notwithstanding any
inventorship or other identification name earlier presented.
Section 1.48(g) would be added to specifically recognize that the
Office may require such other information as may be deemed appropriate
under the particular circumstances surrounding a correction of the
inventorship.
Section 1.51(c) covering the use of an authorization to charge a
deposit account is proposed to be removed as unnecessary in view of
Sec. 1.25(b).
Section 1.52 paragraphs (a) and (d) would be amended to remove the
requirement that the translation be verified in accordance with the
proposed change to Sec. 1.4(d)(2). Paragraphs (a) and (d) of this
section would also be amended to clarify the need for a statement that
the translation being offered is an accurate translation, as is also
proposed in Sec. 1.69 paragraph (b).
Section 1.53(b)(1), as proposed, would remove: (1) The phrase ``in
the name of the actual inventor or inventors as required by
Sec. 1.41,'' and (2) the sentence ``[i]f all the names of the actual
inventor or inventors are not supplied when the specification and any
required drawing are filed, the application will not be given a filing
date earlier than the date upon which the names are supplied unless a
petition with the fee set forth in Sec. 1.17(i) is filed which sets
forth the reasons the delay in supplying the names should be excused.''
These proposed changes are consistent with the proposed change to
Sec. 1.41. Section 1.53(b)(1) (and Sec. 1.41(a)) would no longer
require that a patent be applied for in the name of the actual
inventors for an application for patent to receive a filing date.
Section 1.53(b)(1), as proposed, would change (1) ``[a]
continuation or
[[Page 49824]]
divisional application (filed under the conditions specified in 35
U.S.C. 120, 121 or 365(c) and Sec. 1.78(a)) may be filed under this
section, Sec. 1.60 or Sec. 1.62'' and (2) ``[a] continuation-in-part
application may also be filed under this section or Sec. 1.62'' to (1)
[a] continuation or divisional application (filed under the conditions
specified in 35 U.S.C. 120, 121 or 365(c) and Sec. 1.78(a)) may be
filed under this paragraph or paragraph (b)(3) of this section'' and
(2) ``[a] continuation-in-part application must be filed under this
paragraph, respectively. Upon the deletion of Secs. 1.60 and 1.62, any
continuation-in-part applications must be filed under Sec. 1.53(b)(1),
but a continuation or divisional application may be filed under
Secs. 1.53(b)(1) or (b)(3).
Section 1.53(b)(1), as proposed, would also add a new paragraph
(b)(1)(i) expressly providing that any continuation or divisional
application may be filed by all or by less than all of the inventors
named in a prior application, and that a newly executed oath or
declaration is not required pursuant to Secs. 1.51(a)(1)(ii) and
1.53(d) in a continuation or divisional application filed by all or by
less than all of the inventors named in a prior application, provided
that one of the following is submitted: (1) A copy of the executed oath
or declaration filed to complete (Sec. 1.51(a)(1)) the most immediate
prior national application for which priority is claimed under 35
U.S.C. 120, 121 or 365(c), or (2) 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
(Sec. 1.51(a)(1)) the most immediate prior national application for
which priority is claimed under 35 U.S.C. 120, 121 or 365(c). The
phrase ``most immediate prior national application'' is proposed rather
than ``prior application'' to accommodate those situations in which the
prior application was filed under current Secs. 1.60 or 1.62, or where
the prior application was itself a continuation or divisional
application and filed with a copy of the executed oath or declaration
from a prior application pursuant to Sec. 1.53(b)(1)(i). As is
currently the situation under Secs. 1.60 and 1.62, 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
continuation, divisional or continued prosecution (Sec. 1.53(b)(3))
application, notwithstanding the lack of a newly executed oath or
declaration. Therefore, applicants should be informed of the intent to
file a continuation, divisional or continued prosecution application
with a copy of the proposed claimed supplied. New Sec. 1.53(b)(1)(i),
as proposed, would also reference Sec. 1.53(d) for the filing of a
continuation or divisional application without the concomitant
submission of a newly executed oath or declaration or a copy of the
oath or declaration for the most immediate prior national application
for which priority is claimed under 35 U.S.C. 120, 121 or 365(c).
Section 1.53(b)(1), as proposed, would also add a new paragraph
(b)(1)(i)(A) providing that the copy of the executed or unexecuted oath
or declaration for the most immediate prior national application for
which priority is claimed under 35 U.S.C. 120, 121 or 365(c) 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 prior
application, taking into account any petition for correction of
inventorship pursuant to Sec. 1.48 in the prior application that has
been granted prior to the filing of the continuation or divisional
application. For situations where an inventor or inventors are to be
added in a continuation or divisional application see paragraph (ii)
under this section.
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(a) to sign an amendment in the continuation or divisional
application. That is, such a statement must be signed by: (1) All of
the inventors in the continuation or divisional application (see MPEP
714.01(a)), (2) the assignee of record of the entire interest in the
continuation or divisional application in compliance with Sec. 3.73(b)
(see MPEP 324), (3) an attorney or agent of record, or (4) a registered
attorney or agent acting in a representative capacity pursuant to
Sec. 1.34(a).
Section 1.53(b)(1)(i), as proposed, would add a new paragraph (B)
providing that where the power of attorney or correspondence address
was changed during the prosecution of the prior application, the change
in power of attorney or correspondence address must be identified in
the continuation or divisional application.
Section 1.53(b)(1), as proposed, would add a new paragraph (ii)
providing 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. For situations where an inventor or inventors
are to be added in a continuation or divisional application the Office
will not require a petition pursuant to Sec. 1.48, but will require
only the newly executed oath or declaration naming the correct
inventorship in the continuation or divisional application under
Sec. 1.53. For deletion of inventors in a continuation or divisional
application see Sec. 1.53(b)(1)(i) and (b)(3). New Sec. 1.53(b)(1)(ii),
as proposed, would also provide that a newly executed oath or
declaration must be filed in a continuation-in-part application, which
application may name all, more, or less than all of the inventors named
in the prior application.
Section 1.53(b)(1)(iii), as proposed, would clarify that the
inventorship is not set forth in an application until an executed oath
or declaration is submitted therein in accordance with the proposed
change to Sec. 1.41(a). Where the inventorship was voluntarily set
forth on filing an application without an executed oath or declaration
pursuant to Sec. 1.53(d) for purposes of identification, the actual
inventorship of the application will be controlled by the later
submission of an executed oath or declaration which may change what was
originally identified as the inventorship without recourse to a
petition under Sec. 1.48 in accordance with the proposed change to
Sec. 1.41(a).
Section 1.53(b)(2), as proposed, would remove the phrase ``in the
name of the actual inventor or inventors as required by Sec. 1.41'' and
the sentence ``[i]f all the names of the actual inventor or inventors
are not supplied when the specification and any required drawing are
filed, the provisional application will not be given a filing date
earlier than the date upon which the names are supplied unless a
petition with the fee set forth in Sec. 1.17(q) is filed which sets
forth the reasons the delay in supplying the names should be excused.''
Section 1.53(b)(2) (and Sec. 1.41(a)) would no longer require that a
patent be applied for in the name of the actual inventors for an
application for patent to receive a filing date.
Section 1.53(b)(2)(ii), as proposed, would change the phrase
``treated as'' to ``converted to'' for clarity.
[[Page 49825]]
Section 1.53(b)(3) is proposed to be added to provide for the
filing of a continued prosecution application.
Section 532 of the Uruguay Round Agreement Act (Pub. L. 103-465,
section 532, 108 Stat. 4809 (1994)) amended 35 U.S.C. 154 to provide
that the term of patent protection begins on the date of patent grant
and ends on the date 20 years from the filing date of the application.
As any delay in the prosecution of the application will reduce the term
of patent protection, reducing unnecessary delays in the prosecution of
applications is a mutual interest of patent applicants and the Office.
An applicant in a nonprovisional application filed on or after June
8, 1995, must file a continuing application to obtain further
examination subsequent to a final rejection or other final action. The
current continuing practice under Secs. 1.60 and 1.62 of processing an
application filed thereunder with a new application number and filing
date delays the examination of such continuing applications. Therefore,
the Office proposes to eliminate this delay by: (1) Not assigning a new
application number to an application filed under Sec. 1.53(b) (3), and
(2) not processing the application filed under Sec. 1.53(b)(3) with a
filing date of the request for an application under Sec. 1.53(b)(3).
Rather, a continued prosecution application would retain the
application number and the filing date of the prior application to
which it relates for identification purposes thereby allowing
examination to proceed without the delays that would be caused by the
current need to assign to applications filed under Secs. 1.60 and 1.62
a new application number and filing date as of the date the Rule 60 or
62 application was requested (submitted).
Section 1.53(b)(3), as proposed, would specifically provide that:
(1) In a complete nonprovisional application (Sec. 1.51(a)(1)) filed on
or after June 8, 1995, a continuation or divisional application that
discloses and claims only subject matter disclosed in that prior
complete application and names as inventors the same or less than all
the inventors named in that prior complete application may be filed
under this paragraph, and (2) the filing date of the continued
prosecution application, such as for continuity purposes under 35
U.S.C. 120 and Sec. 1.78, is the date on which a request for an
application under this paragraph, including identification of the prior
application number is filed.
The specific reference to the prior application required by 35
U.S.C. 120 and Sec. 1.78(a)(2) will be satisfied by a sentence that the
continued prosecution application is a continuation or divisional, as
appropriate, of prior application number ##/###,###, filed ##/##/##,
now abandoned, notwithstanding that the so identified application
number and filing date are also the application number and filing date
assigned to the continued prosecution application under this paragraph.
Where the continued prosecution application derives from a chain of
Sec. 1.53(b)(3) applications assigned a common application number and
filing date, a sentence that the application is a continuation or
divisional, as appropriate, of the common application number and filing
date will constitute a specific reference (35 U.S.C. 120 and
Sec. 1.78(a)(2)) to each application assigned that application number
and filing date. Since Sec. 1.53(b)(3) is proposed to be limited to
continuations and divisionals, the actual filing date of the request
for an application under Sec. 1.53(b)(3) will be relevant only to the
copendency requirement of 35 U.S.C. 120 and Sec. 1.78 and patent term
vis-a-vis Pub. L. 103-465. Nevertheless, Sec. 1.53(b)(3) is proposed to
be limited to a continuation or divisional of a complete application
filed on or after June 8, 1995, so as to avoid any dispute as to
whether the application is subject to 20-year patent term as set forth
in Pub. L. 103-465. That is, any continuation or divisional of an
application filed prior to June 8, 1995, as well as any continuation-
in-part, must be filed under Sec. 1.53(b)(1).
Section 1.53(b)(3)(i)(A), as proposed, would provide that an
application under Sec. 1.53(b)(3) (a continued prosecution application)
will use the specification, drawings and oath or declaration from the
prior complete application and will be assigned its application number
for identification purposes.
Section 1.53(b)(3)(i)(B), as proposed, would provide that the
filing of a request for a continued prosecution application is a
request to expressly abandon the prior application as of the filing
date granted the application under Sec. 1.53(b)(3).
Section 1.53(b)(3)(i)(C), as proposed, would provide that a
continued prosecution application must be filed before the payment of
the issue fee, abandonment of, or termination of proceedings on the
prior application with the filing date of a request for a continued
prosecution application being the date on which a request for a
continued prosecution application including identification of the
application number of the prior complete application is filed.
Section 1.53(b)(3)(ii) (A) and (B), as proposed, would provide that
filing fee for a continued prosecution application is the statutory
basic filing fee as set forth in Sec. 1.16 and any additional 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
section and entry of any amendments under Sec. 1.116 unentered in the
prior application which applicant has requested to be entered in the
new application.
In instances in which a continued prosecution application is
submitted without the basic statutory filing fee or any additional
claims fee due, the Office will continue to mail a ``Notice of Missing
Parts'' under Sec. 1.53(d)(1) and give the applicant a period of time
within which to file the fee and to pay the surcharge under
Sec. 1.16(e) to prevent abandonment of the application (see
Sec. 1.53(d)(1)). Thus, the filing of a continued prosecution
application without the basic statutory filing fee or any additional
claims fee due will result in a delay in the initial processing of the
application. An applicant, however, may eliminate or limit this delay
by either filing the request for a continued prosecution application
with the appropriate filing fee or not delaying the submission of the
appropriate filing fee until the mailing of or expiration of the period
for response to the ``Notice of Missing Parts.''
Section 1.53(b)(3)(iii), as proposed, would provide that if a
continued prosecution application is filed by less than all the
inventors named in the prior application, a statement must accompany
the application when filed requesting deletion of the names of the
person or persons who are not inventors of the invention being claimed
in the continued prosecution application. Where an application is filed
under Sec. 1.53(b)(3) without a statement requesting deletion of the
names of any person or persons named in the prior application, the
application will be treated as naming as inventors the person or
persons named in the prior application, taking into account any grant
of a petition correcting inventorship in the prior application pursuant
to Sec. 1.48. To correct the inventorship in the continued prosecution
application, the Office will not require a petition pursuant to
Sec. 1.48 as the application is to be filed without a newly executed
oath or declaration, but will require only a newly executed oath or
declaration naming the correct inventorship in the continued
[[Page 49826]]
prosecution application, which is similar to the requirements for
correction of the inventorship in applications filed under
Sec. 1.53(b)(1) without a newly executed oath or declaration.
Section 1.53(b)(3)(iv), as proposed, would require that any new
change be made in the form of an amendment to the prior application,
and would provide that any new specification filed with the request for
an application under Sec. 1.53(b)(3) would not be considered part of
the original application papers, but would be treated as a substitute
specification in accordance with Sec. 1.125. In the event that
legislation mandating the 18-month publication of patent applications
(e.g., H.R. 1733) is enacted, it will be necessary to amend proposed
Sec. 1.53(b)(3)(iii) to require a substitute specification in
compliance with Sec. 1.125 and drawings including only those changes to
the prior application during the prosecution of the prior application.
Section 1.53(b)(3)(v), as proposed, would provide that the filing
of a continued prosecution application will be construed to include a
waiver of confidence by the applicant under 35 U.S.C. 122 to the extent
that any member of the public who is entitled under the provisions of
Sec. 1.14 to access to, or information concerning either the prior
application or any application filed under the provisions of
Sec. 1.53(b)(3) may be given similar access to, or similar information
concerning, the other application(s) in the file wrapper.
Section 1.53(b)(3)(vi) (A) through (D), as proposed, would provide
that the applicant is urged to furnish in the request for an
application under Sec. 1.53(b)(3) the following information relating to
the prior application to the best of his or her ability: (A) Title as
originally filed and as last amended, (B) name of applicant as
originally filed and as last amended, (C) current correspondence
address of applicant, and (D) identification of prior foreign
application and any priority claim under 35 U.S.C. 119.
Section 1.53(b)(3)(vii), as proposed, would provide that envelopes
containing only requests and fees for filing an application under
Sec. 1.53(b)(3) should be marked ``Box CPA.''
Section 1.53(c), as proposed, would replace its current language
with three paragraphs treating: (1) Applications found to be improper
or incomplete, (2) any requests for review of a notification that an
application has been found to be improper or incomplete, and (3)
termination of proceedings in an application for failure to timely
correct a filing error or seek review of a notification that an
application has been found to be improper or incomplete.
Section 1.53(c)(1), as proposed, would specifically provide that
``[i]f any application filed under paragraph (b) of this section is
found to be incomplete or improper, applicant will be so notified and
given a time period within which to correct the filing error.''
Section 1.53(c)(2), as proposed, would specifically provide that
``[a]ny request for review of a notification pursuant to paragraph
(c)(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,'' ``[a]ny petition under
this paragraph must be accompanied by the fee set forth in Sec. 1.17(i)
in an application filed under paragraphs (b)(1) or (b)(3) of this
section, and the fee set forth in Sec. 1.17(q) in an application filed
under paragraph (b)(2) of this section,'' and ``[i]n 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 (c)(1) of this section will be the date the
filing error is corrected.''
Section 1.53(c)(3), as proposed, would specifically provide that
``[i]f an applicant is notified of a filing error pursuant to paragraph
(c)(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 paragraph (c)(2) of this section, proceedings in the
application will be considered terminated'' and ``[w]here proceedings
in an application are terminated pursuant to this paragraph, the
application may be returned or otherwise disposed of, and any filing
fees, less the handling fee set forth in Sec. 1.21(n), will be
refunded.'' Section 1.53(c)(3), as proposed would not provide that
proceedings in the application will be considered terminated for
failure to timely respond to a notification that the original
application papers lack a portion of the specification or drawing(s).
Thus, the failure to timely seek review of a notification that the
original application papers lack a portion of the specification or
drawing(s) will not result in termination of proceedings in (or
abandonment of) the application, but will simply result in such portion
of the specification or drawing(s) not being considered part of the
original disclosure of the application.
Section 1.53(d)(1), as proposed, would change ``paragraph (b)(1) of
this section'' to ``paragraphs (b)(1) or (b)(3) of this section,'' such
that Sec. 1.53(d)(1) would be applicable to applications filed under
Secs. 1.53 (b)(1) and (b)(3), where Sec. 1.53(d)(2) would be applicable
to applications filed under Sec. 1.53(b)(2) (i.e., provisional
applications). While Sec. 1.53(d)(1) addresses both the filing fee and
the oath or declaration, the oath or declaration of an application
under Sec. 1.53(b)(3) will be the oath or declaration of the prior
complete (Sec. 1.51(a)(1)) application. As such, an oath or declaration
will not be required under Sec. 1.53(d)(1) for a proper application
under Sec. 1.53(b)(3).
Section 1.53(d)(1), as proposed, would be further amended to add
the phrases ``including a continuation, divisional, or continuation-in-
part application'' and ``pursuant to Secs. 1.63 or 1.175, which may be
a copy of the executed oath or declaration filed to complete
(Sec. 1.51(a)(1)) the most immediate prior national application for
which priority is claimed under 35 U.S.C. 120, 121 or 365(c), or 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 (Sec. 1.51(a)(1)) the most immediate prior
national application for which priority is claimed under 35 U.S.C. 120,
121 or 365(c), in a continuation or divisional application'' for
clarity and consistency with Sec. 1.53(b)(1). A reference to submission
of a copy of a Notice to File Missing Parts would be removed.
Section 1.54(b), as proposed, would add the phrase ``unless the
application is an application filed under Sec. 1.53(b)(3).'' To
minimize application processing delays in applications filed under
Sec. 1.53(b)(3), as proposed, such applications will not be processed
by the Office of Initial Patent Examination as new applications.
Section 1.55 paragraph (a) would be amended to remove the
requirement that the statement be verified in accordance with the
proposed change to Sec. 1.4(d)(2).
Section 1.59 would be amended: By revising the title to indicate
that expungement of information from an application file would come
under this section, by revising the existing paragraph and designating
it as paragraph (a)(1), and by adding paragraphs (a)(2), (b) and (c).
Paragraph (a)(1) would retain the general prohibition on the return of
information submitted in an application which has a filing date. The
portion of the paragraph relating to the Office furnishing copies of
application papers has been shifted to new paragraph (c). Paragraph
(a)(2) would make explicit that information, forming part of the
original disclosure, i.e., written
[[Page 49827]]
specification, drawings, claims 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.
Paragraph (b) of Sec. 1.59 would provide 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.
Paragraph (b) of Sec. 1.59 is intended to cover the current
practice set forth in MPEP 724.05 where 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 response 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 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.
A result of the proposed amendment to this section would be to have a
petition to expunge decided under the instant rule by the examiner who
determines the materiality of the information to be expunged rather
than by the Office of Petitions under Sec. 1.182, which prior to
rendering a decision on the petition consults with the examiner on
materiality of the information at issue.
Paragraph (b) of Sec. 1.59 is also intended to cover information
that was unintentionally submitted in an application, provided that:
(i) The Office can effect such return prior to the issuance of any
patent on the application in issue, (ii) that 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, (iii) the information has not otherwise
been made public, (iv) 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 (v) it is
established to the satisfaction of the Commissioner that the
information to be returned is not material information under Sec. 1.56.
Requests to return information that have not been clearly identified as
information that may be later subject to such 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.
Paragraph (b) of Sec. 1.59 is also intended to cover the situation
where an unintended heading has been placed on papers so that they are
present in an incorrect application file. In such 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 need of a petition.
Added paragraph (c) of Sec. 1.59 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 is proposed to be removed and reserved.
In the notice of proposed rulemaking entitled ``Changes to
Implement 20-Year Patent Term and Provisional Application'' (20-Year
Term Notice of Proposed Rulemaking) published in the Federal Register
at 59 FR 63951 (December 12, 1994), and in the Patent and Trademark
Office Official Gazette at 1170 Off. Gaz. Pat. Office 377 (January 3,
1995), Sec. 1.60 was proposed to be removed due to the rule change to
Sec. 1.4(d), which permits the filing of a copy of an oath or
declaration. The proposed removal of Sec. 1.60 in the 20-Year Term
Notice of Proposed Rulemaking, however, was withdrawn in the final rule
to permit further study.
A continuation or divisional application may be filed under 35
U.S.C. 111(a) using the procedures set forth in Sec. 1.53, by providing
a copy of the prior application, including a copy of the oath or
declaration in such prior application, as filed. The patent statutes
and rules of practice do not require that an oath or declaration
include a recent 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. This change in
examining practice will appear in the next revision of the MPEP. As
discussed supra, 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.
Sections 1.60(b)(4) and 1.62(a) currently permit the filing of a
continuation or divisional application by all or by less than all of
the inventors named in a prior application without a newly executed
oath or declaration. To continue this practice, Sec. 1.53 is proposed
to be amended to provide that any continuation or divisional
application may be filed by all or by less than all of the inventors
named in a prior application, but where a newly executed oath or
declaration is not submitted for a continuation or divisional
application filed by less than all the inventors named in the prior
application, the copy of the oath or declaration for the most immediate
prior national application for which priority is claimed under 35
U.S.C. 120, 121 or 365(c) must be accompanied by a statement requesting
the deletion of the names of the person or persons who are not
inventors in the continuation or divisional 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.
Section 1.60 is now unnecessary due to: (1) The rule change to
Sec. 1.4(d), (2) the proposed addition of Sec. 1.53(b)(1)(i) to
expressly permit the filing of either a newly executed oath or
declaration, or a copy of the executed oath or declaration filed to
complete pursuant to Sec. 1.51(a)(1) the most immediate prior national
application for which priority is claimed under 35 U.S.C. 120, 121 or
365(c), in a continuation or divisional application, (3) the proposed
addition of Sec. 1.53(b)(1)(i) to permit the filing of a continuation
or divisional application by all or by less than all the inventors
[[Page 49828]]
named in a prior application, using a copy of the executed oath or
declaration filed to complete the prior application, and (4) the
proposed addition of Sec. 1.53(b)(3) to permit the filing of a
continued prosecution 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. 1.53(b)(1)(i), as proposed. 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 a new
application without requiring a new oath or declaration. 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 division.
Section 1.62 is proposed to be removed and reserved.
In the proposed rulemaking entitled ``Changes to Implement 18-Month
Publication of Patent Applications'' (18-Month Publication Notice of
Proposed Rulemaking) published in the Federal Register at 60 FR 42352
(August 15, 1995), and in the Patent and Trademark Office Official
Gazette at 1177 Off. Gaz. Pat. Office 61 (August 15, 1995),
Sec. 1.62(e) was proposed to be amended to require a substitute
specification in compliance with Sec. 1.125 and drawings where the
application filed under Sec. 1.62 is a continuation-in-part
application. The 18-Month Publication Notice of Proposed Rulemaking
proposed to digital image and/or optical character recognition (OCR)
scan application material into an electronic data base, which data base
would be used to publish the application (e.g., for producing copies of
the technical contents of the application-as-filed). The 18-Month
Publication Notice of Proposed Rulemaking indicated that as
applications filed prior to the implementation of 18-month publication
will not have been image- or OCR-scanned into the electronic data base,
the technical contents of an application filed under Sec. 1.62 in which
the prior application was itself filed prior to the implementation of
18-month publication will not be contained in the electronic data base.
The solution proposed in the 18-Month Publication Notice of
Proposed Rulemaking was for the Office to obtain the microfiche copy of
the prior application for applications under Sec. 1.62 which do not add
additional disclosure (i.e., continuation or divisional applications)
and image or OCR scan it into the electronic data base, and to amend
Sec. 1.62 to provide that, where the application adds additional
disclosure (i.e., is a continuation-in-part application), a substitute
specification in compliance with Sec. 1.125 and drawings will be
required.
The proposal in the 18-Month Publication Notice of Proposed
Rulemaking to obtain the microfiche copy of prior continuation or
divisional applications is now considered unfeasible. A number of
applications filed under Sec. 1.62 derive from a chain of applications
filed under Sec. 1.62. The information pertaining to such an
application's chain of prior applications contained within the Patent
Application Location and Monitoring (PALM) system is not sufficiently
comprehensive to readily and reliably indicate the prior application
that contains a specification and drawings, and is not sufficiently
reliable to avoid the occasional inclusion of an unrelated application
in the chain of prior applications. This could result in the
inadvertent publication of the specification and drawings of the wrong
application.
In addition, the microfiche copy of the prior application may be a
microfiche of sheets of specification and/or drawings on 8\1/2\ by 14-
inch paper, which paper size is not technically useable by the
equipment which will be employed for pre-grant publication of patent
applications. Attempts to reduce such sheets of specification and/or
drawings to a paper size processible by pre-grant publication equipment
results in electronic files which contain illegible text and figures.
Moreover, the microfilming process under pre-grant publication differs
from the previous microfilming process, and as such, the microfiche
copy of such a prior application is sufficiently dissimilar from the
microfiche copy of an application under pre-grant publication that it
causes accurate technical date capture difficulties.
In the event that legislation mandating the 18-month publication of
patent application is enacted, it will be necessary to require a
substitute specification in compliance with Sec. 1.125 and drawings
including any changes to the prior application during the prosecution
of the prior application or pursuant to Sec. 1.62(e) to continue
Sec. 1.62 practice.
Section 1.62 is now unnecessary due to: (1) The rule change to
Sec. 1.4(d), (2) the proposed change to Sec. 1.53(b)(1) to expressly
permit the filing of either a newly executed oath or declaration, or a
copy of the executed oath or declaration filed to complete pursuant to
Sec. 1.51(a)(1) the most immediate prior national application for which
priority is claimed under 35 U.S.C. 120, 121 or 365(c), in a
continuation or divisional application, (3) the proposed change to
Sec. 1.53(b)(1) to permit the filing of a continuation or divisional
application by all or by less than all the inventors named in a prior
application, using a copy of the executed oath or declaration filed to
complete the prior application, and (4) the proposed addition of
Sec. 1.53(b)(3) to permit the filing of a continued prosecution
application.
The Office currently receives a number of petitions requesting that
an application filed under Secs. 1.60 and 1.62 be accepted even though
at the time of filing of the application, the application did not
comply with all the requirements of Secs. 1.60 or 1.62 due to
inadvertent error on the part of the applicant. The examination of
these improper applications under Secs. 1.60 and 1.62 is delayed until
a petition to accept the application is filed and granted. The large
majority of the applications filed under Sec. 1.60, however, complied
at the time of filing with the requirements of Sec. 1.53(b)(1), and the
copy of the oath or declaration from the prior application is now
acceptable as the oath or declaration for the application, regardless
of whether the application is an application under Sec. 1.53 or
Sec. 1.60. The removal of Sec. 1.60 and simplification of Sec. 1.62
will reduce the number of these types of petitions and will simplify
the procedures for filing an application for both the Office and patent
practitioners.
It is anticipated that, subsequent to the removal of Secs. 1.60 and
1.62, 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. Applications 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(b)(3), and those applications that do not meet the
requirements of Sec. 1.53(b)(3) (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(b)(3). Such improper applications under
Sec. 1.53(b)(3) may be corrected by
[[Page 49829]]
way of petition under Sec. 1.53(b)(c) (and $130 fee pursuant to
Sec. 1.17(i)).
Such a Sec. 1.53(c) petition in a continuation or divisional
application will be granted on the condition that the applicant file:
(1) The $130 petition fee, and (2) a true copy of the complete
application designated as the prior application in the purported
Sec. 1.62 application papers as filed, or, if the prior application was
an application filed under Sec. 1.62, a true copy of its most immediate
parent application which contained a specification and drawings as
filed. Such a Sec. 1.53(c) petition in a continuation-in-part
application will be granted on condition that the applicant file: (1)
The $130 petition fee, and (2) a true copy of the complete application
designated as the prior application in the purported Sec. 1.62
application papers as filed, or, if the prior application was an
application filed under Sec. 1.62, a true copy of its most immediate
parent application which contained a specification and drawings as
filed, and any amendments submitted during the prosecution of the prior
application.
Section 1.63(a)(3) is proposed to be amended by requiring the post
office address to appear in the oath or declaration and having the
requirement from Sec. 1.41(a) for the full names of the inventors
placed therein.
Section 1.69, paragraph (b), would be amended to remove the
requirement that the translation be verified in accordance with the
proposed change to Sec. 1.4(d)(2). Paragraph (b) of this section is
also being amended to clarify the need for a statement that the
translation being offered is an accurate translation, as is proposed
for Sec. 1.52, paragraph (a) and (d).
Section 1.78(a)(1)(ii), as proposed, would remove the references to
Secs. 1.60 and 62 in view of the proposed deletion of Secs. 1.60 and
62.
Section 1.84, paragraph (b), is proposed to be 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 1.91 is proposed to be amended for clarification purposes
by additionally reciting ``Exhibits'' as well as models. The section is
proposed to be amended to state that 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. This language is moved
from Sec. 1.92.
Section 1.92 is proposed to be removed and reserved and the
language, as stated above, transferred to Sec. 1.91 for improved
contextual purposes.
Section 1.97 (c) through (e) are proposed to be 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 that no item of information
contained in the information disclosure statement to the knowledge of
the person signing the statement, after making reasonable inquiry, 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, page 600-91, 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.
Section 1.101 is proposed to be removed and reserved as relating to
internal Office instructions.
Section 1.102, paragraph (a), would be amended to remove the
requirement that the showing be verified in accordance with the
proposed change to Sec. 1.4(d)(2).
Section 1.103, paragraph (a), would be amended by replacement of
``response'' with ``reply'' in accordance with the proposed change to
Sec. 1.111.
Section 1.104 is proposed to be removed and reserved as relating to
internal Office instructions (the material of paragraph (c) would be
present in the MPEP).
Section 1.105 is proposed to be removed and reserved as relating to
internal Office instructions.
Section 1.108 is proposed to be removed and reserved as relating to
internal Office instructions.
Section 1.111(b) is proposed to be 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.
In Sec. 1.112 it is proposed to remove as being 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 wherein an
unrestricted right of entry exists prior to a final rejection and that
an application or patent under reexamination be considered repeatedly
unless a final action is rendered. It is proposed to amend the section
for clarification purposes by addition of a reference to
reconsideration ``before final action.''
Section 1.113(a), as proposed, would add ``by the examiner'' after
``examination or consideration,'' change ``objections to form'' to
``objections as to form'' for clarity, and would replace ``response''
with ``reply'' in accordance with the proposed change to Sec. 1.111.
Section 1.113(b), as proposed, would change ``clearly stating the
reasons therefor'' to ``clearly stating the reasons in support
thereof'' for clarity.
A new Sec. 1.113(c) would be added to provide that the first action
in an application will not be made final. See comments to Secs. 1.116
and 1.191.
Section 1.115 is proposed to be replaced by new Sec. 1.115 that
would contain material to be deleted from Secs. 1.117 through 1.119,
1.123 and 1.124. No change in substance is contemplated with the
material of deleted sections being rearranged and edited for clarity
and contextual purposes in the new section. The reference to
``application'' is intended to include reissue applications.
Section 1.116(a), as proposed, would 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 would replace the phrase ``any
proceedings relative thereto'' with ``any related proceedings'' for
clarity.
Section 1.116(b), as proposed, would provide that any amendment not
in compliance with Sec. 1.116(a) must be submitted with a request for
an application under Sec. 1.53(b)(3) to ensure consideration of the
amendment.
Under Sec. 1.116, as proposed, amendments after final rejection or
other final action would be limited to cancelling claims or complying
with any requirement of form expressly set forth in a previous Office
action. Currently, amendments after final which concern the merits of
an application may, upon a showing of good and sufficient reasons why
they are necessary and were not earlier presented, be entered and
amendments after final which present rejected claims
[[Page 49830]]
in better form for consideration on appeal may be entered. This
procedure causes delays in the ultimate issuance of the application as
a patent, since applicants will await a ruling on whether such
amendment will be entered prior to deciding whether to obtain the entry
of such amendment through the filing of a continuing application. In
addition, the expedited handling of numerous amendments after final,
and the expedited consideration of whether there is an adequate showing
of good and sufficient reasons why an amendment after final concerning
the merits of an application is necessary and not earlier presented, or
whether an amendment after final presents rejected claims in better
form for consideration on appeal, places a significant burden on Office
resources.
Section 1.113(c), as proposed, would eliminate first action final
practice, and, as such, would eliminate the necessity to submit an
amendment after final simply to avoid a first action final in a
continuing application. In view of this safeguard, and the delay and
burden of the current practice for the treatment of amendments after
final, Sec. 1.116 is proposed to be amended to limit those amendments
that may be presented as a matter of right after a final rejection or
other final action. Put simply, the proposed elimination of first
action final practice by the Office is the quid pro quo for the
proposed strict limitation of after final practice. Persons submitting
comments objecting to this proposed limitation of after final practice
should frame such comments in the context that the proposed elimination
of first action final practice by the Office is coupled to the proposed
limitation of after final practice.
Section 1.116, as proposed, would not affect the authority of an
examiner to enter in an application under final an amendment that
places the application in condition for allowance, but does not
strictly meet the requirements of Sec. 1.116(a). That is, in instances
in which the applicant and examiner agree on an amendment that would
place the application in condition for allowance, the examiner would
retain the authority to enter the amendment, notwithstanding the
requirements of Sec. 1.116(a). Where, however, the applicant and the
examiner do not agree on whether an amendment would place an
application in condition for allowance, and the amendment does not meet
the requirements of Sec. 1.116(a), the applicant could not require the
examiner to consider the amendment as a matter of right.
Section 1.117 is proposed to be removed and reserved as the subject
matter was transferred to proposed Sec. 1.115.
Section 1.118 is proposed to be removed and reserved and its
subject matter transferred to proposed Sec. 1.115.
Section 1.119 is proposed to be removed and reserved and its
subject matter transferred to proposed Sec. 1.115.
Section 1.121 paragraphs (a) through (f) are proposed to be
replaced with paragraphs (a) through (c), which separately treat
amendments in non-reissue applications (paragraph (a)), amendments in
reissue applications (paragraph (b)) and amendments in reexamination
proceedings (paragraph (c)). Paragraphs (a) and (b) 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 specificat'ion for non-reissue and reissue
applications: When making an amendment to the specification of a non-
reissue application a copy of all previous amendments would not be
required, whereas for reissue applications a copy of all previous
amendments to the patent specification would be required. In comparing
amendment practice to the claims for non-reissue and reissue
applications: When making an amendment to the claims of a non-reissue
application or when new claims are added, a copy of all pending claims,
including original claims that have never been amended, would be
required, whereas for reissue applications a copy of only claims that
are being amended or added would be required.
Paragraph (a) of Sec. 1.121 would relate to amendments in non-
reissue applications and retains a reference to Sec. 1.52. Paragraph
(a)(1) would relate to the manner of making amendments in the
specification other than in the claims. Paragraph (a)(1)(i) would
require the precise point to be indicated where an amendment is made.
Paragraph (a)(1)(ii) would allow amendments that are deletions only to
be done by a direction to cancel rather than presenting the
sentence(s), paragraph(s) and/or page(s) with brackets. This should be
compared to cancellation of material from the patent specification in a
reissue application (paragraph (b)((1)((ii)) or in a reexamination
proceedings (Sec. 1.530(d)(1)(ii)--by way of a copy of the rewritten
material). Paragraph (a)(1)(iii) would require all other amendments,
such as additions or deletions mixed with additions, to be made by
submission of a copy of the rewritten sentence(s), paragraph(s) and/or
page(s) to permit the examiner to more readily recognize the changes
that are being made. Current practice does not require the marking of
an amendment to the specification in non-reissue applications. A change
in one sentence, paragraph or page that results in only format changes
to other pages not being amended are not to be submitted. Paragraph
(a)(1)(iv) would identify the type of markings required by paragraph
(a)(1)(iii), single underlining for added material and single brackets
for material deleted. The marking would also be required to be applied
in reference to the material as previously rewritten and not as
originally presented if that differed from the previous presentation.
Paragraph (a)(2) of Sec. 1.121 would relate to the manner of making
amendments in the claims of a non-reissue application. Paragraph
(a)(2)(i)(A) would permit cancellation of a claim by a direction to do
so or by simply omitting a copy of the claim when a complete copy of
all pending claims are presented pursuant to paragraph (a)(2)(ii) of
this section. Paragraph (a)(2)(i)(B) would permit amendment of a
previously submitted claim, other than mere cancellation by submission
of a copy of the claim completely rewritten with markings pursuant to
paragraph (a)(2)(iii) of this section rather than continuing to permit
requests that the Office hand-enter changes of five or less words,
Sec. 1.121(c)(2). Such rewriting would be construed as a direction that
the rewritten claim be a replacement for the previously submitted
claim. Paragraph (a)(2)(i)(C) sets forth that a new claim may only be
added by the submission of a clean copy of the new claim.
Paragraph (a)(2)(ii) of Sec. 1.121 would require that when a
previously submitted claim is amended, or when a new claim is added,
applicant must submit a separate copy of all pending claims to include
all newly rewritten claims, all newly added claims, all previously
rewritten claims that are still pending and any unamended claims that
are still pending. This would enable the examiner to more quickly
identify the claims that must be reviewed for the next Office action
and would enable the printer to have a current version of the allowed
claims for printing should the application be allowed. Compare with
amendment of claims in reissue applications wherein only a copy of an
amended patent claim or added claim is required, paragraph (b)(2)(i)(A)
of this section, but not of previous claims (patent and added claims)
that are not currently being amended. Current practice does not require
a complete copy of all pending claims but only those claims being
amended or added.
[[Page 49831]]
Paragraph (a)(2)(iii) of Sec. 1.121 would identify the type of
marking required by paragraph (a)(2)(i)(B), single underlining for
added material and single brackets for material deleted.
Paragraph (a)(2)(iv) of Sec. 1.121 would provide that the failure
to submit a copy of any previously submitted claim would be construed
as a direction to cancel that claim.
Paragraph (a)(3) of Sec. 1.121 would clarify 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.
Paragraph (a)(4) of Sec. 1.121 would require 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.
Paragraph (b) of Sec. 1.121 would apply to amendments in reissue
applications. Paragraph (b)(1) of Sec. 1.121 would relate to the manner
of making amendments to the specification other than in the claims in
reissue applications. Paragraph (b)(1)(i) would require the precise
point to be indicated where an amendment is made. Paragraph (b)(1)(ii)
would require that all amendments including deletions be made by
submission of a copy of the rewritten paragraph(s) with markings. A
change in one sentence, paragraph or page that results in only format
changes to other pages not being amended 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) sets forth that each
amendment to the specification must include all amendments to the
specification relative to the patent as of the date of the submission.
Compare to amendments to the specification other than claims in
nonreissue applications wherein previous amendments to the
specification are not required to accompany the current amendment to
the specification, paragraph (a)(1)(iii). Paragraph (b)(1)(iv) would
define the marking set forth in paragraph (b)(1)(ii) of section.
Paragraph (b)(2) of Sec. 1.121 would relate to the manner of making
amendments to the claims in reissue applications. Paragraph
(b)(2)(i)(A) of Sec. 1.121 would require the entire text of each patent
claim that is being amended and of each added claim rather than
continuing to permit requests that the Office hand-enter changes of
five or less words, Sec. 1.121(c)(2), but not of all pending claims,
such as patent claims that have not been amended. Compare paragraph
(a)(2)((ii). Additionally, provision would be 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) would require that patent claims
not be renumbered. Paragraph (b)(2)(i)(C) would identify 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 would require that each
amendment submission set forth the status 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 response, 35 U.S.C. 135.
Paragraph (b)(2)(iii) of Sec. 1.121 would require 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 response, 35 U.S.C. 135.
Paragraph (b)(2)(iv) of Sec. 1.121 would require that each
submission of an amendment to any claim (patent claim or added claim)
requires copies of all amendments to the claims as of the date of the
submission. A copy of a previous amendment would not meet the
requirement of this section in that all amendments must be represented,
as only the last amendment will be used for printing.
Paragraph (b)(2)(v) of Sec. 1.121 would provide that the failure to
submit a copy of any added claim would be construed as a direction to
cancel that claim.
Paragraph (b)(2)(vi) of Sec. 1.121 would clarify that: (1) No
reissue patent would 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), and
(2) no amendment may introduce new matter or be made in an expired
patent.
Paragraph (b)(3) of Sec. 1.121 clarify 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.
Paragraph (c) of Sec. 1.121 would clarify that amendments in
reexamination proceedings are to be made in accordance with Sec. 1.530.
Section 1.121 as applied both to non-reissue and 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 Page ______ be cancelled and the following
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 proposed to be
amended to provide that a substitute specification may be submitted at
any point up to payment of the issue fee as a matter of right.
The proposed changes to Sec. 1.121 relate in part to the method of
presenting amendments in reissue and reexamination proceedings, that
would more closely parallel each other. The Office seeks guidance on
the usefulness of bringing reissue and reexamination proceedings in
closer harmony. Currently, both practitioners and Office personnel must
retain a working knowledge of these infrequently used but vital avenues
for review of an issued patent. The Office has identified the following
areas for possible harmonization and would like comments as to the
appropriateness of these areas, identification of other suitable areas
for consideration and specific means to achieve harmonization in the
identified areas, e.g., whether a concept or practice in one area
should be applied to the other area or a new practice for both should
be started:
--Procedures for amending claims and the specification, Sec. 1.121
--To utilize a reissue certificate (similar to a reexamination
certificate) attached to a copy of the original patent as the reissued
patent. This procedure would eliminate the need to reprint the entire
reissued patent.
--Whether the special dispatch provisions of re-examination should be
applied to reissue applications.
Section 1.122 is proposed to be removed and reserved as
representing internal Office instruction.
Section 1.123 is proposed to be removed and reserved and its
subject matter transferred to proposed Sec. 1.115 for better context.
Section 1.124 is proposed to be removed and reserved and its
subject matter transferred to proposed Sec. 1.115 for better context.
Section 1.125 is proposed to be amended by addition of paragraphs
(a)
[[Page 49832]]
through (d). Paragraph (a) would retain the current practice that a
substitute specification may be required by the examiner and would be
clarified to note that if the legibility of the application papers
shall render it difficult to consider the case, the Office may require
a substitute specification.
Paragraph (b) of Sec. 1.125 would provide for the right of filing a
substitute specification in an application other than a reissue
application, at any point up to payment of the issue fee, if it is
accompanied by a statement that the substitute specification includes
no new matter and does not introduce any amendments unless they have
been submitted in accordance with the requirements of Sec. 1.121(a)
either prior to or concurrent with the submission of the substitute
specification. In view of the proposed continued prosecution
application under Sec. 1.53(b)(3) and the need to submit sentence,
paragraph, and/or page changes under Sec. 1.121(a), liberalization of
the substitute specification requirements is desirable. The requirement
for a lack of new matter statement being verified would be deleted. See
comments to Sec. 1.4(d).
Paragraph (c) of Sec. 1.125 would clarify that a substitute
specification is to be submitted without markings as to amended
material.
Paragraph (d) of Sec. 1.125 would not permit a substitute
specification in reissue or reexamination proceedings as markings for
changes from the patent are required therein.
Section 1.133, paragraph (b), would be amended by replacement of
``response'' with ``reply'' in accordance with the proposed change to
Sec. 1.111.
Section 1.134 would be amended by replacement of ``response'' with
``reply'' in accordance with the proposed change to Sec. 1.111.
Section 1.135, paragraphs (a) and (c), would be amended by
replacement of ``response'' with ``reply'' in accordance with the
proposed change to Sec. 1.111. Paragraph (b) is proposed to be 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, paragraph (c), is proposed to be 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 would replace the current practice whereby
applicant may be given an opportunity to supply the omission through
the setting of a ``time limit'' of one month that is not currently
extendable. Generally, a new one month shortened statutory time period
would be utilized 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 would
result in the date of abandonment (when no further reply is filed)
being the expiration of the new time period rather than, at present,
the date of expiration of the period of reply set in the original
Office action for which an incomplete reply was filed. Thus, the
proposed amendment to paragraph (c) of Sec. 1.135 would permit the
refiling of a continuing application as an alternative to completing
the reply, whereas the current rule only permits an applicant to
complete the reply that was held to be incomplete.
Section 1.135, paragraph (c), is also proposed to be 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, paragraph (a)(1), is proposed to be amended to
recite the availability of a maximum of five (5) rather than four (4)
months as an extension of time when only a one (1) month or 30 day
shortened statutory period or a non-statutory period for reply is set.
Paragraph (a)(1) is would also be amended by replacement of ``respond''
with ``reply'' in accordance with the proposed change to Sec. 1.111.
Section 1.136, paragraph (a)(2), would be amended by replacement of
``respond'' with ``reply'' in accordance with the proposed change to
Sec. 1.111 and other clarification changes.
Section 1.136 is proposed to be amended by addition of paragraph
(a)(3) that would now provide 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. Currently, 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 times 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 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 thereby providing ready future identification of these
authorizations.
Clarifying language is proposed for Sec. 1.136(a)(3) to reflect
current practice that general authorizations to charge fees are
effective to meet the requirement for the extension of time fee for
responses filed concurrent or subsequent to the authorization. However,
a general authorization to charge additional fees does not represent a
petition for an extension of time, which petition must be separately
requested.
Section 1.137 is proposed to be amended by moving language
presently codified, elsewhere 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 paragraphs (b)-(f)), (3) to timely pay the issue fee for a
utility or plant application (Sec. 1.316 paragraphs (b)-(f)), or to
timely pay the full amount of the issue fee (Sec. 1.317 paragraphs (b)-
(f)) (lapsed patents). Cites in parentheses reference where subject
matter is contained in current rules.
Section 1.137(a), as proposed, would further move into paragraph
(a)(3) the requirement that a petition thereunder be ``promptly filed
after the applicant is notified of, or otherwise becomes aware of, the
abandonment.'' 35 U.S.C. 133 requires that ``it be shown * * * that
such delay was unavoidable.'' This
[[Page 49833]]
requirement is regarded as requiring not only a showing that the delay
which resulted in the abandonment of the application was unavoidable,
but also a showing of unavoidable delay from the time an applicant
becomes aware of the abandonment of the application 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. An applicant seeking to revive an ``unavoidably'' abandoned
application is expected to 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). As
such, the placement of the requirement that a petition pursuant to
Sec. 1.137(a) be filed promptly upon becoming notified, or otherwise
becoming aware, of the abandonment of the application is appropriately
located in paragraph (a)(3), since Sec. 1.137(a)(3) includes the
requirement for a showing of unavoidable delay.
The requirement that an applicant seeking to revive an application
as ``unavoidably'' abandoned ``promptly'' file a petition under
Sec. 1.137 is regarded as a requirement that a petition pursuant to
Sec. 1.137(a) be filed without delay upon the applicant or his or her
representative being notified of, or otherwise becoming aware of, the
abandonment. Thus, under the current and proposed practice, the failure
to file a petition under Sec. 1.137(a) within three months of the date
the applicant or his or her representative is notified of, or otherwise
becomes aware of, the abandonment would generally be regarded as a
failure to ``promptly'' file a petition pursuant to Sec. 1.137.
Providing a time period based upon the date of abandonment during
which a petition pursuant to Sec. 1.137(b) must be filed to be timely,
but providing no comparable time period within which a petition
pursuant to Sec. 1.137(a) must be filed to be timely, results in the
misapplication of Sec. 1.137 on the part of practitioners, which in
turn results in an inordinate administrative burden to the Office. The
Office is proposing to either: (1) Eliminate the time period
requirement for filing a petition pursuant to Sec. 1.137(b), or (2)
provide comparable time period requirements for filing either a
petition pursuant to Sec. 1.137(a) and/or Sec. 1.137(b), which time
period will be based upon the date of the first Office notification
that the application had become abandoned or that the patent had
lapsed. Interested persons are advised to comment on each of these
proposals, since, depending upon further consideration by the Office
and the comments received in response to this notice of proposed
rulemaking, either proposal may be adopted in the final rule.
Providing the period of ``within one year of the date on which the
application became abandoned'' as the period during which a petition
under Sec. 1.137(b) may be timely filed has had the undesirable effect
of inducing applicants, or their representatives, to delay the filing
of a petition under Sec. 1.137(b) until the end of this one year
period. This deliberate delay in filing a petition under Sec. 1.137(b),
or use of this one year period as an extension of time, is considered
an abuse of Sec. 1.137(b). See In re Application of S., 8 USPQ2d 1630,
1632 (Comm'r Pats 1988). In addition, Sec. 1.137(b) was recently
amended to require that any petition thereunder include a statement
that the delay (i.e., the entire delay), and not merely the
abandonment, was unintentional. See Final Rule, ``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 Patent and Trademark Office Official Gazette at 1154 Off. Gaz.
Pat Office 4 (September 14, 1993). As such, any intentional delay in
filing a petition under Sec. 1.137(b) is prohibited by the current
terms of the rule.
Under current rules, in instances in which an applicant, or his or
her representative, intentionally delays the filing of a petition under
Sec. 1.137(b) until the end of this one year period, but files a
petition under Sec. 1.137(b) within this one year period, the petition
is timely under Sec. 1.137(b)(4), but the statement that ``the delay
was unintentional'' is not appropriate.
In instances in which the filing of a petition under Sec. 1.137(b)
is intentionally delayed until the end of this one year period, and the
applicant, or his or her representative, miscalculates the actual date
of abandonment, or otherwise misdockets the end of this one year
period, the statement that ``the delay was unintentional'' is likewise
not appropriate, but the petition is also barred by the terms of the
rule. In addition, subsequent petitions under Sec. 1.137(a) are,
regardless of the original cause of the abandonment, barred due to the
applicant's failure to cause a petition under Sec. 1.137(a) to be
``promptly filed after the applicant is notified of, or otherwise
becomes aware of, the abandonment.'' See Application of S., 8 USPQ2d at
1632.
Where the applicant deliberately permits an application to become
abandoned (e.g., due to a conclusion that the claims are unpatentable
(e.g., 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 a deliberately chosen course of action, and the resulting
delay cannot be considered ``unintentional'' within the meaning of 37
CFR 1.137(b). See In re Application of G., 11 USPQ2d 1378, 1380 (Comm'r
Pat. 1989). 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 37 CFR
1.137. The correctness or propriety of the rejection, or other
objection, requirement, or decision, by the Office, the appropriateness
of the applicant's decision to abandon the application or to not seek
or persist in seeking revival, or 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, are
immaterial to such intentional delay caused by the deliberate course of
action chosen by the applicant.
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 In re
Maldague, 10 USPQ2d 1477, 1478 (Comm'r Pat. 1988).
Proposed Elimination of the Time Period Requirement for Filing a
Petition Pursuant to Sec. 1.137(b)
Under this proposal, an intentional delay in the filing of a
petition under Sec. 1.137(b) will not result in an untimely petition
pursuant to Sec. 1.137(b). The statement that ``the delay was
unintentional,'' however, will continue to be inappropriate. That is,
where there is an intentional delay in the filing of a petition under
Sec. 1.137(b), the statement that ``the delay was unintentional'' will
continue to be inappropriate (i.e., the applicant, or his or her
representative cannot properly make this statement, and thus cannot
properly request revival of the application), but Sec. 1.137(b) would
no longer include an additional time period requirement. It is
anticipated that the effects of prosecution delay due to abandonment on
patent term under Public Law 103-465, and the proposed
[[Page 49834]]
changes to Sec. 1.137(c), will eliminate any incentive to intentionally
delay the revival of an abandoned application.
An applicant, assignee, or his or her representative, desiring the
revival of an application that has inadvertently or unintentionally
become abandoned is expected to act without intentional delay in
seeking revival of the application. The Office does not question
whether there has been an intentional or otherwise impermissible delay
when a petition pursuant to Sec. 1.137 is filed within three months of
the date the applicant is first notified by the Office that the
application is abandoned. Where, however, there is a greater delay
between the date the applicant is first notified by the Office that the
application is abandoned and the filing of a petition pursuant to
Sec. 1.137(b), the Office may raise the question as to whether the
delay was unintentional, and may require more than a mere statement
that the delay was unintentional. The Office may question whether the
delay was unintentional in instances in which an applicant fails to
timely seek reconsideration of a decision refusing to revive an
abandoned application (see Sec. 1.137(d)).
Regardless of whether the time period requirement in Sec. 1.137(b)
is eliminated, applicants seeking revival of an abandoned application
are advised to file a petition pursuant to Sec. 1.137 within three
months of first notification that the application is abandoned to avoid
the question of intentional delay being raised by the Office or third
parties seeking to challenge any patent issuing from the application.
While this proposal would permit revival pursuant to Sec. 1.137(b)
without regard to the period of abandonment, Sec. 1.137(a) currently
permits revival pursuant thereto without regard to the period of
abandonment. In addition, the Office currently entertains petitions
pursuant to Sec. 1.183, albeit under strictly limited conditions, to
waive the time period requirement in Sec. 1.137(b). Since an
application may currently be revived pursuant to Sec. 1.137 without
regard to the period of abandonment, any current reliance upon the
period of abandonment to ensure that the application will never issue
as a patent is misplaced. Thus, the proposed elimination of the time
period requirement in Sec. 1.137(b) would not significantly decrease
the relationship between the period of abandonment of an application
and the likelihood that such application would ever issue as a patent.
In the event that the proposed elimination of the time period
requirement for filing a petition pursuant to Sec. 1.137(b) is adopted,
public comment is also requested on the application of this rule change
to applications that were abandoned prior to the effective date of this
rule change. This provision could be made effective as to petitions
filed on or after the effective date of the rule change, which would
permit the revival pursuant to Sec. 1.137(b) of applications abandoned
for extended periods of time, provided that the entire delay was
unintentional. This provision could also be made effective as to
applications abandoned on or after the effective date, with the
provisions of current Sec. 1.137(b) being applied to applications
abandoned prior to the effective date of the rule change. This
provision could also be made effective as to applications abandoned
within and/or having a petition to revive filed within a specified
period preceding the effective date of the rule change.
Proposed Comparable Time Period Requirements Each of Secs. 1.137 (a)
and (b) Based Upon the Date of the First Office Notification That the
Application Had Become Abandoned or That the Patent Had Lapsed
The Office is also considering amending each of Secs. 1.137 (a) and
(b) to include an express requirement that a petition thereunder be
filed within a time certain. Specifically, the Office is also
considering amending Sec. 1.137(a) to include the express requirement
that a petition thereunder be filed within three months of the date of
the first Office notification that the application had become abandoned
or that the patent had lapsed and amending Sec. 1.137(b) to include the
requirement that a petition thereunder be filed within three months of
the date of the first Office notification that the application had
become abandoned or that the patent had lapsed, or within three months
of the date of the first decision on a timely petition pursuant to
Sec. 1.137(a).
The ``promptly filed'' requirement in Sec. 1.137(a) is the subject
of various interpretations by applicants seeking revival pursuant to
Sec. 1.137(a). To avoid misunderstandings as to the timeliness with
which the Office expects an applicant seeking revival pursuant to
Sec. 1.137(a) to file a petition thereunder, the Office is considering
amending Sec. 1.137(a) to include the express requirement that a
petition thereunder be filed within a time certain. Providing a period
during which a timely petition pursuant to Sec. 1.137 (a) and/or (b)
may be filed based upon the date of the first Office notification that
the application had become abandoned or that the patent had lapsed,
rather than the date of abandonment or patent lapse, is considered a
better measure of timeliness. In addition, providing such a period will
reduce uncertainty as to the expiration of the period during which a
timely petition pursuant to Sec. 1.137(b), as well as Sec. 1.137(a),
may be filed.
Therefore, the Office is also considering basing the period during
which a timely petition under Sec. 1.137 (b), as well as Sec. 1.137(a),
may be filed on the date of notification of the abandonment, rather
than the date of abandonment, and considers that a period of within
three months of the date of the first Office notification that the
application had become abandoned or that the patent had lapsed to be
the appropriate period.
Under the appropriate circumstances, petitions under Sec. 1.183 to
waive any time period requirement in Secs. 1.137(a) and/or (b) would be
available. Waiver of any requirement of Sec. 1.137 will, in accordance
with Sec. 1.183, be strictly limited to an ``extraordinary situation''
in which ``justice requires'' such waiver.
Section 1.137(a)(1), as proposed, would replace the phrase ``a
proposed response to continue prosecution of that application, or the
filing of a continuing application, unless either has been previously
filed'' with ``accompanied by the required reply, unless previously
filed. In a nonprovisional application abandoned for failure to
prosecute, the proposed reply requirement may be met by the filing of a
continuing application. In an abandoned application or a lapsed patent,
for failure to pay any portion of the required issue fee, the proposed
reply must be the issue fee or any outstanding balance thereof.''
Section 1.137(b)(1), as proposed, would likewise replace the phrase
``Accompanied by a proposed response to continue prosecution of that
application, or filing of a continuing application, unless either has
been previously filed'' with ``accompanied by the required reply,
unless previously filed. In a nonprovisional application abandoned for
failure to prosecute, the proposed reply requirement may be met by the
filing of a continuing application. In an abandoned application or a
lapsed patent, for failure to pay any portion of the required issue
fee, the proposed reply must be the issue fee or any outstanding
balance thereof.''
While the revival of applications abandoned for failure to timely
prosecute and for failure to timely pay the issue fee are proposed to
be 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
[[Page 49835]]
timely submit the issue fee are mutually exclusive. See Brenner v.
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 any portion of the required issue fee.
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. The phrase ``for failure to
pay any portion of the required issue fee'' 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 proposed changes to Secs. 1.137 (a)(1) and (b)(1) are
necessary to incorporate into Sec. 1.137 the revival of abandoned
applications and lapsed patents for the failure to timely reply to an
Office requirement in a provisional application, to timely pay the
issue fee, or to timely pay the full amount of the issue fee.
Sections 1.137 (a) and (b), as proposed, would each include a new
paragraph, paragraphs (a)(4) and (b)(4), respectively, providing that
any petition thereunder must be accompanied by any terminal disclaimer
(and fee as set forth in Sec. 1.20(d)) required pursuant to
Sec. 1.137(c), to include in Secs. 1.137 (a) and (b) an explicit
reference to the terminal disclaimer requirement in Sec. 1.137(c).
Section 1.137(c), as proposed, would change the phrase ``any
petition pursuant to paragraph (a) of this section'' to ``any petition
pursuant to this section.'' As the period for the timely filing of a
petition under Sec. 1.137(b) would no longer be based upon the period
of abandonment, administrative convenience no longer justifies not
requiring, for all design applications and all other nonprovisional
utility applications filed prior to June 8, 1995, a terminal disclaimer
under Sec. 1.137(c) for all petitions pursuant to Sec. 1.137.
In addition, the phrase ``not filed within six months of the date
of abandonment of the application'' is proposed to be removed from
Sec. 1.137(c). The only justification for the current six month
limitation on the terminal disclaimer requirement in Sec. 1.137(c) is
administrative convenience in treating a petition pursuant to
Sec. 1.137(a) filed within six months of the date of abandonment. Since
the date of abandonment is miscalculated in a significant number of
instances, this provision of Sec. 1.137(c) leads to errors in
determining when a terminal disclaimer is required pursuant to
Sec. 1.137(c), and thus leads to delays in continuing prosecution of
the abandoned application. In any event, administrative convenience is
no longer considered an adequate justification for the effective
different treatment that would result by operation of Pub. L. 103-465
of: (1) Applications filed on or after June 8, 1995, except for design
applications, and (2) applications filed prior to June 8, 1995 and all
design applications.
Section 1.137(d), as proposed, would change ``application'' to
``abandoned application or lapsed patent'' to incorporate into
Sec. 1.137 the revival of lapsed patents.
Section 1.137(e), as proposed, would provide that the time periods
set forth in Sec. 1.137 may be extended under the provisions of
Sec. 1.136.
Section 1.137(f), as proposed, will 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(f), as
proposed, will clearly indicate that ``[u]nder no circumstances will a
provisional application be regarded as pending after twelve months from
its filing date.'' Sections 1.139 (a) and (b) each currently provide
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.
Section 1.139 is proposed to be removed and reserved and its
subject matter added to Sec. 1.137.
Section 1.142 would be amended by replacement of ``response'' with
``reply'' in accordance with the proposed change to Sec. 1.111.
Section 1.144 is proposed to be amended for clarification purposes.
Section 1.146 is proposed to be amended for clarification purposes.
Section 1.152 is proposed to be amended by removing the prohibition
against color drawings and color photographs in design applications.
Section 1.152 would be 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 would be 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, first paragraph, it is only
necessary that the design as embodied in the article be fully disclosed
and not the article itself. The term ``must'' would be replaced by the
term ``should'' to allow for latitude in the illustration of articles
whose configuration may be understood without surface shading.
Clarification language would be added to note that the use of solid
black surfaces would be 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.
Section 1.154 paragraph (a) would be 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
[[Page 49836]]
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.
Sections 1.155 (b) through (f) are proposed to be removed in view
of the proposed amendments to Sec. 1.137.
Section 1.163 is proposed to be amended to remove an unnecessary
and outmoded reference to a ``legible carbon copy of the original''
specification for plant applications.
Section 1.165 is proposed to be amended by removing a reference to
the artistic and competent execution of plant patent drawings which is
unnecessary in view of the reference to Sec. 1.84.
Section 1.167 is proposed to be amended by removing and reserving
paragraph (b) as unnecessary in view of Sec. 1.132.
Section 1.171 would 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 Sec. 1.172(a)
obviates the need for a title report and fee therefor. Section 1.171 is
also proposed to be 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.
Section 1.172 is proposed to be amended to require that all
assignees establish their ownership interest by submission of evidence
of the chain of title or by specifying where such evidence is recorded
in the Office.
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 proposed to be amended to remove the requirement for
a showing of a lack of deceptive intent based on facts and
circumstances. 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 current requirement in 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 proposed to be deleted. This
would apply to the initially identified error(s), under paragraph (a),
and any subsequently identified error(s) under paragraph (b). An
initial reissue oath or declaration would be required to be filed
pursuant to Sec. 1.175(a) 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. 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
would not be retained.
Paragraph (b)(1) of Sec. 1.175 would require 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 paragraphs (a) and (b) of this section 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 would not
be retained.
A supplemental oath or declaration under paragraph (b)(1) would be
required to 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. A supplemental oath or declaration
under paragraph (b) 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) would provide 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 in Sec. 1.175(a)(6)
would be removed as the exact language would not be required. Section
1.175(a)(7), referencing Sec. 1.56, is proposed to be 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). Section 1.175(b) noting the ability
of applicant to file affidavits or declarations of others and the
ability of the examiner to require additional information would be
deleted as unnecessary in view of Sec. 1.132 and 35 U.S.C 132. A
reference to Sec. 1.53(b) would be inserted in newly proposed
Sec. 1.175(c) 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.
37 CFR 1.176 would be amended to permit the Office to require
restriction between claims added in a reissue application and the
original patent claims, where the claims added in the reissue
application are separate and distinct from the original patent claims.
[[Page 49837]]
This change is provided to deal with the added examination burden which
results when new inventions are added via the reissue application. The
Office would continue to not require restriction between original
claims of the patent, i.e., between claims that were in the patent
prior to filing the reissue application. In order for restriction to be
required between the original patent claims and the newly added claims,
the newly added claims must be separate and distinct from the original
patent claims. Restriction between multiple inventions in the newly
added claims would also be possible provided the newly added claims are
drawn towards separate and distinct inventions.
Section 1.177 is 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.
Section 1.177 is proposed to be further amended by creating
paragraphs (a) through (d) to clarify when multiple reissue patents may
be issued and the conditions that applicant must comply with in order
to have the Commissioner exercise his or her discretion and authorize
issuance of multiple reissue patents. The Commissioner has discretion
pursuant 35 U.S.C. 251 to permit the issuance of multiple reissue
patents for distinct and separate parts of the thing patented. The
Commissioner will exercise his or her statutory discretion under the
limited conditions set forth in paragraph (a) of this section. Absent
compliance with the provisions of paragraph (a) of this section, as
defined by paragraphs (b) and (c) of this section, the Commissioner
will not exercise his or her discretion under the statute and will not
permit the issuance of multiple reissue applications, as is set forth
in paragraph (d) of this section.
The conditions for the Commissioner to exercise his or her
discretion and permit multiple reissue patents to be issued for
distinct and separate parts of the thing patented set forth in
paragraph (a) of this section are as follows: (1) Copending reissue
applications for distinct and separate parts of the thing patented have
been filed, (2) Applicant has filed in each copending reissue
application a timely demand by way of petition for multiple reissue
patents, (3) The required filing and issue fees for each copending
reissue application have been paid, and (4) The petition for multiple
reissue patents is granted prior to issuance of a reissue patent on any
of the copending reissue applications.
Paragraph (b) of Sec. 1.177 would set forth the requirements of the
petition provided for in paragraph (a)(2) of this section, which
requirements are: (1) A request for the issuance of multiple reissue
patents for distinct and separate parts of the thing patented, (2) The
petition fee pursuant to Sec. 1.17(i), (3) An identification of the
other copending reissue application(s), (4) A statement that the
inventions as claimed in the copending reissue applications are
distinct and separate parts of the thing patented, and (5) A showing
sufficient to establish to the satisfaction of the Commissioner that
the claimed subject matter of the thing patented is in fact being
divided into distinct and separate parts.
The ``distinct and separate parts of the thing patented'' means two
things: (1) That the thing patented is being proposed to be divided
into separate parts, i.e., the claims in the original patent are being
separated into different reissue applications, and (2) that the divided
claims are distinct as set forth in MPEP 802.01.
Items (4) and (5) are intended to cover those situations where the
Commissioner can and has determined, based on material and/or
information supplied by applicant, or otherwise, that the subject
matter of the thing patented is in fact being separated into parts that
are distinct.
The Commissioner intends to delegate the authority for decisions on
the petitions required under this section to the Group Directors of the
groups where the copending reissue applications are pending.
Paragraph (c) of Sec. 1.177 would define the timeliness
requirements for submission of the petitions set forth in paragraph
(a)(1) of this section. When the copending reissue applications are
filed at the same time, the petitions must be filed no later than the
earliest submission of the reissue oath or declaration under
Sec. 1.175(a) for any of the copending reissue applications. When the
copending reissue applications are filed at different times, the
petitions must be filed no later than the earliest of: (1) Payment of
the issue fee for any of the copending reissue applications, or (2)
submission of the reissue oath or declaration under Sec. 1.175 in the
later filed copending reissue application.
Paragraph (d) of Sec. 1.177 sets forth that the Commissioner will
not permit multiple reissue patents to be issued if the requirements of
this section are not met.
It is contemplated that where the requirements of paragraphs (a)
and (b) of Sec. 1.177 are capable of being perfected, the Office will
give a one-month time period for perfection, with extensions of time
available under Sec. 1.136(a). Where a first copending reissue
application has issued, however, perfection would not be possible. It
is not the intent of the Commissioner to provide any possibility of
review by way of appeal to the Board of Patent Appeals and
Interferences from his or her determination that the requirements of
this section have not been complied with. Review of determinations on
questions as to whether it has been established that the copending
reissue applications are for distinct and separate parts of the thing
patented will be by way of petition under Sec. 1.181(a)(3) and
subsequently to court as to whether the Commissioner, or his or her
designate, has properly exercised the discretion provided by 35 U.S.C.
251 as is now proposed to be implemented in Sec. 1.177.
The proposed changes are not intended to affect the type of errors
that are or are not appropriate for correction under 35 U.S.C. 251,
e.g., a patent granted on elected claims will not be considered to be
partially inoperative by reason of claiming less than they had a right
to claim and applicant's failure to timely file a divisional
application is not considered to be the type of error that can be
corrected by a reissue. MPEP 1402 and 1450.
Section 1.177 is also proposed to be clarified by a new more
descriptive title in view of the substantive amendments and a reference
to the statutory authority.
Section 1.181 is proposed to be amended by removing paragraphs (d),
(e) and (g) as unnecessary and at most representing internal
instructions.
Section 1.182 is proposed to be 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 section would
have removed as unnecessary a statement that a decision on a petition
thereunder will be communicated to interested parties in writing.
Section 1.184 is proposed to be removed and reserved as
representing internal instructions.
Section 1.191 would be amended, to provide for an appeal only after
the claims of an applicant or a patent owner of a patent under
reexamination are twice rejected, by deletion of appeal after having
received a final rejection. The reference to a final rejection is
deemed unnecessary in view of the proposed amendment to Sec. 1.113 by
addition of paragraph (c) prohibiting a first action final rejection.
An appeal
[[Page 49838]]
would not then be appropriate in any application including reissue and
continued prosecution (Sec. 1.53(b)(3)) applications or in a patent
under reexamination unless that application or that patent under
reexamination in which an appeal is filed has been twice rejected,
particularly in view of the elimination of first action final
rejections. A second rejection need not be a final rejection for an
appeal to be taken as is currently the practice. However, an applicant
or patent owner of a patent under reexamination would not be able to
appeal after a first action rejection in a continuation, divisional or
continued prosecution application as no first action would be a final
rejection and the only basis to appeal would be that the claims of an
applicant or patent owner of a patent under reexamination have been
twice rejected in the same application or the same patent under
reexamination.
Section 1.191, paragraph (a), would be amended for conformance with
the language of 35 U.S.C. 134 by replacement of ``the claims of which
have'' by ``whose claims have.'' Section 1.191 would also be amended by
replacement of ``response'' with ``reply'' in accordance with the
proposed change to Sec. 1.111.
Sections 1.192, 1.193, 1.194, 1.196, and 1.197 are proposed to be
amended to change ``the appellant'' to ``appellant'' for consistency.
Paragraph (a) of Sec. 1.192 would be amended by replacement of
``response'' with ``reply'' in accordance with the proposed change to
Sec. 1.111.
Section 1.193 would be amended in its title by addition of ``and
substitute brief'' to more accurately reflect the section's contents.
Section 1.193 would also be 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) would retain the subject
matter of current paragraph (a). Paragraph (a)(2) would specifically
prohibit the inclusion of a new ground of rejection in an examiner's
answer.
Paragraph (b)(1) would remove the current discretion under existing
paragraph (b) of this section of the examiner to enter a new ground of
rejection in an examiner's answer responding to an appeal in
conformance with proposed paragraph (a)(2). Paragraph (b)(1) would
require the examiner to reopen prosecution to enter any new ground of
rejection. Reopening of prosecution would require entering of any
previously submitted paper that has been refused entry.
Paragraph (b)(1) of Sec. 1.193 would also provide appellant with a
right to file a substitute appeal brief in compliance with Sec. 1.192
in reply to an examiner's answer where the right to file a substitute
appeal brief would not be dependent upon a new point of argument being
present in the examiner's answer. The current practice of permitting
reply briefs based solely on a finding of a new point of argument, as
set forth in current paragraph (b), would be 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 substitute appeal brief the examiner would either acknowledge its
receipt and entry or reopen prosecution to respond to any new issues
raised in the substitute appeal 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
substitute appeal brief in response to the reply by the examiner to the
Board's inquiry, which reply would be by way of a substitute examiner's
answer. The use of substitute appeal briefs and substitute examiner's
answers is intended to provide the Board with a single most current
paper from each party.
Paragraph (b)(2) of Sec. 1.193 would provide that if appellant
desires that the appeal process be reinstated in reply to the
examiner's reopening of prosecution under paragraph (b)(1) of this
section, appellant would be able to file a new appeal brief under
Sec. 1.192 and a request to reinstate the appeal. Amendments,
affidavits or other new evidence would not be entered if submitted with
a request to reinstate the appeal. Reinstatement of the appeal would
constitute a new notice of appeal but no additional appeal fees would
be required, since such fees have been previously paid. The intent of
the rule change is to give appellant (rather than the examiner) the
option to continue the appeal if desired (particularly under a 20 year
term), or to continue prosecution before the examiner in the face of a
new ground of rejection. Should an appeal brief be elected as the
response to the examiner reopening prosecution based on a new ground of
rejection under paragraph (b)(1) of this section, the examiner may
under paragraph (a)(1) of this section issue an examiner's answer.
Section 1.194, paragraph (b), is proposed to be amended to provide
that a request for an oral hearing must be filed in a separate paper.
Section 1.194, paragraph (c), is proposed to be amended to provide
that appellant will be notified when a requested oral hearing is
unnecessary, e.g., a remand is required.
Section 1.196, paragraphs (b) and (d), are proposed to be combined
by amending paragraph (b) to specifically provide in paragraph (b) 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 paragraph (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 of Patent Appeals and Interferences 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 of Patent Appeals and Interferences rather
than waiting for the application to be forwarded and acted upon by the
examiner. The current practice, that the examiner is not bound by the
rejection should appellant elect to proceed under paragraph (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
proposed to be changed. A period of two months would now explicitly be
set forth for a reply to a decision by the Board of Patent Appeals and
Interferences containing a new ground of rejection pursuant to
Sec. 1.196(b), which would alter the one month now set forth for
replies to recommended rejections of previously allowed claims. MPEP
1214.01, page 1200-28. Extensions of time would 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 paragraph (b)(2) of Sec. 1.196 would be
amended to clarify that appellants do not have to both appeal and file
request for reconsideration where only a reconsideration of a portion
of the decision is sought in that a decision on a request for
reconsideration will incorporate the earlier decision for purposes of
appeal of the earlier decision for which only a partial request for
reconsideration may have been filed. Additionally it is clarified that
decisions on reconsideration are final unless noted otherwise in the
decision in that under some circumstances it may not be appropriate to
make a decision on reconsideration final as is currently automatically
provided for.
Section 1.196 would have a new paragraph (d) providing the Board of
Patent Appeals and Interferences with explicit authority to have an
appellant
[[Page 49839]]
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). Paragraph (d)(1) would
provide that an appellant may be required to address any matter that is
deemed appropriate for a reasoned decision on the pending appeal. Such
matters would 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, and
(3) The availability of particular test data that would be
persuasive in rebutting a ground of rejection.
Paragraph (d)(2) would provide that appellant would be given a time
limit within which to reply to any inquiry under paragraph (d)(1) of
this section. Time limits, unlike time periods for reply, are not
extendable under Sec. 1.136(a).
Section 1.197, paragraph (b), is proposed to be amended to provide
a period of two months, rather than the one month currently provided,
for the single request for reconsideration or modification of the Board
decision as provided for in Sec. 1.197(b).
Section 1.291, paragraph (c), is proposed to be 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 returned unless it is shown that
the argument relates to a new issue that could not have been earlier
raised. MPEP 1907(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 proposed change to Sec. 1.291(a) of this section in
the 18-Month Publication Notice of Proposed Rulemaking, discussed
supra, e.g., at Sec. 1.62 of the preamble, limiting the filing of
protests to the issuance of patents to particular time periods (none
after the notice of allowance is mailed, none after two months from
publication or the filing of protests with a fee during the two-month
period from publication where a notice of allowance has not been
mailed), the restriction of protests by number is deemed unnecessary
and is recognized as ineffective in that the current rule may allow for
more than one protest to be filed on behalf of a party.
Section 1.291 paragraph (c) would be amended by replacement of
``response'' with ``reply'' in accordance with the proposed change to
Sec. 1.111.
Section 1.294 paragraph (b) would be amended by replacement of
``response'' with ``reply'' in accordance with the proposed change to
Sec. 1.111.
Section 1.304(a)(1) is proposed to be amended to replace
``consideration'' by ``reconsideration,'' an error that resulted from
mistyping when it first appeared in the Federal Register.
Section 1.312, paragraph (b), is proposed to have a reference to
Sec. 1.175(b) added in view of the proposed change in Sec. 1.175(b)
referencing Sec. 1.312(b).
Section 1.313 is proposed to be amended by 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. 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.
Sections 1.316 (b) through (f) are proposed to be removed as they
would be combined in proposed Sec. 1.137.
Sections 1.317 (b) through (f) are proposed to be removed as they
would be combined in proposed Sec. 1.137.
Section 1.318 is proposed to be removed and reserved as being an
internal Office instruction.
Section 1.324 is proposed to be amended by creating paragraphs (a)
and (b). The requirement for factual showings to establish a lack of
deceptive intent would be deleted, with a statement to that effect
being sufficient, paragraph (a).
As Office practice (MPEP 1481) is to require the same type and
character of proof of facts as in petitions under Sec. 1.48(a), a
showing of diligence proposed to be deleted in Sec. 1.48 would not be
continued in either Sec. 1.48 or Sec. 1.324, which currently follows
the requirements of Sec. 1.48. The applicability of a rejection under
35 U.S.C. 102(f)/(g) against a patent with the wrong inventorship set
forth therein is deemed to provide sufficient motivation for prompt
correction of the inventorship without the need for a separate
requirement for diligence.
The parties set forth in 35 U.S.C. 256 are interpreted to be only
the person named as an inventor or not named as an inventor through
error. Accordingly, Sec. 1.324 is proposed to be amended, paragraph
(b)(1), 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 would be 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 would require 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) has been added.
Paragraph (b)(4) of Sec. 1.324 states the requirement for a
petition fee as set forth in Sec. 1.20(b).
Section 1.325 relating to mistakes not corrected is proposed to be
removed and reserved as unnecessary in that mistakes cannot be
corrected unless a basis for their correction is found.
Sections 1.351 and 1.352 are proposed to be removed and reserved as
unnecessary in that they are internal instructions.
Section 1.366, paragraph (b), would have the term ``certificate''
removed as unnecessary. Paragraph (c) would be clarified by changing
``serial number'' to ``application number'' which consists of the
serial number and the series code (e.g., ``08/''). Paragraph (d) would
have the suggested requirements for the patent issue date and the
application filing date removed as unnecessary in that the patent
number is sufficient to identify the file and the change parallels an
intended deletion of these dates from forms PTO/SB/45 and PTO/SB/47.
The term ``serial'' would be removed from paragraph (d).
Section 1.377, paragraph (c), would be amended to remove the
requirement
[[Page 49840]]
that the petition be verified in accordance with the proposed change to
Sec. 1.4(d)(2).
Section 1.378, paragraph (d), would be amended to remove the
requirement that the statement be verified in accordance with the
proposed change to Sec. 1.4(d)(2).
Section 1.425 would be amended by removing paragraph (a) and its
requirement for: Proof of the pertinent facts, which relates to the
lack of cooperation or unavailability of the inventor for which status
is sought and by deleting paragraph (b) and its requirements for: Proof
of the pertinent facts, the 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 would be removed. The current requirements are thought to be
unnecessary in view of the need for submission of the same information
in a petition under 37 CFR 1.47 during the national stage. The
paragraph to be added would parallel the requirement in PCT Rule 4.15
for a statement explaining to the satisfaction of the Commissioner the
lack of the signature concerned.
Section 1.484, paragraphs (d) through (f), would be amended by
replacement of ``response'' and ``respond'' with ``reply'' in
accordance with the proposed change to Sec. 1.111.
Section 1.485 paragraph (a) would be amended by replacement of
``response'' with ``reply'' in accordance with the proposed change to
Sec. 1.111.
Section 1.488, paragraph (b), would be amended by replacement of
``response'' with ``reply'' in accordance with the proposed change to
Sec. 1.111.
Section 1.492 proposed to be amended to add new paragraph (g).
Section 1.494, paragraph (c), would be amended by replacement of
``response'' with ``reply'' in accordance with the proposed change to
Sec. 1.111.
Section 1.495, paragraph (c)(2), would be amended by replacement of
``response'' with ``reply'' in accordance with the proposed change to
Sec. 1.111.
Section 1.510, paragraph (e), would be amended to replace a
reference to Sec. 1.121(f), in view of it proposed removal, with a
reference to Sec. 1.530(d) in view of its proposed revision.
Section 1.530 the title and paragraph (a) would be amended by
replacement of ``amendment'' and ``response'' with ``reply'' in
accordance with the proposed change to Sec. 1.111.
Section 1.530, paragraph (d), would be replaced by paragraphs
(d)(1) through (d)(6) removing the reference to Sec. 1.121(f) in
accordance with the proposed deletion of Sec. 1.121(f). The manner of
making amendments in reexamination proceeding under the current
reexamination practice is governed by Sec. 1.530 (d)(1) through (d)(6).
Paragraph (d) would apply to proposed amendments in reexamination
proceedings. Paragraph (d)(1) would be directed to the manner of
proposing amendments in the specification other than in the claims.
Paragraph (d)(1)(i) would require the precise point to be indicated
where a proposed amendment is to be made. Paragraph (d)(1)(ii) would
require that all amendments including deletions be made by submission
of a copy of the rewritten paragraph(s) with markings. A change in one
sentence, paragraph, or page that results in only format changes to
other pages not being amended are not to be submitted. Paragraph
(d)(1)(iii) would require proposed amendments to the specification to
be made by rewritten relative to the patent specification and not
relative to a previous proposed amendment. Paragraph (d)(1)(iv) would
define the markings set forth in paragraph (d)(1)(ii).
Paragraph (d)(2) of Sec. 1.530 would relate to the manner of
proposing amendment of the claims in reexamination proceedings.
Paragraph (d)(2)(i)(A) would require that a proposed amendment include
the entire text of each patent claim which is proposed to be amended,
but not all pending claims, such as patent claims that have not been
proposed to be amended. Additionally, provision would be made for the
cancellation of patent or of a proposed claim by a direction to cancel
without the need for marking by brackets. Compare with deletion of
claims in reissue applications where only patent claims and not added
claims may be cancelled by direction, paragraph (b)(2)(i)(A). Paragraph
(b)(2)(i)(B) would prohibit the renumbering of the patent claims and
require that any proposed added claims follow the number of the highest
numbered patent claim. Paragraph (b)(2)(i)(C) would identify the type
of markings required by paragraph (d)(2)(i)(A), single underlining for
added material and single brackets for material deleted.
Paragraph (d)(2)(ii) would require the patent owner to set forth
the status of all patent claims, of all currently proposed claims, and
of all previously proposed claims that are no longer being proposed as
of the date of submission of each proposed amendment. Compare with
Sec. 1.121(b)(2)(ii), which does not require the status of patent
claims that were not amended or of added claims that were cancelled.
Paragraph (d)(2)(iii) of Sec. 1.530 would require an explanation of
the support in the disclosure for any proposed first-time amendments to
the claims on pages separate from the amendments along with any
additional comments. The absence of an explanation would result in an
incomplete reply, 35 U.S.C. 135.
Paragraph (d)(2)(iv) of Sec. 1.530 would require that each
submission of a proposed amendment to any claim (patent claims and all
proposed claims) requires copies of all proposed amendments to the
claims as of the date of the submission. A copy of a previous amendment
would not meet the requirement of this section in that all amendments
must be represented, as only the last amendment will be used for
printing. A copy of a patent claim that has not been proposed to be
amended is not to be presented.
Paragraph (d)(2)(v) of Sec. 1.530 would provide that the failure to
submit a copy of any proposed added claim would be construed as a
direction to cancel that claim.
Paragraph (d)(3) of Sec. 1.530 would clarify that: (1) A proposed
amendment may not enlarge the scope of the claims of the patent, (2)
that no amendment may be proposed 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 would clarify that amendments
proposed to a patent during reexamination proceedings will not be
effective until a reexamination certificate is issued.
Paragraph (d)(5) of Sec. 1.530 would provide the specifications
that the form of papers must comply with in reexamination proceedings,
e.g., paper size must be either letter size or A4 size (and not legal
size).
Paragraph (d)(6) of Sec. 1.530 would clarify that proposed
amendments to the patent drawings 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.
Section 1.550, paragraphs (a), (b), and (d), would be amended by
replacement of ``response,'' ``responses'' and ``respond'' with
``reply'' in accordance with the proposed change to Sec. 1.111.
Section 1.560, paragraph (b), would be amended by replacement of
``response'' with ``reply'' in accordance with the proposed change to
Sec. 1.111.
Section 1.770 would be amended by replacement of ``response'' with
``reply''
[[Page 49841]]
in accordance with the proposed change to Sec. 1.111.
Section 1.785 would be amended by replacement of ``response'' with
``reply'' in accordance with the proposed change to Sec. 1.111.
Section 1.804, paragraph (b), would be clarified grammatically by
changing ``shall state'' to ``stating'' and would be amended to delete
the requirement that the statement be verified in accordance with the
proposed change to Sec. 1.4(d)(2).
Section 1.805, paragraph (c), would be amended by replacement of
``verified'' with ``statement'' in accordance with the proposed change
to Sec. 1.111 and removing unnecessary language noting that an attorney
or agent registered to practice need not verify their statements.
Portions of part 3 are proposed to be amended to incorporate part 7
that is proposed to be removed and reserved.
Section 3.11(a) is proposed to be created for the current subject
matter and a new paragraph (b) would be added citing Executive Order
9424 and its requirements by several departments and other executive
agencies of the Government for forwarding items for recording.
Section 3.26 would be amended to remove the requirement that
English language translation be verified in accordance with the
proposed change to Sec. 1.4(d)(2).
Section 3.27(a) is proposed to be added to include current subject
matter and an exception for Sec. 3.27(b) that would be added citing
Executive Order 9424 and a mailing address therefor.
Section 3.31(c) is proposed to be added to require that the cover
sheet must 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 and that the document will not affect
title.
Section 3.41(a) is proposed to be added for the current subject
matter and a Sec. 3.41(b) added to note when no recording fee is
required in Sec. 3.41(b)(1) through (3) when it is required by
Executive Order 9424.
Section 3.51 is proposed to be amended by removing the term
``certification'' as unnecessary in accordance with the proposed change
to Sec. 1.4(d)(2).
Section 3.58 is proposed to be 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) would provide
that the Office maintain a Secret Register to record Government
interests also required by the Executive Order.
Section 3.73(b) is proposed to be 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 proposed amendment to Sec. 1.4(d). Section
3.73(b) has been clarified by addition of a reference to an example of
documentary evidence that can be submitted.
Section 5.1 is proposed to be amended by removing the current
subject matter as being duplicative of material in the other sections
of this part and to be replaced by subject matter proposed to be
deleted from Sec. 5.33.
Section 5.2(b) through (d) are proposed to be removed as repetitive
of material in the sections following with Sec. 5.2(b) being replaced
with subject matter of the first sentence from Sec. 5.7.
Section 5.3 would be amended by replacement of ``response'' with
``reply'' in accordance with the proposed change to Sec. 1.111.
Section 5.4 is proposed to be amended by removing unnecessary
subject matter from paragraph (a), eliminating, in paragraph (d), the
requirement that the petition be verified in accordance with the
proposed amendment to Sec. 1.4(d)(2) and by adding the first sentence
of Sec. 5.8 to paragraph (d).
Section 5.5 is proposed to be amended by removing unnecessary
subject matter from paragraph (b) and by replacing current Sec. 5.5(e)
with subject matter proposed to be removed from Sec. 5.6(a).
Section 5.6 is proposed to be removed and reserved with the subject
matter of Sec. 5.6(a) being placed in proposed Sec. 5.5(e).
Section 5.7 is proposed to be removed and reserved with the first
sentence thereof being placed in proposed Sec. 5.2(b).
Section 5.8 is proposed to be removed and reserved with the subject
matter from the first sentence thereof being placed in proposed
Sec. 5.4(e).
Sections 5.11 (b) and (c) are proposed to be amended to update the
references to other parts of the Code of Federal Regulations.
Section 5.13 is proposed to be amended by removing the last two
sentences which are considered to be unnecessary.
Section 5.14(a) is proposed to be amended by removing unnecessary
subject matter and replacing ``serial number'' with the more
appropriate designation ``application number''.
Section 5.15(a) is proposed to be amended by removing unnecessary
subject matter and to update the references to other parts of the Code
of Federal Regulations.
Section 5.16 is proposed to be removed and reserved as unnecessary.
Section 5.17 is proposed to be removed and reserved as unnecessary.
Section 5.18 is proposed to be amended to update the references to
other parts of the Code of Federal Regulations.
Sections 5.19 (a) and (b) are proposed to be amended to update the
references to other parts of the Code of Federal Regulations. Section
5.19(c) is proposed to be removed as unnecessary.
Section 5.20(b) is proposed to be removed as unnecessary.
Section 5.25(c) is proposed to be removed as unnecessary.
Section 5.31 is proposed to be removed and reserved as unnecessary.
Section 5.32 is proposed to be removed and reserved as unnecessary.
Section 5.33 is proposed to be removed and reserved and the subject
matter added to Sec. 5.1.
Part 7 is proposed to be removed and reserved as the substance
thereof has been incorporated into part 3.
Compilation of Inquiries to Public
The Supplementary Information portion and the preamble portion of
Sec. 1.137 request comments on the advisability of applying
retroactively provisions in the final rules to papers submitted prior
to the effective date of the final rule changes.
The Sec. 1.121 portion of the preamble requests comments regarding
the advisability of harmonizing reissue practice with reexamination
practice.
The Sec. 1.137(b) portion of the preamble requests comments on
alternatives as to the time period for submitting a petition
thereunder.
Review Under the Paperwork Reduction Act of 1995
This proposed 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. 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 proposed rule have been reviewed
and approved by, or are pending approval by the OMB under the following
control numbers: 0651-0035, 0651-0033, 0651-0031, 0651-0016, 0651-0032
and 0651-0027. Included in each estimate is the time for reviewing
instructions, gathering and maintaining the data
[[Page 49842]]
needed, and completing and reviewing the collection of information.
With respect to the following collections of information, the
Office invites comments on: (1) Whether the proposed collection of
information is necessary for the proper performance of the Office's
functions, including whether the information will have practical
utility; (2) The accuracy of the Office's estimate of the burden of the
proposed collection of information, including the validity of the
methodology and assumptions used; (3) Ways to enhance the quality,
utility, and clarity of the information to be collected; and (4) Ways
to minimize the burden of the collection of information on respondents,
including through the use of automated collection techniques, when
appropriate, and other forms of information technology.
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: 0651-0035.
Title: Address-Affecting Provisions.
Form Numbers: PTO/SB/82/83.
Type of Review: Pending OMB approval.
Affected Public: Individuals or Households, Business or Other Non-
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: 0651-0033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
Type of Review: Pending OMB approval.
Affected Public: Individuals or Households, Business or Other Non-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 165,900.
Estimated Time Per Response: 0.382 hour.
Estimated Total Annual Burden Hours: 63,400 hours.
Needs and Uses: This collection of information is required to
administer the patent laws pursuant to Title 35 of the U.S. Code
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: 0651-0031.
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: Pending OMB approval.
Affected Public: Individuals or Households, Business or Other Non-
Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 364,000.
Estimated Time Per Response: 1.779 hours.
Estimated Total Annual Burden Hours: 647,720 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 Citations; Terminal
Disclaimers; Petitions to Revive; Express Abandonment; Appeal Notice;
Small Entity; Petition for Access; Power to Inspect; Certificate of
Mailing; Amendment Transmittal Letter; Deposit Account Order Form.
OMB Number: 0651-0016.
Title: Rules for Patent Maintenance Fees.
Form Numbers: PTO/SB/45/46/47/65/66.
Type of Review: Pending OMB approval.
Affected Public: Individuals or Households, Business or Other Non-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 273,800.
Estimated Time Per Response: .08 hour.
Estimated Total Annual Burden Hours: 22,640 hours.
Needs and Uses: Maintenance fees are required to maintain a patent
in force under Title 35 of the U.S. Code. 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 serial number of the patent on which
maintenance fees are paid are required in order to ensure proper
crediting of such payments.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07/17-20/101-109.
Type of Review: Currently approved through 9/98.
Affected Public: Individuals or Households, Business or Other Non-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 221,000.
Estimated Time Per Response: 10.8 hours.
Estimated Total Annual Burden Hours: 2,387,000 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 statutes 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 statutes and regulations,
and will further assist the Office in processing and examination of the
application.
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: Currently approved through 9/98.
Affected Public: Individuals or households and businesses or other
for-profit institutions.
Estimated Number of Respondents: 170,000.
Estimated Time Per Response: 0.5 hour.
Estimated Total Annual Burden Hours: 85,000 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.
As required by the Paperwork Reduction Act of 1995 (44 U.S.C.
[[Page 49843]]
3507(d)), the Office has submitted a copy of this proposed rulemaking
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.
OMB is required to make a decision concerning the collections of
information contained in these proposed regulations between 30 and 60
days after publication of this document in the Federal Register.
Therefore, a comment to OMB is best assured of having its full effect
if OMB receives it within 30 days of publication. This does not affect
the deadline for the public to comment to the Office on the proposed
regulations.
Other Considerations
This proposed rule change is in conformity with the requirements of
the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order
12612, and the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et seq.
It has been determined that this rulemaking is not significant for the
purposes of Executive Order 12866.
The Assistant General Counsel for Legislation and Regulation of the
Department of Commerce has certified to the Chief Counsel for Advocacy,
Small Business Administration that the proposed rule change would not
have a significant impact on a substantial number of small entities
(Regulatory Flexibility Act, Pub. L. 96-354). The principal impact of
these proposed changes is to reduce the regulatory burden on the public
in filing patent applications and petitions therein.
The PTO has determined that this proposed rule change 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, Deceptive intent, Inventions
and patents.
37 CFR Part 3
Administrative practice and procedure, Inventions and patents.
37 CFR Part 5
Inventions and patents, Licenses and exports, Secrecy.
37 CFR Part 7
Inventions and patents.
For the reasons set forth in the preamble, 37 CFR parts 1, 3, 5 and
7 are proposed to be amended as follows, with removals indicated by
brackets ([ ]) and additions are indicated by arrows (> <): part="" 1--="" rules="" of="" practice="" in="" patent="" cases="" 1.="" the="" authority="" citation="" for="" part="" 1="" continues="" to="" read="" as="" follows:="" authority:="" 35="" u.s.c.="" 6,="" 23,="" unless="" otherwise="" noted.="" 1a.="" section="" 1.4="" is="" proposed="" to="" be="" 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="" for="" in="" paragraphs="" (e)="" and="" (f)="" of="" this="" section,="" filed="" in="" a="" patent="" or="" trademark="" application,="" reexamination="" 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:="" [(1)]="">(i)< be="" an="" original,="" that="" is,="" have="" an="" original="" signature="" personally="" signed="" in="" permanent="" ink="" by="" that="" person;="" or="" [(2)]="">(ii)< be="" a="" copy,="" such="" as="" a="" photocopy="" or="" facsimile="" transmission="" (sec.="" 1.6(d)),="" of="" an="" original="">or of a copy of a copy<. 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) By presenting to the Office any paper the party submitting
such paper is certifying that to the best of the person'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.
(3) Sanctions:
(i) Violations of paragraphs (d)(2)(i) to (iv) of this section
after notice and reasonable opportunity to respond are subject to such
sanctions as are deemed appropriate by the Commissioner including
issuance of a Notice of Termination of Proceedings or return of papers;
and
(ii) 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 in 18 U.S.C. 1001, and may jeopardize the
validity or enforceability of the application or any patent issuing
thereon.< *="" *="" *="" *="" *="">(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.< 2.="" section="" 1.6="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (e)="" to="" read="" as="" follows:="" sec.="" 1.6="" receipt="" of="" correspondence.="" *="" *="" *="" *="" *="" (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="" [[page="" 49844]]="" date="" if="" it="" were="" not="" for="" the="" designated="" interruption="" or="" emergency="" in="" the="" united="" states="" postal="" service.="" [such="" statement="" must="" be="" a="" verified="" statement="" if="" made="" by="" a="" person="" other="" than="" a="" practitioner="" as="" defined="" in="" sec.="" 10.1(r)="" of="" this="" chapter.]="" 3.="" section="" 1.8="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (b)="" to="" read="" as="" follows:="" sec.="" 1.8="" certificate="" of="" mailing="" or="" transmission.="" *="" *="" *="" *="" *="" (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="" 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.="" [such="" statement="" must="" be="" a="" verified="" statement="" if="" made="" by="" a="" person="" other="" than="" a="" practitioner="" as="" defined="" in="" sec.="" 10.1(r)="" of="" this="" chapter.]="" 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.="" *="" *="" *="" *="" *="" 4.="" section="" 1.10="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (c)="" to="" read="" as="" follows:="" sec.="" 1.10="" filing="" of="" papers="" and="" fees="" by="" ``express="" mail''="" with="" certificate.="" *="" *="" *="" *="" *="" (c)="" the="" patent="" and="" trademark="" office="" will="" accept="" the="" certificate="" of="" mailing="" by="" ``express="" mail''="" and="" accord="" the="" paper="" or="" fee="" the="" certificate="" date="" under="" 35="" u.s.c.="" 21(a)="" (unless="" the="" certificate="" date="" is="" a="" saturday,="" sunday,="" or="" federal="" holiday="" within="" the="" district="" of="" columbia--see="" sec.="" 1.6(a))="" without="" further="" proof="" of="" the="" date="" on="" which="" the="" mailing="" by="" ``express="" mail''="" occurred="" unless="" a="" question="" is="" present="" regarding="" the="" date="" of="" mailing.="" if="" more="" than="" a="" reasonable="" time="" has="" elapsed="" between="" the="" certificate="" date="" and="" the="" patent="" and="" trademark="" office="" receipt="" date="" or="" if="" other="" questions="" regarding="" the="" date="" of="" mailing="" are="" present,="" the="" person="" mailing="" the="" paper="" or="" fee="" may="" be="" required="" to="" file="" a="" copy="" of="" the="" ``express="" mail''="" receipt="" showing="" the="" actual="" date="" of="" mailing="" and="" a="" statement="" from="" the="" person="" who="" mailed="" the="" paper="" or="" fee="" [averring="" to="" the="" fact]="">stating< that="" the="" mailing="" occurred="" on="" the="" date="" certified.="" [such="" statement="" must="" be="" a="" verified="" statement="" if="" made="" by="" a="" person="" not="" registered="" to="" practice="" before="" the="" patent="" and="" trademark="" office.]="" 5.="" section="" 1.14="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraphs="" (a)="" and="" (e)="" and="" by="" adding="" paragraph="" (f)="" to="" read="" as="" follows:="" sec.="" 1.14="" patent="" applications="" preserved="" in="" [secrecy]="">confidence<. (a)="" except="" as="" provided="" in="" sec.="" 1.11(b)="" pending="" patent="" applications="" are="" preserved="" in="" [secrecy]="">confidence<. no="" information="" will="" be="" given="" by="" the="" office="" respecting="" the="" filing="" by="" any="" particular="" person="" of="" an="" application="" for="" a="" patent,="" the="" pendency="" of="" any="" particular="" case="" before="" it,="" or="" the="" subject="" matter="" of="" any="" particular="" application,="" nor="" will="" access="" be="" given="" to="" or="" copies="" furnished="" of="" any="" pending="" application="" or="" papers="" relating="" thereto,="" without="" written="" authority="" in="" that="" particular="" application="" from="" the="" applicant="" or="" his="">or her< assignee="" or="" attorney="" or="" agent="" of="" record,="" unless="" the="" application="" has="" been="" identified="" by="" [serial]="">application< number="" in="" a="" published="" patent="" document="" or="" the="" united="" states="" of="" america="" has="" been="" indicated="" as="" a="" designated="" state="" in="" a="" published="" international="" application,="" in="" which="" case="" status="" information="">,< such="" as="" whether="" it="" is="" pending,="" abandoned,="" or="" patented="">,< may="" be="" supplied,="" or="" unless="" it="" shall="" be="" necessary="" to="" the="" proper="" conduct="" of="" business="" before="" the="" office="" or="" as="" provided="" by="" this="" part.="" where="" an="" application="" has="" been="" patented,="" the="" patent="" number="" and="" issue="" date="" may="" also="" be="" supplied.="" *="" *="" *="" *="" *="" (e)="" any="" request="" by="" a="" member="" of="" the="" public="" seeking="" access="" to,="" or="" copies="" of,="" any="" pending="" or="" abandoned="" application="" preserved="" in="" [secrecy]="">confidence< pursuant="" to="" paragraphs="" (a)="" and="" (b)="" of="" this="" section,="" or="" any="" papers="" relating="" thereto,="" must="">:< (1)="" be="" in="" the="" form="" of="" a="" petition="" and="" be="" accompanied="" by="" the="" petition="" fee="" set="" forth="" in="" sec.="" 1.17(i),="" or="" (2)="" include="" written="" authority="" granting="" access="" to="" the="" member="" of="" the="" public="" in="" that="" particular="" application="" from="" the="" applicant="" or="" the="" applicant's="" assignee="" or="" attorney="" or="" agent="" of="" record.="">(f) Information as to the filing of an application will be
published in the Official Gazette as required by Sec. 1.47(a) and (b).< 6.="" section="" 1.17="" is="" proposed="" to="" be="" amended="" by="" removing="" and="" reserving="" paragraphs="" (b)="" through="" (d)="" and="" revising="" paragraphs="" (a)="" and="" (i)="" to="" read="" as="" follows:="" sec.="" 1.17="" patent="" application="" processing="" fees.="" (a)="" extension="" fee="">s pursuant to Sec. 1.136(a):< [for="" response="" within="" first="" month="" pursuant="" to="" sec.="" 1.136(a):="" by="" a="" small="" entity="" (sec.="" 1.9(f))..................................$55.00="" by="" other="" than="" a="" small="" entity...................................$110.00]="">(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)).................................$195.00
By other than a small entity
..............................................................$390.00
(3) For reply within third month:
By a small entity (Sec. 1.9(f)).................................$465.00
By other than a small entity....................................$930.00
(4) For reply within fourth month:
By a small entity (Sec. 1.9(f)).................................$735.00
By other than a small entity..................................$1,470.00
(5) For reply within fifth month:
By a small entity (Sec. 1.9(f))...............................$1,005.00
By other than a small entity.................................$2,010.00< (b)="">Removed< [extension="" fee="" for="" response="" within="" second="" month="" pursuant="" to="" sec.="" 1.136(a):="" by="" a="" small="" entity="" (sec.="" 1.9(f)).................................$190.00="" by="" other="" than="" a="" small="" entity...................................$380.00]="" (c)="">Removed< [extension="" fee="" for="" response="" within="" third="" month="" pursuant="" to="" sec.="" 1.136(a):="" by="" a="" small="" entity="" (sec.="" 1.9(f)).................................$450.00="" by="" other="" than="" a="" small="" entity...................................$900.00]="" (d)="">Removed< [extension="" fee="" for="" response="" within="" fourth="" month="" pursuant="" to="" sec.="" 1.136(a):="" by="" a="" small="" entity="" (sec.="" 1.9(f)).................................$700.00="" by="" other="" than="" a="" small="" entity.................................$1,400.00]="" *="" *="" *="" *="" *="" (i)="" for="" filing="" a="" petition="" to="" the="" commissioner="" under="" a="" section="" of="" this="" part="" 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.="" 1.53--to="" accord="" a="" filing="" date,="" except="" in="" provisional="" applications.="" sec.="" 1.55--for="" entry="" of="" late="" priority="" papers.="">Sec. 1.59--for expungement and return of information.< [sec.="" 1.60--to="" accord="" a="" filing="" date.="" sec.="" 1.62--to="" accord="" a="" filing="" date.]="" 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="">(a)<--for [divisional]="">multiple reissue
applications< [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,="" [where="" the]="" assignment="" [was]="" submitted="" after="" payment="" of="" the="" issue="" fee.="" *="" *="" *="" *="" *="" [[page="" 49845]]="" 7.="" section="" 1.21="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (n)="" to="" read="" as="" follows:="" sec.="" 1.21="" miscellaneous="" fees="" and="" charges.="" *="" *="" *="" *="" *="" (n)="" for="" handling="" an="" incomplete="" or="" improper="" application="" under="" sec.="" 1.53(c)="" [,="" sec.="" 1.60="" or="" sec.="" 1.62].........................$130.00="" *="" *="" *="" *="" *="" 8.="" section="" 1.26="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (a)="" to="" read="" as="" follows:="" sec.="" 1.26="" refunds.="" (a)="" [money]="">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="" may="" be="" returned="" by="" check="" or,="" if="" requested,="" by="" credit="" to="" a="" deposit="" account.="" *="" *="" *="" *="" *="" 9.="" section="" 1.27="" is="" proposed="" to="" be="" 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="" [verified]="" statement="" in="" the="" application="" or="" patent="" prior="" to="" or="" with="" the="" first="" fee="" paid="" as="" a="" small="" entity.="" such="" a="" [verified]="" 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< [any="" verified="" statement="" filed]="" 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="" aver="" 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="" [verified]="" 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="" [verified]="" 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="" averring="" to="" their="" status.="" for="" purposes="" of="" a="" [verified]="" 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)="" any="" [verified]="" statement="" filed="" pursuant="" to="" paragraph="" (a)="" of="" this="" section="" on="" behalf="" of="" a="" small="" business="" concern="" must="" (1)="" be="" signed="" by="" the="" owner="" or="" an="" official="" of="" the="" small="" business="" concern="" empowered="" to="" act="" on="" behalf="" of="" the="" concern;="" (2)="" aver="" that="" the="" concern="" qualifies="" as="" a="" small="" business="" concern="" as="" defined="" in="" sec.="" 1.9(d);="" and="" (3)="" aver="" 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.="" where="" the="" rights="" of="" the="" small="" business="" concern="" as="" a="" small="" entity="" are="" not="" exclusive,="" a="" [verified]="" statement="" must="" also="" be="" filed="" by="" the="" other="" small="" entities="" having="" rights="" averring="" to="" their="" status="" as="" such.="" for="" purposes="" of="" a="" [verified]="" 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)="" any="" [verified]="" statement="" filed="" pursuant="" to="" paragraph="" (a)="" of="" this="" section="" on="" behalf="" of="" a="" nonprofit="" organization="" must="" (1)="" be="" signed="" by="" an="" official="" of="" the="" nonprofit="" organization="" empowered="" to="" act="" on="" behalf="" of="" the="" organization;="" (2)="" aver="" 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="" (3)="" aver="" 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.="" where="" the="" rights="" of="" the="" nonprofit="" organization="" as="" a="" small="" entity="" are="" not="" exclusive,="" a="" [verified]="" statement="" must="" also="" be="" filed="" by="" the="" other="" small="" entities="" having="" rights="" averring="" to="" their="" status="" as="" such.="" for="" purposes="" of="" a="" [verified]="" 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.="" 10.="" section="" 1.28="" is="" proposed="" to="" be="" 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)="" 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="" [verified]="" 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.="" 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="" established.="">The refiling of an application under Sec. 1.53 as a
continuation, division, continuation-in-part or continued prosecution
application or the filing of a reissue application requires a new
determination as to continued entitlement to small entity status for
the refiled application or the reissue application.< a="" nonprovisional="" application="" claiming="" benefit="" under="" 35="" u.s.c.="" 119(e),="" 120,="" 121,="" or="" 365(c)="" of="" a="" prior="" application,="">a continued prosecution application, or
a reissue application< may="" rely="" on="" a="" [verified]="" statement="" filed="" in="" the="" prior="" application="">or in the patent< if="" the="" nonprovisional="" application="">, the continued prosecution application or the reissue application< includes="" a="" reference="" to="" the="" [verified]="" statement="" in="" the="" prior="" application="">or in the patent< or="" includes="" a="" copy="" of="" the="" [verified]="" statement="" in="" the="" prior="" application="">or in the patent< and="" status="" as="" a="" small="" entity="" is="" still="" proper="" and="" desired.="">The payment of a small
entity basic statutory filing fee will substitute for the reference.< 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="" [verified]="" statement="" [[page="" 49846]]="" 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="" [(1)="" if="" any="" deficiency="" between="" the="" amount="" paid="" and="" the="" amount="" due="" is="" paid="" within="" three="" months="" after="" the="" date="" the="" error="" occurred="" or="" (2)="" if="" any]="">upon payment of the< deficiency="" between="" the="" amount="" paid="" and="" the="" amount="" due="" [is="" paid="" more="" than="" three="" months="" after="" the="" date="" the="" error="" occurred="" and="" the="" payment="" is="" accompanied="" by="" a="" statement="" explaining="" how="" the="" error="" in="" good="" faith="" occurred="" and="" how="" and="" when="" the="" error="" was="" discovered.="" the="" statement="" must="" be="" a="" verified="" statement="" if="" made="" by="" a="" person="" not="" registered="" to="" practice="" before="" the="" patent="" and="" trademark="" office].="" 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.="" *="" *="" *="" *="" *="" 11.="" section="" 1.33="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (a)="" to="" read="" as="" follows="" and="" to="" remove="" and="" reserve="" paragraph="" (b):="" sec.="" 1.33="" correspondence="">address< respecting="" patent="" applications,="" reexamination="" proceedings,="" and="" other="" proceedings.="" (a)="" [the="" residence="" and="" post="" office="" address="" of="" the="" applicant="" must="" appear="" in="" the="" oath="" or="" declaration="" if="" not="" stated="" elsewhere="" in="" the="" application.]="" the="" applicant="" [may="" also="" specify="" and]="">, 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="" [case]="">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="" [,="" or="" to="" any="" assignee="" of="" record="" of="" the="" entire="" interest="" if="" the="" applicant="" or="" such="" assignee="" so="" requests,="" or="" to="" an="" assignee="" of="" an="" undivided="" part="" if="" the="" applicant="" so="" requests,="" at="" the]="">provided a< post="" office="" address="" [of="" which="" the="" office]="" has="" been="" [notified]="">furnished< in="" the="" [case]="">application<. amendments="" and="" other="" papers="" filed="" in="" the="" application="" must="" be="" signed:="" (1)="" by="" the="" applicant,="" or="" (2)="" if="" there="" is="" an="" assignee="" of="" record="" of="" an="" undivided="" part="" interest,="" by="" the="" applicant="" and="" such="" assignee,="" or="" (3)="" if="" there="" is="" an="" assignee="" of="" record="" of="" the="" entire="" interest,="" by="" such="" assignee,="" or="" (4)="" by="" an="" attorney="" or="" agent="" of="" record,="" or="" (5)="" by="" a="" registered="" attorney="" or="" agent="" not="" of="" record="" who="" acts="" in="" a="" representative="" capacity="" under="" the="" provisions="" of="" sec.="" 1.34(a).="" double="" correspondence="" with="" an="" applicant="" and="" [his]="">an< attorney="" or="" agent,="" or="" with="" more="" than="" one="" attorney="" or="" agent,="" will="" not="" be="" undertaken.="" if="" more="" than="" one="" attorney="" or="" agent="" [be]="">is< made="" of="" record="" and="" a="" correspondence="" address="" has="" not="" been="" specified,="" correspondence="" will="" be="" held="" with="" the="" one="" last="" made="" of="" record.="" (b)="">[Reserved]< *="" *="" *="" *="" *="" 12.="" section="" 1.41="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (a)="" to="" read="" as="" follows:="" sec.="" 1.41="" applicant="" for="" patent.="" (a)="" a="" patent="" [must="" be]="">is< applied="" for="" in="" the="" name="" of="" the="" actual="" inventor="" or="" inventors.="">The inventorship of an application is set forth
in the oath or declaration that is executed in accordance with
Sec. 1.63.< [full="" names="" must="" be="" stated,="" including="" the="" family="" name,="" and="" at="" least="" one="" given="" name="" without="" abbreviation="" together="" with="" any="" other="" given="" name="" or="" initial.]="">For identification purposes, the name of the
actual inventor or inventors should be supplied when the specification
and any required drawing are filed. If the name of the actual inventor
or inventors are not supplied when the specification and any required
drawing are filed, the application should include an applicant
identification consisting of alphanumeric characters.< *="" *="" *="" *="" *="" 13.="" section="" 1.47="" is="" proposed="" to="" be="" 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="" [omitted]="">nonsigning< inventor.="" the="" oath="" or="" declaration="" in="" such="" an="" application="" must="" be="" accompanied="" by="" a="" petition="" including="" proof="" of="" the="" pertinent="" facts="">,< [and]="" by="" the="" [required]="" fee="">set forth in< [(]sec.="" 1.17(h)[)]="">,< and="" [must="" state]="" the="" last="" known="" address="" of="" the="" [omitted="" ]="">nonsigning< inventor.="" the="" patent="" and="" trademark="" office="" shall="" forward="" notice="" of="" the="" filing="" of="" the="" application="" to="" the="" [omitted]="">nonsigning< inventor="" at="" said="" address[.="" should="" such="" notice="" be="" returned="" to="" the="" office="" undelivered,="" or="" should="" the="" address="" of="" the="" omitted="" inventor="" be="" unknown,]="">and< notice="" of="" the="" filing="" of="" the="" application="" shall="" be="" published="" in="" the="" official="" gazette.="" the="" [omitted]="">nonsigning< inventor="" may="" subsequently="" join="" in="" the="" application="" on="" filing="" an="" oath="" or="" declaration="" [of="" the="" character="" required="" by]="">complying
with< sec.="" 1.63.="" [a="" patent="" may="" be="" granted="" to="" the="" inventor="" making="" the="" application,="" upon="" a="" showing="" satisfactory="" to="" the="" commissioner,="" subject="" to="" the="" same="" rights="" which="" the="" omitted="" inventor="" would="" have="" had="" if="" he="" or="" she="" had="" been="" joined.]="" (b)="" whenever="" [an]="">all the< [inventor]="">inventors< [refuses]="">refuse< to="" execute="" an="" application="" for="" patent,="" or="" cannot="" be="" found="" or="" reached="" after="" diligent="" effort,="" a="" person="" to="" whom="" [the]="">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="" [inventor]="">inventors<. the="" oath="" or="" declaration="" in="" such="" an="" application="" must="" be="" accompanied="" by="" a="" petition="" including="" proof="" of="" the="" pertinent="" facts="">,< [and]="" a="" showing="" that="" such="" action="" is="" necessary="" to="" preserve="" the="" rights="" of="" the="" parties="" or="" to="" prevent="" irreparable="" damage,="" [and="" by]="" the="" [required]="" fee=""> set forth in< [(]sec.="" 1.17(h)[)]="">,< and="" [must="" state]="" the="" last="" known="" address="" of="">all< the="" [inventor]="">inventors<. [the="" assignment,="" written="" agreement="" to="" assign="" or="" other="" evidence="" of="" proprietary="" interest,="" or="" a="" verified="" copy="" thereof,="" must="" be="" filed="" in="" the="" patent="" and="" trademark="" office.]="" the="" office="" shall="" forward="" notice="" of="" the="" filing="" of="" the="" application="" to="">all< the="" [inventor]="">inventors< at="" the="" [address]="">addresses< stated="" in="" the="" application[.="" should="" such="" notice="" be="" returned="" to="" the="" office="" undelivered,="" or="" should="" the="" address="" of="" the="" inventor="" be="" unknown]="">and< notice="" of="" the="" filing="" of="" the="" application="" shall="" be="" published="" in="" the="" official="" gazette.="" [the]="">An< inventor="" may="" subsequently="" join="" in="" the="" application="" on="" filing="" an="" oath="" or="" declaration="" [of="" the="" character="" required="" by]="">complying with< sec.="" 1.63.="" [a="" patent="" may="" be="" granted="" to="" the="" inventor="" upon="" a="" showing="" satisfactory="" to="" the="" commissioner.]="" 14.="" section="" 1.48="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 1.48="" correction="" of="" inventorship="">in a patent application<. (a)="" [if="" the="" correct="" inventor="" or="" inventors="" are="" not="" named="" in="" a="" nonprovisional="" application="" through="" error="" without="" any="" [[page="" 49847]]="" deceptive="" intention="" on="" the="" part="" of="" the="" actual="" inventor="" or="" inventors,]="">If the inventive entity is set forth in error in an executed Sec. 1.63
or Sec. 1.175 oath or declaration 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 shall comply with the requirements of this
section and shall be accompanied by a motion under Sec. 1.634.< such="" amendment="" must="" be="" [diligently="" made="" and="" must="" be]="" accompanied="" by:="" (1)="" a="" petition="" including="" a="" statement="" [of="" facts="" verified="" by="" the="" original="" named="" inventor="" or="" inventors="" establishing="" when="" the="" error="" without="" deceptive="" intention="" was="" discovered="" and="" how="" it="" occurred]="">from
each person who is being added as an inventor and from each person who
is being deleted as an inventor that the error in inventorship occurred
without deceptive intention on their part<; (2)="" an="" oath="" or="" declaration="" by="" each="" 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(h);="" and="" (4)="">If an assignment has been executed by any of the original
named inventors the,< [the]="" written="" consent="" of="" [any]="">the< assignee="">,
see Sec. 3.73(b)<. [when="" the="" application="" is="" involved="" in="" an="" interference,="" the="" petition="" shall="" comply="" with="" the="" requirements="" of="" this="" section="" and="" shall="" be="" accompanied="" by="" a="" motion="" under="" sec.="" 1.634.]="" (b)="" if="" the="" correct="" inventors="" are="" named="" in="" [the]="">a< nonprovisional="" application="" when="" filed="" and="" the="" prosecution="" of="" the="" application="" results="" in="" the="" amendment="" or="" cancellation="" of="" claims="" so="" that="" less="" than="" all="" of="" the="" originally="" named="" inventors="" are="" the="" actual="" inventors="" of="" the="" invention="" being="" claimed="" in="" the="" application,="" an="" amendment="" shall="" be="" filed="" deleting="" the="" 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 shall comply with the requirements of this
section and shall be accompanied by a motion under Sec. 1.634. Such< [the]="" amendment="" must="" be="" [diligently="" made="" and="" shall="" 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(h).="" (c)="" if="" a="" nonprovisional="" application="" discloses="" unclaimed="" subject="" matter="" by="" an="" inventor="" or="" inventors="" not="" named="" in="" the="" application,="" the="" application="" may="" be="" amended="" [pursuant="" to="" paragraph="" (a)="" of="" this="" section]="" 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 shall comply with the requirements of this section and
shall 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 their part;
(2) An oath or declaration by each 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(h); 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="">their part< [the="" part="" of="" the="" actual="" inventor="" or="" inventors],="" the="" provisional="" application="" may="" be="" amended="" to="" add="" the="" name="" or="" names="" of="" the="" [actual]="">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="" [actual]="">omitted< inventor="" or="" inventors[,="" which="" statement="" must="" be="" a="" verified="" statement="" if="" made="" by="" a="" person="" not="" registered="" to="" practice="" before="" the="" patent="" and="" trademark="" office];="" 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 their part<, 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="" [of="" facts="" verified]="" by="" the="" person="" or="" persons="" whose="" name="" or="" names="" are="" being="" deleted="" [establishing]="" that="" the="">inventorship< error="" occurred="" without="" deceptive="" intention="">on
their part<; (2)="" the="" fee="" set="" forth="" in="" sec.="" 1.17(q);="" and="" (3)="" [the="" written="" consent="" of="" any="" assignee.]="">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) If the correct inventor or inventors are not named on filing a
nonprovisional application without an executed oath or declaration
under Sec. 1.63, the later submission of an executed oath or
declaration under Sec. 1.63 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.< 15.="" section="" 1.51="" is="" proposed="" to="" be="" amended="" by="" removing="" paragraph="" (c).="" sec.="" 1.51="" general="" requisites="" of="" an="" application.="" *="" *="" *="" *="" *="" (c)="" [removed]="" 16.="" section="" 1.52="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraphs="" (a)="" and="" (d)="" as="" follows:="" sec.="" 1.52="" language,="" paper,="" writing,="" margins.="" (a)="" the="" application,="" any="" amendments="" or="" corrections="" thereto,="" and="" the="" oath="" or="" declaration="" must="" be="" in="" the="" english="" language="" except="" as="" provided="" for="" in="" sec.="" 1.69="" and="" paragraph="" (d)="" of="" this="" section,="" or="" be="" accompanied="" by="" a="" [verified]="" translation="" of="" the="" application="" and="" a="" translation="" of="" any="" corrections="" or="" amendments="" into="" the="" english="" language="">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,="" typed,="" or="" printed="" in="" permanent="" ink="" or="" its="" equivalent="" in="" quality.="" all="" of="" the="" application="" papers="" must="" be="" presented="" in="" a="" form="" having="" sufficient="" clarity="" and="" contrast="" between="" the="" paper="" and="" the="" writing,="" typing,="" or="" printing="" thereon="" to="" permit="" the="" direct="" reproduction="" of="" readily="" legible="" copies="" in="" any="" number="" by="" use="" of="" photographic,="" electrostatic,="" photo-offset,="" and="" microfilming="" processes.="" if="" the="" papers="" are="" not="" of="" the="" required="" quality,="" substitute="" typewritten="" or="" printed="" papers="" of="" suitable="" quality="" may="" be="" required.="" *="" *="" *="" *="" *="" (d)="" an="" application="" may="" be="" filed="" in="" a="" language="" other="" than="" english.="" [a="" verified]="">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.="" 17.="" section="" 1.53="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraphs="" (b)="" through="" (d)="" as="" follows:="" [[page="" 49848]]="" sec.="" 1.53="" application="" number,="" filing="" date,="" and="" completion="" of="" application.="" *="" *="" *="" *="" *="" (b)(1)="" the="" filing="" date="" of="" an="" application="" for="" patent="" filed="" under="" this="" section,="" except="" for="" a="" provisional="" application="">under paragraph
(b)(2) of this section or a continued prosecution application under
paragraph (b)(3) of this section<, is="" the="" date="" on="" which:="" a="" specification="" 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="" [in="" the="" name="" of="" the="" actual="" inventor="" or="" inventors="" as="" required="" by="" sec.="" 1.41].="" no="" new="" matter="" may="" be="" introduced="" into="" an="" application="" after="" its="" filing="" date="">(1.115(b)(1))< [(sec.="" 1.118)].="" [if="" all="" the="" names="" of="" the="" actual="" inventor="" or="" inventors="" are="" not="" supplied="" when="" the="" specification="" and="" any="" required="" drawing="" are="" filed,="" the="" application="" will="" not="" be="" given="" a="" filing="" date="" earlier="" than="" the="" date="" upon="" which="" the="" names="" are="" supplied="" unless="" a="" petition="" with="" the="" fee="" set="" forth="" in="" sec.="" 1.17(i)="" is="" filed="" which="" sets="" forth="" the="" reasons="" the="" delay="" in="" supplying="" the="" names="" should="" be="" excused.]="" a="" continuation="" or="" divisional="" application="" (filed="" under="" the="" conditions="" specified="" in="" 35="" u.s.c.="" 120,="" 121="" or="" 365(c)="" and="" sec.="" 1.78(a))="" may="" be="" filed="" under="" this="">paragraph or paragraph (b)(3) of this< section="" [,="" sec.="" 1.60="" or="" sec.="" 1.62].="" a="" continuation-in-part="" application="">must< [may="" also]="" be="" filed="" under="" this="">paragraph< [section="" or="" sec.="" 1.62].="">(i) Any continuation or divisional application may be filed by all
or by less than all of the inventors named in a prior application. A
newly executed oath or declaration is not required
(Sec. 1.51(a)(1)(ii)) and paragraph (d) of this section in a
continuation or divisional application filed by all or by less than all
of the inventors named in a prior application, provided that one of the
following is submitted: A copy of the executed oath or declaration
filed to complete (Sec. 1.51(a)(1)) the most immediate prior national
application for which priority is claimed under 35 U.S.C. 120, 121 or
365(c), or 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 (Sec. 1.51(a)(1)) the most
immediate prior national application for which priority is claimed
under 35 U.S.C. 120, 121 or 365(c). See paragraph (d) of this section
for the filing of a continuation or divisional application without the
submission of a newly executed oath or declaration or a copy of the
oath or declaration for the most immediate prior national application
for which priority is claimed under 35 U.S.C. 120, 121 or 365(c).
(A) The copy of the executed or unexecuted oath or declaration for
the most immediate prior national application for which priority is
claimed under 35 U.S.C. 120, 121 or 365(c) must be accompanied by a
statement requesting the deletion of the names of the person or persons
who are not inventors in the continuation or divisional application.
(B) Where the power of attorney or correspondence address was
changed during the prosecution of the prior application, the change in
power of attorney or correspondence address must be identified in the
continuation or divisional application.
(ii) A newly executed oath or declaration must be filed in a
continuation or divisional application naming an inventor not named in
the prior application. A newly executed oath or declaration must be
filed in a continuation-in-part application, which application may name
all, more, or less than all of the inventors named in the prior
application.
(iii) The inventorship of an application is set forth in the oath
or declaration that is executed in accordance with Sec. 1.63.< (2)="" the="" filing="" date="" of="" a="" provisional="" application="" is="" the="" date="" on="" which:="" a="" specification="" as="" prescribed="" by="" 35="" u.s.c.="" 112,="" first="" paragraph;="" and="" any="" drawing="" required="" by="" sec.="" 1.81(a),="" are="" filed="" in="" the="" patent="" and="" trademark="" office="" [in="" the="" name="" of="" the="" actual="" inventor="" or="" inventors="" as="" required="" by="" sec.="" 1.41].="" no="" amendment,="" other="" than="" to="" make="" the="" provisional="" application="" comply="" with="" all="" applicable="" regulations,="" may="" be="" made="" to="" the="" provisional="" application="" after="" the="" filing="" date="" of="" the="" provisional="" application.="" [if="" all="" the="" names="" of="" the="" actual="" inventor="" or="" inventors="" are="" not="" supplied="" when="" the="" specification="" and="" any="" required="" drawing="" are="" filed,="" the="" provisional="" application="" will="" not="" be="" given="" a="" filing="" date="" earlier="" than="" the="" date="" upon="" which="" the="" names="" are="" supplied="" unless="" a="" petition="" with="" the="" fee="" set="" forth="" in="" sec.="" 1.17(q)="" is="" filed="" which="" sets="" forth="" the="" reasons="" the="" delay="" in="" supplying="" the="" names="" should="" be="" excused.]="" (i)="" a="" provisional="" application="" must="" also="" include="" a="" cover="" sheet="" identifying="" the="" application="" as="" a="" provisional="" application.="" otherwise,="" the="" application="" will="" be="" treated="" as="" an="" application="" filed="" under="">paragraph (b)(1) of this section< [sec.="" 1.53(b)(1)].="" (ii)="" an="" application="" for="" patent="" filed="" under="">paragraph (b)(1) of
this section< [sec.="" 1.53(b)(1)]="" may="" be="" [treated="" as]="">converted to< a="" provisional="" application="" and="" be="" accorded="" the="" original="" filing="" date="" provided="" that="" a="" petition="" requesting="" the="" conversion,="" with="" the="" fee="" set="" forth="" in="" sec.="" 1.17(q),="" is="" filed="" prior="" to="" the="" earlier="" of="" the="" abandonment="" of="" the="" [sec.="" 1.53(b)(1)]="" application="">under paragraph (b)(1) of this
section<, the="" payment="" of="" the="" issue="" fee,="" the="" expiration="" of="" 12="" months="" after="" the="" filing="" date="" of="" the="" [sec.="" 1.53(b)(1)]="" application="">under
paragraph (b)(1) of this section<, or="" the="" filing="" of="" a="" request="" for="" a="" statutory="" invention="" registration="" under="" sec.="" 1.293.="" 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)(1) of
this section< [sec.="" 1.53(b)(1)].="" (iii)="" a="" provisional="" application="" shall="" not="" be="" entitled="" to="" the="" right="" of="" priority="" under="" sec.="" 1.55="" or="" 35="" u.s.c.="" 119="" or="" 365(a)="" or="" to="" the="" benefit="" of="" an="" earlier="" filing="" date="" under="" sec.="" 1.78="" or="" 35="" u.s.c.="" 120,="" 121="" or="" 365(c)="" 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.="">(3) In a nonprovisional application that is complete as defined by
Sec. 1.51(a)(1) and filed on or after June 8, 1995, a continuation or
divisional application that discloses and claims only subject matter
disclosed in and names as inventors the same or less than all the
inventors named in that prior complete application may be filed as a
continued prosecution application under this paragraph. The filing date
of a continued prosecution application is the date on which a request
for an application under this paragraph including identification of the
prior application number is filed.
(i) An application filed under this paragraph:
(A) Will utilize the file jacket and contents of the prior
application, including the specification, drawings and oath or
declaration, from the prior complete application (Sec. 1.51(a)) to
constitute the new application, and will be assigned the application
number of the prior application for identification purposes,
(B) Is a request to expressly abandon the prior application as of
the filing date of the request for an application under this paragraph,
and
(C) Must be filed before the payment of the issue fee, abandonment
of, or termination of proceedings on the prior application, or after
payment of the
[[Page 49849]]
issue fee if a petition under Sec. 1.313(b)(5) is granted in the prior
application.
(ii) The filing fee for a continued prosecution application filed
under this paragraph is:
(A) The basic filing fee as set forth in Sec. 1.16(a), and
(B) 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.
(iii) If an application filed under this paragraph is filed by less
than all the inventors named in the prior application, a statement must
accompany the application when filed requesting deletion of the names
of the person or persons who are not inventors of the invention being
claimed in the new application.
(iv) Any new change must be made in the form of an amendment to 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.
(v) The filing of a continued prosecution application under this
paragraph will be construed to include a waiver of confidence by the
applicant under 35 U.S.C. 122 to the extent that any member of the
public who is entitled under the provisions of Sec. 1.14 to access to,
or information concerning either the prior application or any
application filed under the provisions of this paragraph may be given
similar access to, or similar information concerning, the other
application(s) in the file jacket.
(vi) In addition to identifying the application number of the prior
application, applicant is urged to 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:
(A) Title of invention;
(B) Name of applicant(s);
(C) Correspondence address;
(D) Identification of any priority claim under 35 U.S.C. 119, 120
and 121.
(vii) Envelopes containing only requests and fees for filing an
application under this paragraph should be marked ``Box CPA.''< (c)="">(1) If any application filed under paragraph (b) of this
section is found to be incomplete or improper, applicant will be so
notified and given a time period within which to correct the filing
error.
(2) Any request for review of a notification pursuant to paragraph
(c)(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)(1) or (b)(3) of this section,
and the fee set forth in Sec. 1.17(q) in an application filed under
paragraph (b)(2) 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 (c)(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 (c)(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 paragraph (c)(2) of this section, proceedings in the
application will be considered terminated. Where proceedings in an
application are terminated pursuant to this paragraph, the application
may be returned or otherwise disposed of, and any filing fees, less the
handling fee set forth in Sec. 1.21(n), will be refunded.< [if="" any="" application="" is="" filed="" without="" the="" specification,="" drawing="" or="" name,="" or="" names,="" of="" the="" actual="" inventor="" or="" inventors="" required="" by="" paragraph="" (b)(1)="" or="" (b)(2)="" of="" this="" section,="" applicant="" will="" be="" so="" notified="" and="" given="" a="" time="" period="" within="" which="" to="" submit="" the="" omitted="" specification,="" drawing,="" name,="" or="" names,="" of="" the="" actual="" inventor,="" or="" inventors,="" in="" order="" to="" obtain="" a="" filing="" date="" as="" of="" the="" date="" of="" filing="" of="" such="" submission.="" a="" copy="" of="" the="" ``notice="" of="" incomplete="" application''="" form="" notifying="" the="" applicant="" should="" accompany="" any="" response="" thereto="" submitted="" to="" the="" office.="" if="" the="" omission="" is="" not="" corrected="" within="" the="" time="" period="" set,="" the="" application="" will="" be="" returned="" or="" otherwise="" disposed="" of;="" the="" fee,="" if="" submitted,="" will="" be="" refunded="" less="" the="" handling="" fee="" set="" forth="" in="" sec.="" 1.21(n).="" any="" request="" for="" review="" of="" a="" refusal="" to="" accord="" an="" application="" a="" filing="" date="" must="" be="" by="" way="" of="" a="" petition="" accompanied="" by="" the="" fee="" set="" forth="" in="" sec.="" 1.17(i),="" if="" the="" application="" was="" filed="" under="" sec.="" 1.53(b)(1),="" or="" by="" the="" fee="" set="" forth="" in="" sec.="" 1.17(q),="" if="" the="" application="" was="" filed="" under="" sec.="" 1.53(b)(2).]="" (d)(1)="" if="" an="" application="" which="" has="" been="" accorded="" a="" filing="" date="" pursuant="" to="" [paragraph]="">paragraphs< (b)(1)="">or (b)(3)< 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 Secs. 1.63 or 1.175,
which may be a copy of the executed oath or declaration filed to
complete, pursuant to Sec. 1.51(a)(1), the most immediate prior
national application for which priority is claimed under 35 U.S.C. 120,
121 or 365(c), or 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 (Sec. 1.51(a)(1)) the
most immediate prior national application for which priority is claimed
under 35 U.S.C. 120, 121 or 365(c), in a continuation or divisional
application,< applicant="" will="" be="" so="" notified,="" if="" a="" correspondence="" address="" has="" been="" provided,="" given="" a="" period="" of="" time="" within="" which="" to="" file="" the="" fee,="" oath="" [,]="" or="" declaration="" and="" to="" pay="" the="" surcharge="" as="" set="" forth="" in="" sec.="" 1.16(e)="" in="" order="" to="" prevent="" abandonment="" of="" the="" application.="" [a="" copy="" of="" the="" ``notice="" to="" file="" missing="" parts''="" form="" mailed="" to="" applicant="" should="" accompany="" any="" response="" thereto="" submitted="" to="" the="" office.]="" 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="" will="" be="" disposed="" of.="" no="" copies="" will="" be="" provided="" or="" certified="" by="" the="" office="" of="" an="" application="" which="" has="" been="" disposed="" of="" or="" in="" which="" neither="" the="" required="" basic="" filing="" fee="" nor="" the="" processing="" and="" retention="" fee="" has="" been="" paid.="" the="" notification="" pursuant="" to="" this="" paragraph="" may="" be="" made="" simultaneously="" with="" any="" notification="" pursuant="" to="" paragraph="" (c)="" 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,="" oath="" or="" declaration="" and="" to="" pay="" 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.="" *="" *="" *="" *="" *="" 18.="" section="" 1.54="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (b)="" to="" read="" as="" follows:="" sec.="" 1.54="" parts="" of="" application="" to="" be="" filed="" together;="" filing="" receipt.="" *="" *="" *="" *="" *="" (b)="" applicant="" will="" be="" informed="" of="" the="" application="" number="" and="" filing="" date="" by="" a="" filing="" receipt="">, unless the application is an application
filed under Sec. 1.53(b)(3)<. [[page="" 49850]]="" 19.="" section="" 1.55="" is="" proposed="" to="" be="" amended="" 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="" cases,="" before="" the="" patent="" is="" granted.="" 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="" 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.="" [the="" statement="" must="" be="" a="" verified="" statement="" if="" made="" by="" a="" person="" not="" registered="" to="" practice="" before="" the="" patent="" and="" trademark="" office.]="" *="" *="" *="" *="" *="" 20.="" section="" 1.59="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 1.59="">Expungement of information or copy of papers in application
file< [papers="" of="" application="" with="" filing="" date="" not="" to="" be="" returned].="">(a)(1) Information< [papers]="" in="" an="" application="" which="" has="" received="" a="" filing="" date="" pursuant="" to="" sec.="" 1.53="" will="" not="" be="">expunged and< returned="" [for="" any="" purpose="" whatever]="">, except as provided in paragraph (b) of
this section<. [if="" applicants="" have="" not="" preserved="" copies="" of="" the="" papers,="" the="" office="" will="" furnish="" copies="" at="" the="" usual="" cost="" of="" any="" application="" in="" which="" either="" the="" required="" basic="" filing="" fee="" (sec.="" 1.16)="" or,="" if="" the="" application="" was="" filed="" under="" sec.="" 1.53(b)(1),="" the="" processing="" and="" retention="" fee="" sec.="" 1.21(l)="" has="" been="" paid.]="" 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, drawings, claims 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) If applicants have not preserved copies of any application
papers, the Office will furnish copies upon request, at the usual cost,
for any application in which either the required basic filing fee
(Sec. 1.16) or, if the application was filed under Sec. 1.53(b)(1), the
processing and retention fee (Sec. 1.21(l)) has been paid.< sec.="" 1.60="" [removed="" and="" reserved]="" 21.="" section="" 1.60="" is="" proposed="" to="" be="" removed="" and="" reserved.="" sec.="" 1.62="" [removed="" and="" reserved]="" 22.="" section="" 1.62="" is="" proposed="" to="" be="" removed="" and="" reserved.="" 23.="" section="" 1.63="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (a)="" to="" read="" as="" follows:="" sec.="" 1.63="" oath="" or="" declaration.="" (a)="" an="" oath="" or="" declaration="" filed="" under="" sec.="" 1.51(a)(1)(ii)="" 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.="" *="" *="" *="" *="" *="" 24.="" section="" 1.69="" is="" proposed="" to="" be="" 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="" [a="" verified]="">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.="" 25.="" section="" 1.78="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (a)(1)="" as="" follows:="" sec.="" 1.78="" claiming="" benefit="" of="" [an]="" 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="" 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="" 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)="" complete="" as="" set="" forth="" in="" sec.="" 1.51(a)(1);="" or="" (ii)="" entitled="" to="" a="" filing="" date="" as="" set="" forth="" in="" sec.="">Sec. < 1.53(b)(1)="">or (b)(3)< [,="" sec.="" 1.60="" or="" sec.="" 1.62]="" and="" include="" the="" basic="" filing="" fee="" set="" forth="" in="" sec.="" 1.16;="" or="" (iii)="" entitled="" to="" a="" filing="" date="" as="" set="" forth="" in="" sec.="" 1.53(b)(1)="" 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(d)(1).="" *="" *="" *="" *="" *="" 26.="" section="" 1.84="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (b)="" as="" follows:="" sec.="" 1.84="" standards="" for="" drawings.="" *="" *="" *="" *="" *="" (b)="" photographs.="" (1)="" black="" and="" white.="" photographs="" are="" not="" ordinarily="" permitted="" in="" utility="" [and="" design]="" applications.="" however,="" the="" office="" will="" accept="" photographs="" in="" utility="" [and="" design]="" 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="" appropriate="" fee="" set="" forth="" in="" sec.="" 1.17(h);="" 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.="" [[page="" 49851]]="" (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.="" *="" *="" *="" *="" *="" 27.="" section="" 1.91="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 1.91="" models="">and exhibits< not="" generally="" required="" as="" part="" of="" application="" or="" patent.="" models="">and exhibits< [were="" once="" required="" in="" all="" cases="" admitting="" a="" model,="" as="" a="" part="" of="" the="" application,="" and="" these="" models="" became="" a="" part="" of="" the="" record="" of="" the="" patent.="" such="" models="" are="" no="" longer="" generally="" required="" (the="" description="" of="" the="" invention="" in="" the="" specification,="" and="" the="" drawings,="" must="" be="" sufficiently="" full="" and="" complete,="" and="" capable="" of="" being="" understood,="" to="" disclose="" the="" invention="" without="" the="" aid="" of="" a="" model),="" and]="" will="" not="" be="" admitted="" unless="" specifically="" [called="" for.]="">required by the
Office. A model, working model, or other physical exhibit may be
required if deemed necessary for any purpose in examination of the
application.< sec.="" 1.92="" [removed="" and="" reserved]="" 28.="" section="" 1.92="" is="" proposed="" to="" be="" removed="" and="" reserved.="" 29.="" section="" 1.97="" is="" proposed="" to="" be="" 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="" after="" the="" period="" specified="" in="" paragraph="" (b)="" of="" this="" section,="" but="" before="" the="" mailing="" date="" of="" either:="" (1)="" a="" final="" action="" under="" sec.="" 1.113="">;< or="" (2)="" a="" notice="" of="" allowance="" under="" sec.="" 1.311,="" whichever="" occurs="" first,="" provided="" the="">information disclosure< statement="" is="" accompanied="" by="" either="" a="" [certification]="">statement< as="" specified="" in="" paragraph="" (e)="" of="" this="" section="" or="" the="" fee="" set="" forth="" in="" sec.="" 1.17(p).="" (d)="" an="" information="" disclosure="" statement="" shall="" be="" considered="" by="" the="" office="" if="" filed="" after="" the="" mailing="" date="" of="" either:="">(1) A< [a]="" final="" action="" under="" sec.="" 1.113="">;< or="">(2) A< [a]="" notice="" of="" allowance="" under="" sec.="" 1.311,="" whichever="" occurs="" first,="" but="" before="" payment="" of="" the="" issue="" fee,="" provided="" the="">information
disclosure< statement="" is="" accompanied="" by:="" [(1)="">(i)< a="" [certification]="">statement< as="" specified="" in="" paragraph="" (e)="" of="" this="" section,="" [2]="">(ii)< a="" petition="" requesting="" consideration="" of="" the="" information="" disclosure="" statement,="" and="" [3]="">(iii)< the="" petition="" fee="" set="" forth="" in="" sec.="" 1.17(i)(1).="" (e)="" a="" [certification]="">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="" [or]="">and<, to="" the="" knowledge="" of="" the="" person="" signing="" the="" [certification]="">statement< after="" making="" reasonable="" inquiry,="" 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]="" 30.="" section="" 1.101="" is="" proposed="" to="" be="" removed="" and="" reserved.="" 31.="" section="" 1.102="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (a)="" to="" read="" as="" follows:="" 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="" [verified]="" showing="" which,="" in="" the="" opinion="" of="" the="" commissioner,="" will="" justify="" so="" advancing="" it.="" *="" *="" *="" *="" *="" 32.="" section="" 1.103="" is="" proposed="" to="" be="" 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)(1).="" action="" will="" not="" be="" suspended="" when="" a="">reply< [response]="" by="" the="" applicant="" to="" an="" office="" action="" is="" required.="" *="" *="" *="" *="" *="" sec.="" 1.104="" [removed="" and="" reserved].="" 33.="" section="" 1.104="" is="" proposed="" to="" be="" removed="" and="" reserved.="" sec.="" 1.105="" [removed="" and="" reserved].="" 34.="" section="" 1.105="" is="" proposed="" to="" be="" removed="" and="" reserved.="" sec.="" 1.108="" [removed="" and="" reserved].="" 35.="" section="" 1.108="" is="" proposed="" to="" be="" removed="" and="" reserved.="" 36.="" section="" 1.111="" is="" proposed="" to="" be="" 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="" [make="" request="" therefor="" in="" writing]="">reply<. the="" reply="" by="" the="" applicant="" or="" patent="" owner="" must="">be reduced to a writing which< distinctly="" and="" specifically="" [point]="">points< out="" the="" supposed="" errors="" in="" the="" examiner's="" action="" and="" must="" [respond]="">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 the 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="" case="" 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.="" *="" *="" *="" *="" *="" 37.="" section="" 1.112="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 1.112="" reconsideration="">before final action<. after="" [response]="">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="" [respond]="">reply< to="" such="" office="" action="" in="" the="" same="" manner="" provided="" in="" sec.="" 1.111,="" with="" or="" without="" amendment.="" [any="" amendments="" after="" the="" second="" office="" action="" must="" ordinarily="" be="" restricted="" to="" the="" rejection="" or="" to="" the="" objections="" or="" requirements="" made.="" the="" application="" or="" patent="" under="" [[page="" 49852]]="" reexamination="" will="" be="" again="" considered,="" and="" so="" on="" repeatedly,="" unless="" the="" examiner="" has="" indicated="" that="" the="" action="" is="" final.]="" 38.="" section="" 1.113="" is="" proposed="" to="" be="" 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< [response]="" 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< [response]="" 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< [response]="" 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="" case,="" clearly="" stating="" the="" reasons="">in support thereof< [therefor].="">(c) The first action in an application will not be made final.< 39.="" section="" 1.115="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 1.115="" amendment.="" [the="" applicant="" may="" amend="" before="" or="" after="" the="" first="" examination="" and="" action="" and="" also="" after="" the="" second="" or="" subsequent="" examination="" or="" reconsideration="" as="" specified="" in="" 1.112="" or="" when="" and="" as="" specifically="" required="" by="" the="" examiner.="" the="" patent="" owner="" may="" amend="" in="" accordance="" with="" 1.510(e)="" and="" 1.530(b)="" prior="" to="" reexamination="" and="" during="" reexamination="" proceedings="" in="" accordance="" with="" 1.112="" and="" 1.116.]="">(a) The applicant or the patent owner may amend the disclosure
(e.g., specification, claims, drawings and abstract) of an application
before final action as indicated in Sec. 1.121, except for
nonprovisional applications which are subject to Sec. 1.53(b)(2). The
patent owner may amend the patent in a reexamination proceeding in
accordance with Sec. Sec. 1.510(e) and 1.530(d).
(b)(1) No amendment shall introduce new matter into the disclosure
of an application.
(2) If it is determined that an amendment filed after the filing
date of the application introduces new matter into the disclosure, the
claims containing the new matter will be rejected and deletion of the
new matter in the description and drawings will be required.
(c) Claims may be amended by canceling particular claims, by
presenting new claims, or by rewriting particular claims as indicated
in Sec. 1.121(b). If an amendment is in reply to an Office action note
Sec. 1.111.
(d) The disclosure must be amended when required to correct
inaccuracies of description and definition, and to secure
correspondence between the claims, the specification, and the drawing.
(e) No amendment to the drawing may be made except with permission
of the Office. Permissible changes in the construction shown in any
drawing may be made only by the submission of a substitute drawing by
applicant. 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.
(f) To amend a clause that was previously amended, the clause
should be wholly rewritten so that no interlineations or deletions
shall appear in the clause as finally presented. Matter canceled by
amendment can be reinstated only by a subsequent amendment presenting
the canceled matter as a new insertion.< 40.="" section="" 1.116="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraphs="" (a)="" and="" (b)="" to="" read="" as="" follows:="" sec.="" 1.116="" amendments="" after="" final="" action.="" (a)="" after="">a< final="" rejection="" or="">other final< action="" (sec.="" 1.113)="">,< amendments="">are limited to< [may="" be="" made]="" cancelling="" claims="" or="" complying="" with="" any="" requirement="" of="" form="">expressly set forth in a
previous Office action.< [which="" has="" been="" made.="" 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="" [relative="" thereto],="" shall="" 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.="" (b)="">Any amendment not in compliance with paragraph (a) of this
section must be submitted with a request for an application under
Sec. 1.53(b)(3) to ensure its consideration.< [if="" amendments="" touching="" the="" merits="" of="" the="" application="" or="" patent="" under="" reexamination="" are="" presented="" after="" final="" rejection,="" or="" after="" appeal="" has="" been="" taken,="" or="" when="" such="" amendment="" might="" not="" otherwise="" be="" proper,="" they="" may="" be="" admitted="" upon="" a="" showing="" of="" good="" and="" sufficient="" reasons="" why="" they="" are="" necessary="" and="" were="" not="" earlier="" presented.]="" *="" *="" *="" *="" *="" sec.="" 1.117="" [removed="" and="" reserved]="" 41.="" section="" 1.117="" is="" proposed="" to="" be="" removed="" and="" reserved="" sec.="" 1.118="" [removed="" and="" reserved]="" 42.="" section="" 1.118="" is="" proposed="" to="" be="" removed="" and="" reserved="" sec.="" 1.119="" [removed="" and="" reserved]="" 43.="" section="" 1.119="" is="" proposed="" to="" be="" removed="" and="" reserved="" 44.="" section="" 1.121="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 1.121="" manner="" of="" making="" amendments.="" [(a)="" erasures,="" additions,="" insertions,="" or="" alterations="" of="" the="" office="" file="" of="" papers="" and="" records="" must="" not="" be="" physically="" entered="" by="" the="" applicant.="" amendments="" to="" the="" application="" (excluding="" the="" claims)="" are="" made="" by="" filing="" a="" paper="" (which="" should="" conform="" to="" sec.="" 1.52)="" directing="" or="" requesting="" that="" specified="" amendments="" be="" made.="" the="" exact="" word="" or="" words="" to="" be="" stricken="" out="" or="" inserted="" by="" said="" amendment="" must="" be="" specified="" and="" the="" precise="" point="" indicated="" where="" the="" deletion="" or="" insertion="" is="" to="" be="" made.="" (b)="" except="" as="" otherwise="" provided="" herein,="" a="" particular="" claim="" may="" be="" amended="" only="" by="" directions="" to="" cancel="" or="" by="" rewriting="" such="" claim="" with="" underlining="" below="" the="" word="" or="" words="" added="" and="" brackets="" around="" the="" word="" or="" words="" deleted.="" the="" rewriting="" of="" a="" claim="" in="" this="" form="" will="" be="" construed="" as="" directing="" the="" cancellation="" of="" the="" original="" claim;="" however,="" the="" original="" claim="" number="" followed="" by="" the="" parenthetical="" word="" must="" be="" used="" for="" the="" rewritten="" claim.="" if="" a="" previously="" rewritten="" claim="" is="" rewritten,="" underlining="" and="" bracketing="" will="" be="" applied="" in="" reference="" to="" the="" previously="" rewritten="" claim="" with="" the="" parenthetical="" expression="" ``twice="" amended,''="" ``three="" times="" amended,''="" etc.,="" following="" the="" original="" claim="" number.="" (c)="" a="" particular="" claim="" may="" be="" amended="" in="" the="" manner="" indicated="" for="" the="" application="" in="" paragraph="" (a)="" of="" this="" section="" to="" the="" extent="" of="" corrections="" in="" spelling,="" punctuation,="" and="" typographical="" errors.="" additional="" amendments="" in="" this="" manner="" will="" be="" admitted="" provided="" the="" changes="" are="" limited="" to="" (1)="" deletions="" and/or="" (2)="" the="" addition="" of="" no="" more="" than="" five="" words="" in="" any="" one="" claim.="" any="" amendment="" submitted="" with="" instructions="" to="" amend="" particular="" claims="" but="" failing="" to="" conform="" to="" the="" provisions="" of="" paragraphs="" (b)="" and="" (c)="" of="" this="" section="" may="" be="" considered="" nonresponsive="" and="" treated="" accordingly.="" (d)="" where="" underlining="" or="" brackets="" are="" intended="" to="" appear="" in="" the="" printed="" patent="" [[page="" 49853]]="" or="" are="" properly="" part="" of="" the="" claimed="" material="" and="" not="" intended="" as="" symbolic="" of="" changes="" in="" the="" particular="" claim,="" amendment="" by="" rewriting="" in="" accordance="" with="" paragraph="" (b)="" of="" this="" section="" shall="" be="" prohibited.="" (e)="" in="" reissue="" applications,="" both="" the="" descriptive="" portion="" and="" the="" claims="" are="" to="" be="" amended="" by="" either="" (1)="" submitting="" a="" copy="" of="" a="" portion="" of="" the="" description="" or="" an="" entire="" claim="" with="" all="" matter="" to="" be="" deleted="" from="" the="" patent="" being="" placed="" between="" brackets="" and="" all="" matter="" to="" be="" added="" to="" the="" patent="" being="" underlined,="" or="" (2)="" indicating="" the="" exact="" word="" or="" words="" to="" be="" stricken="" out="" or="" inserted="" and="" the="" precise="" point="" where="" the="" deletion="" or="" insertion="" is="" to="" be="" made.="" any="" word="" or="" words="" to="" be="" inserted="" must="" be="" underlined.="" see="" 1.173.="" (f)="" proposed="" amendments="" presented="" in="" patents="" involved="" in="" reexamination="" proceedings="" must="" be="" presented="" in="" the="" form="" of="" a="" full="" copy="" of="" the="" text="" of:="" (1)="" each="" claim="" which="" is="" amended="" and="" (2)="" each="" paragraph="" of="" the="" description="" which="" is="" amended.="" matter="" deleted="" from="" the="" patent="" shall="" be="" placed="" between="" brackets="" and="" matter="" added="" shall="" be="" underlined.="" copies="" of="" the="" printed="" claims="" from="" the="" patent="" may="" be="" used="" with="" any="" additions="" being="" indicated="" by="" carets="" and="" deleted="" material="" being="" placed="" between="" brackets.="" claims="" must="" not="" be="" renumbered="" and="" the="" numbering="" of="" the="" claims="" added="" for="" reexamination="" must="" follow="" the="" number="" of="" the="" highest="" numbered="" patent="" claim.="" no="" amendment="" may="" enlarge="" the="" scope="" of="" the="" claims="" of="" the="" patent.="" no="" new="" matter="" may="" be="" introduced="" into="" the="" patent.]="">(a) Amendments in non-reissue applications: Amendments in
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 claims: Amendments to the
specification other than claims may only be made as follows:
(i) The precise point in the specification must be indicated where
an amendment is to be made.
(ii) If the only changes to the specification are deletions,
amendments may only be made by precise directions to delete.
(iii) Except as provided by paragraph (a)(1)(ii) of this section,
amendments must be made by submission of a copy of the rewritten
sentence(s), paragraph(s) and/or page(s) with marking pursuant to
paragraph (a)(1)(iv) of this section.
(iv) Underlining below the subject matter added and brackets around
the subject matter deleted are to be used to mark the amendments being
made. If a previously rewritten sentence(s), paragraph(s) or page(s) is
again rewritten, marking will be applied in reference to the
sentence(s), paragraph(s) or page(s) as previously rewritten.
(2) Claims: Amendments to the claims may only be made as follows:
(i)(A) A claim may be cancelled by a direction to cancel the claim
or by omitting the claim when submitting a complete copy of all pending
claims as required by (a)(2)(ii) of this section.
(B) A previously submitted claim may only be amended, other than by
cancellation pursuant to paragraph (a)(2)(i)(A) of this section, by
submitting a copy of the claim completely rewritten with markings,
pursuant to paragraph (a)(2)(iii) of this section, of the subject
matter added and/or deleted. The rewriting of a claim in this form will
be construed as directing that the rewritten claim be a replacement for
the previously submitted claim; however, the previously submitted claim
number followed by the parenthetical word ``amended'' must be used for
the rewritten claim.
(C) A new claim may only be added by submitting a clean copy of the
new claim. The numbering of any new claims added must follow the number
of the highest numbered previously submitted claim.
(ii) Whenever a previously submitted claim is amended by rewriting
pursuant to paragraph (a)(2)(i)(B) of this section or a new claim is
added pursuant to paragraph (a)(2)(i)(C) of this section, applicant
must submit a separate complete copy of all pending claims. Such
separate complete copy must include all newly rewritten, all newly
added, all previously rewritten claims that are still pending, and any
unamended claims that are still pending. For all claims, other than
those claims being newly rewritten, the copy must be submitted in clean
form without markings as to previous amendments.
(iii) Underlining below the subject matter added and brackets
around the subject matter deleted relative to the previously submitted
claim are to be used to mark the amendments being made. If a previously
rewritten claim is again rewritten, marking will be applied in
reference to the claim as previously rewritten, and the parenthetical
expression will be ``twice amended,'' ``three times amended,'' etc.,
following the original claim number.
(iv) The failure to include a copy of any previously submitted
claim with the separate complete copy of all pending claims required by
paragraph (a)(2)(ii) of this section will be construed as a direction
to cancel that claim.
(3) Drawings: 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.
(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 Sec. 1.121(a)(1) either prior to or concurrent with
submission of the substitute specification.
(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 claims: Amendments to the
specification other than claims may only be made as follows:
(i) The precise point in the specification must be indicated where
an amendment is to be made.
(ii) Amendments must be made by submission of the entire text of
the rewritten paragraph(s) with markings pursuant to paragraph
(b)(1)(iv) of this section.
(iii) Each submission of an amendment to the specification must
include all amendments to the specification relative to the patent as
of the date of the submission. This would include amendments to the
specification of the patent submitted for the first time as well as any
previously submitted amendments that are still desired. Any previously
submitted amendments to the specification that are no longer desired
must not be included in the submission.
(iv) 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 are made as follows:
(i)(A) The amendment must include the entire text of each patent
claim which is amended and of each added claim with marking pursuant to
paragraph (b)(2)(i)(C), of this section except a patent claim should be
cancelled by a statement cancelling the patent claim without
presentation of the text of the patent 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
[[Page 49854]]
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, 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.
(iv) Each submission of an amendment to any claim (patent claims
and all added claims) must include all pending amendments to the claims
as of the date of the submission. This would include amendments to the
claims submitted for the first time as well as any previously submitted
amendments to the claims that are still desired. Any previously
submitted amendments to the claims that are no longer desired must not
be included in the submission. A copy of any patent claims that have
not been amended are not to be presented with each amendment
submission.
(v) The failure to submit a copy of any added claim, as required by
paragraph (b)(2)(iv) of this section, will be construed as a direction
to cancel that claim.
(vi) 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 claims may introduce new matter or be made in
an expired patent.
(3) Drawings: 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.
(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.< sec.="" 1.122="" [removed="" and="" reserved]="" 45.="" section="" 1.122="" is="" proposed="" to="" be="" removed="" and="" reserved.="" sec.="" 1.123="" [removed="" and="" reserved]="" 46.="" section="" 1.123="" is="" proposed="" to="" be="" removed="" and="" reserved.="" sec.="" 1.124="" [removed="" and="" reserved]="" 47.="" section="" 1.124="" is="" proposed="" to="" be="" removed="" and="" reserved.="" sec.="" 1.125="" substitute="" specification.="" 48.="" section="" 1.125="" is="" proposed="" to="" be="" revised="" as="" follows:="">(a)< if="" the="" number="" or="" nature="" of="" the="" amendments=""> or the legibility
of the specification< [shall]="" render="" it="" difficult="" to="" [consider="" the="" case,="" or="" to="" arrange="" the="" papers="" for="" printing="" or="" copying]="">process an
application<, the="" office="" may="" require="" the="" entire="" specification,="" including="" the="" claims,="" or="" any="" part="" thereof,="" to="" be="" rewritten="" in="" clean="" form="" incorporating="" all="" amendments.="">(b)< a="" substitute="" specification="" for="" an="" application="" other="" than="" a="" reissue="" application="" may="" [not="" be="" accepted="" unless="" it="" has="" been="" required="" by="" the="" examiner="" or="" unless="" it="" is="" clear="" to="" the="" examiner="" that="" acceptance="" of="" a="" substitute="" specification="" would="" facilitate="" processing="" of="" the="" application.="" any="" substitute="" specification]="">be< filed="" [must="" be]="">at any
point up to payment of the issue fee if it is< accompanied="" by="" a="" statement="" that="" the="" substitute="" specification="">:
(1)< includes="" no="" new="" matter="">, and
(2) includes only amendments submitted in accordance with the
requirements of Sec. 1.121(a) either prior to or concurrent with
submission of the substitute specification<. [such="" statement="" must="" be="" a="" verified="" statement="" if="" made="" by="" a="" person="" not="" registered="" to="" practice="" before="" the="" office.].="">(c) A substitute specification submitted under this section must
be submitted in clean form without markings as to amended material.
(d) A substitute specification under this section is not permitted
in reissue applications or in reexamination proceedings.< 49.="" section="" 1.133="" is="" proposed="" to="" be="" 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< [response]="" to="" office="" actions="" as="" specified="" in="" sec.="" 1.111,="" sec.="" 1.135.="" 50.="" the="" undesignated="" center="" heading="" in="" subpart="" b-national="" processing="" provisions,="" following="" sec.="" 1.133="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" time="" for="">Reply< [response]="" by="" applicant;="" abandonment="" of="" application="" 51.="" section="" 1.134="" is="" proposed="" to="" be="" revised="" as="" follows:="" sec.="" 1.134="" time="" period="" for="">reply< [response]="" to="" an="" office="" action.="" an="" office="" action="" will="" notify="" the="" applicant="" of="" any="" non-statutory="" or="" shortened="" statutory="" time="" period="" set="" for="">reply< [response]="" to="" an="" office="" action.="" unless="" the="" applicant="" is="" notified="" in="" writing="" that="" [response]="">a
reply< is="" required="" in="" less="" than="" six="" months,="" a="" maximum="" period="" of="" six="" months="" is="" allowed.="" 52.="" section="" 1.135="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 1.135="" abandonment="" for="" failure="" to="">reply< [respond]="" within="" time="" period.="" (a)="" if="" an="" applicant="" of="" a="" patent="" application="" fails="" to="">reply< [respond]="" 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="" action="" as="" the="" condition="" of="" the="" case="" may="" require.="" the="" admission="" of="">, or refusal to admit, any amendment after final
rejection, and any related proceedings,< an="" amendment="" not="" responsive="" to="" the="" last="" office="" action,="" or="" refusal="" to="" admit="" the="" same,="" and="" any="" proceedings="" relative="" thereto,="" shall="" not="" operate="" to="" save="" the="" application="" from="" abandonment.="" (c)="" when="" action="" by="" the="" applicant="" is="" a="" bona="" fide="" attempt="" to="">reply< [respond]="" and="" to="" advance="" the="" case="" to="" final="" action,="" and="" is="" substantially="" a="" complete="" [response]="">reply< to="" the="">non-final< office="" action,="" but="" consideration="" of="" some="" matter="" or="" compliance="" with="" some="" requirement="" has="" been="" inadvertently="" omitted,="">applicant< [opportunity="" to="" explain="" and="" supply="" the="" omission]="" may="" be="" given="">a new time period for reply under
Sec. 1.134 to supply the omission or to file a continuing application< [before="" the="" question="" of="" abandonment="" is="" considered].="" 53.="" section="" 1.136="" is="" proposed="" to="" be="" amended="" by="" revising="" the="" heading="" and="" paragraph="" (a)="" to="" read="" as="" follows:="" sec.="" 1.136="" filing="" of="" timely="">replies< [responses]="" with="" petition="" and="" fee="" for="" extension="" of="" time="" and="" extensions="" of="" time="" for="" cause.="" (a)(1)="" if="" an="" applicant="" is="" required="" to="">reply< [respond]="" within="" a="" nonstatutory="" or="" shortened="" statutory="" time="" period,="" applicant="" may="">reply< [respond]="" up="" to="" [four]="">five< months="" after="" the="" time="" [[page="" 49855]]="" period="" set="">and within the statutory period, if applicable,< if="" a="" petition="" for="" an="" extension="" of="" time="" and="" the="" fee="" set="" in="" sec.="" 1.17="">(a)< are="" filed="" [prior="" to="" or="" with="" the="" response],="" unless:="" (i)="" applicant="" is="" notified="" otherwise="" in="" an="" office="" action,="" (ii)="" the="">reply< [response]="" is="" a="" reply="" brief="" submitted="" pursuant="" to="" sec.="" 1.193(b),="" (iii)="" the="">reply< [response]="" is="" a="" request="" for="" an="" oral="" hearing="" submitted="" pursuant="" to="" sec.="" 1.194(b),="" (iv)="" the="">reply< [response]="" 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="" [response,="" the]="" petition="" [,]="" and="" the="" fee="" have="" been="" filed="" is="" the="" date="" [of="" the="" response="" and="" also="" 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< [in]="" no="" case="" may="" an="" applicant="">reply< [respond]="" 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.="" 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.="" see="" sec.="" 1.550(c)="" for="" extension="" of="" time="" in="" reexamination="" proceedings="" and="" sec.="" 1.645="" for="" extension="" of="" time="" in="" interference="" proceedings.="">(3) A paper may be submitted in an application with an
authorization to treat any concurrent or future reply requiring a
petition for an extension of time under paragraph (a) of this section
for its timely submission as incorporating such petition 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 paragraph (a) of this section for its timely submission.< *="" *="" *="" *="" *="" 54.="" section="" 1.137="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 1.137="" revival="" of="" abandoned="" application="">or lapsed patent<. (a)="" an="">abandoned< application="" [abandoned="" for="" failure="" to="" prosecute]="" may="" be="" revived="" as="" a="" pending="" application="">or a lapsed patent may be
revived as a patent< if="" it="" is="" shown="" to="" the="" satisfaction="" of="" the="" commissioner="" that="" the="" delay="">in prosecution or payment of any portion
of the required issue fee< was="" unavoidable.="" a="" petition="" to="" revive="" an="">unavoidably< abandoned="" application="">or unavoidably lapsed patent< must="" be="" [promptly="" filed="" after="" the="" applicant="" is="" notified="" of,="" or="" otherwise="" becomes="" aware="" of,="" the="" abandonment,="" and="" must="" be]="" accompanied="" by:="" [(1)="" a="" proposed="" response="" to="" continue="" prosecution="" of="" that="" application,="" or="" the="" filing="" of="" a="" continuing="" application,="" unless="" either="" has="" been="" previously="" filed;]="">(1) The required reply, unless previously filed. In a
nonprovisional application abandoned for failure to prosecute, the
proposed reply requirement may be met by the filing of a continuing
application. In an abandoned application or a lapsed patent, for
failure to pay any portion of the required issue fee, the proposed
reply must be the issue fee or any outstanding balance thereof;< (2)="" the="" petition="" fee="" as="" set="" forth="" in="" sec.="" 1.17(l);="" [and]="" (3)="" a="" showing="" that="" the="" delay="" was="" unavoidable="">and that the petition
was promptly filed after the applicant was notified of, or otherwise
became aware of, the abandonment or lapse; and< [the="" showing="" must="" be="" a="" verified="" showing="" if="" made="" by="" a="" person="" not="" registered="" to="" practice="" before="" the="" patent="" and="" trademark="" office.]="">(4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d))
required pursuant to paragraph (c) of this section.< (b)="" an="">abandoned< application="" [unintentionally="" abandoned="" for="" failure="" to="" prosecute]="" may="" be="" revived="" as="" a="" pending="" application="">or
lapsed patent may be revived as a patent< if="" the="" delay="">in prosecution
or payment of any portion of the required issue fee< was="" unintentional.="" a="" petition="" to="" revive="" an="" unintentionally="" abandoned="" application="">or
lapsed patent< must="" be="">accompanied by<:>(1) The required reply, unless previously filed. In a
nonprovisional application abandoned for failure to prosecute, the
proposed reply requirement may be met by the filing of a continuing
application. In an abandoned application or a lapsed patent, for
failure to pay any portion of the required issue fee, the proposed
reply must be the issue fee or any outstanding balance thereof;< [(1)="" accompanied="" by="" a="" proposed="" response="" to="" continue="" prosecution="" of="" that="" application,="" or="" filing="" of="" a="" continuing="" application,="" unless="" either="" has="" been="" previously="" filed;]="" (2)="" [accompanied="" by="" the]="" the="" petition="" fee="" as="" set="" forth="" in="" sec.="" 1.17(m);="" (3)="" [accompanied="" by="" a]="" a="" statement="" that="" the="" delay="" was="" unintentional.="" [the="" statement="" must="" be="" a="" verified="" statement="" if="" made="" by="" a="" person="" not="" registered="" to="" practice="" before="" the="" patent="" and="" trademark="" office.]="" 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.< [filed="" either:="" (i)="" within="" one="" year="" of="" the="" date="" on="" which="" the="" application="" became="" abandoned;="" or="" (ii)="" within="" three="" months="" of="" the="" date="" of="" the="" first="" decision="" on="" a="" petition="" to="" revive="" under="" paragraph="" (a)="" of="" this="" section="" which="" was="" filed="" within="" one="" year="" of="" the="" date="" on="" which="" the="" application="" became="" abandoned.]="" (c)="">In all design applications and in all nonprovisional utility
or plant applications filed before June 8, 1995< [in="" all="" applications="" filed="" before="" june="" 8,="" 1995,="" and="" all="" design="" applications="" filed="" on="" or="" after="" june="" 8,="" 1995],="" any="" petition="" pursuant="" to="" [paragraph="" (a)="" of]="" this="" section="" [not="" filed="" within="" six="" months="" of="" the="" date="" of="" abandonment="" of="" the="" application,]="" must="" be="" accompanied="" by="" a="" terminal="" disclaimer="" with="" fee="" under="" 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.="" the="" terminal="" disclaimer="" 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.="" (d)="" any="" request="" for="" reconsideration="" or="" review="" of="" a="" decision="" refusing="" to="" revive="" an="">abandoned< application="">or lapsed patent< upon="" petition="" filed="" pursuant="" to="" paragraphs="" (a)="" or="" (b)="" of="" 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.="" (e)="" the="" time="" periods="" set="" forth="" in="" this="" section="" [cannot="" be="" extended,="" except="" that="" the="" three-month="" period="" set="" forth="" in="" paragraph="" (b)(4)(ii)="" and="" the="" time="" period="" set="" forth="" in="" paragraph="" (d)="" of="" this="" section]="" may="" be="" extended="" under="" the="" provisions="" of="" sec.="" 1.136.="">(f) A provisional application, abandoned for failure to timely
reply to an Office requirement, may be revived pursuant to paragraphs
(a) or (b) this
[[Page 49856]]
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]="" 55.="" section="" 1.139="" is="" proposed="" to="" be="" removed="" and="" reserved.="" 56.="" section="" 1.142="" is="" proposed="" to="" be="" 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="" [his]="">an Office< action="" shall="" require="" the="" applicant="" in="" [his]="">a reply< [response]="" to="" that="" action="" to="" elect="" [that]="">an< invention="" to="" which="" [his]="">the< [claim]="">claims< shall="" be="" restricted,="" this="" official="" action="" being="" called="" a="" requirement="" for="" restriction="" (also="" known="" as="" a="" requirement="" for="" division).="" [if="" the="" distinctness="" and="" independence="" of="" the="" inventions="" be="" clear,="" such]="">Such< requirement="" will="">normally< be="" made="" before="" any="" action="" on="" the="" merits;="" however,="" it="" may="" be="" made="" at="" any="" time="" before="" final="" action="" [in="" the="" case="" at="" the="" discretion="" of="" the="" examiner].="" *="" *="" *="" *="" *="" 57.="" section="" 1.144="" is="" proposed="" to="" be="" 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< [response]="" 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.="" 58.="" section="" 1.146="" is="" proposed="" to="" be="" 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="" [restricted="" separately="" to="" each="" of]="">to< more="" than="" one="">patentably distinct< species="" embraced="" thereby,="" the="" examiner="" may="" require="" the="" applicant="" in="" his="">or her reply< [response]="" to="" that="" action="" to="" elect="" [that]="">a< species="" of="" his="" or="" her="" invention="" to="" which="" his="" or="" her="" claim="" shall="" be="" restricted="" if="" no="" [generic]="" claim="">to the genus< is="" [held]="">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="" case.="" 59.="" section="" 1.152="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 1.152="" design="" drawings.="" 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="" [article]="">design<. appropriate="">and adequate< surface="" shading="" [must]="">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.="">Color photographs and color drawings will be
permitted in design applications only after the granting of a petition
filed under Sec. 1.84(a)(2).< photographs="" and="" ink="" drawings="" must="" not="" 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.="" [color="" drawings="" and="" color="" photographs="" are="" not="" permitted="" in="" design="" patent="" applications.]="" 60.="" section="" 1.154="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (a)="" as="" follows:="" sec.="" 1.154="" arrangement="" of="" specification.="" *="" *="" *="" *="" *="" (a)="" preamble,="" stating="" name="" of="" the="" applicant="">,< [and]="" title="" of="" the="" designn="">, and a brief description of the nature and intended use of the
article in which the design is embodied<. *="" *="" *="" *="" *="" 61.="" section="" 1.155="" is="" proposed="" to="" be="" amended="" by="" removing="" paragraphs="" (b)="" through="" (f).="" sec.="" 1.155="" issue="" and="" term="" of="" design="" patents.="" *="" *="" *="" *="" *="" (b)="" [removed].="" (c)="" [removed].="" (d)="" [removed].="" (e)="" [removed].="" (f)="" [removed].="" 62.="" section="" 1.163="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (b)="" to="" read="" as="" follows:="" sec.="" 1.163="" specification.="" *="" *="" *="" *="" *="" (b)="" two="" copies="" of="" the="" specification="" (including="" the="" claim)="" must="" be="" submitted,="" but="" only="" one="" signed="" oath="" or="" declaration="" is="" required.="" [the="" second="" copy="" of="" the="" specification="" may="" be="" a="" legible="" carbon="" copy="" of="" the="" original.]="" 63.="" section="" 1.165="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (a)="" to="" read="" as="" follows:="" sec.="" 1.165="" plant="" drawings.="" (a)="" plant="" patent="" drawings="" [should="" be="" artistically="" and="" competently="" executed="" and]="" must="" comply="" with="" the="" requirements="" of="" sec.="" 1.84.="" view="" numbers="" and="" reference="" characters="" need="" not="" be="" employed="" unless="" required="" by="" the="" examiner.="" the="" drawing="" must="" disclose="" all="" the="" distinctive="" characteristics="" of="" the="" plant="" capable="" of="" visual="" representation.="" *="" *="" *="" *="" *="" 64.="" section="" 1.167(b)="" is="" proposed="" to="" be="" removed="" and="" reserved.="" sec.="" 1.167="" examination.="" *="" *="" *="" *="" *="" (b)="" [reserved].="" 65.="" section="" 1.171="" is="" proposed="" to="" be="" 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.="" [the="" application="" must="" be="" accompanied="" by="" a="" certified="" copy="" of="" an="" abstract="" of="" title="" or="" an="" order="" for="" a="" title="" report="" accompanied="" by="" the="" fee="" set="" forth="" in="" sec.="" 1.19(b)(4),="" to="" be="" placed="" in="" the="" file,="" and="" by="" an="" offer="" to="" surrender="" the="" original="" patent="" (sec.="" 1.178).]="" 66.="" section="" 1.172="" is="" proposed="" to="" be="" 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="" [assent]="">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 to the satisfaction of
the Commissioner. Ownership is
[[Page 49857]]
established by submitting to the Office documentary evidence of a chain
of title from the original owner to the assignee or by specifying
(e.g., reel and frame number, etc.) where such evidence is recorded in
the Office. Documents submitted to establish ownership may be required
to be recorded.< *="" *="" *="" *="" *="" 67.="" section="" 1.175="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 1.175="" reissue="" oath="" or="" declaration.="" (a)="" [applicants="" for="" reissue,]="">The reissue oath or declaration< in="" addition="" to="" complying="" with="" the="" requirements="" of="" sec.="" 1.63,="" must="" also="" [file="" with="" their="" applications]="">include< [a="" statement]="">statement(s)< [under="" oath="" or="" declaration]="" as="" follows:="" (1)="" [when]="">That< the="" applicant="" [verily]="" believes="" the="" original="" patent="" to="" be="" wholly="" or="" partly="" inoperative="" or="" invalid="" [,="" stating="" such="" belief="" and="" the="" reasons="" why.="" (2)="" when="" it="" is="" claimed="" that="" such="" patent="" is="" so="" inoperative="" or="" invalid="" ``]="" by="" reason="" of="" a="" defective="" specification="" or="" drawing,="" [``="" particularly="" specifying="" such="" defects.="" (3)="" when="" it="" is="" claimed="" that="" such="" patent="" is="" inoperative="" or="" invalid="" ``]="">or< by="" reason="" of="" the="" patentee="" claiming="" more="" or="" less="" than="" [he]="">patentee< had="" the="" right="" to="" claim="" in="" the="" patent,="" [''="" distinctly="" specifying="" the="" excess="" or="" insufficiency="" in="" the="" claims.]="">and< [(4)]="" [reserved]="" [(5)="" particularly]="">(2) stating< [specifying="" at="" least="" one="" error="" relied="" upon,="" and="" how="" they="" arose="" or="" occurred]="">that all errors being
corrected in the reissue application up to the time of filing of the
oath or declaration under this paragraph arose without deceptive
intention on the part of the applicant<. [(6)]="">(b)(1) For any error corrected not covered by the oath or
declaration submitted under paragraph (a) of this section, applicant
must submit a supplemental oath or declaration< [stating]="">stating< that=""> every such error< [said="" errors]="" 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) Other than as set forth in paragraphs (a)(2) and (b) of this
section, an oath or declaration under this section need not
specifically identify the error or errors that are being corrected.< [(7)="" acknowledging="" the="" duty="" to="" disclose="" to="" the="" office="" all="" information="" known="" to="" applicants="" to="" be="" material="" to="" patentability="" as="" defined="" in="" sec.="" 1.56.="" (b)="" corroborating="" affidavits="" or="" declarations="" of="" others="" may="" be="" filed="" and="" the="" examiner="" may,="" in="" any="" case,="" require="" additional="" information="" or="" affidavits="" or="" declarations="" concerning="" the="" application="" for="" reissue="" and="" its="" object.]="">(d) The oath or declaration required by paragraph (a) of this
section may be submitted under the provisions of Sec. 1.53(d)(1).< 68.="" section="" 1.176="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 1.176="" examination="" of="" reissue.="" [an="" original="" claim,="" if="" re-presented="" in="" the="" reissue="" application,="" is="" subject="" to="" reexamination,="" and="" the]="">The< entire="">reissue< application="" will="" be="" examined="" in="" the="" same="" manner="" as="" original="" applications,="" subject="" to="" the="" rules="" relating="" thereto,="" excepting="" that="" division="" will="" not="" be="" required="">between the original claims of the patent<. applications="" for="" reissue="" will="" be="" acted="" on="" by="" the="" examiner="" in="" advance="" of="" other="" applications,="" but="" not="" sooner="" than="" two="" months="" after="" the="" announcement="" of="" the="" filing="" of="" the="" reissue="" application="" has="" appeared="" in="" the="" official="" gazette.="" 69.="" section="" 1.177="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 1.177="">Multiple reissue applications< [reissue="" in="" divisions].="">(a)< the="" commissioner="" [may]="">will pursuant to< [,="" in]="" his="" or="" her="" discretion,="">under 35 U.S.C. 251,< [cause="" several]="">permit multiple
reissue< patents="" to="" be="" issued="" for="" distinct="" and="" separate="" parts="" of="" the="" thing="" patented[,upon]="">if the following conditions are met:
(1) Copending reissue applications for distinct and separate parts
of the thing patented have been filed,
(2) Applicant has filed in each copending application a timely< demand="" [of="" the="" applicant]="">by way of petition for multiple reissue
patents,
(3)< [upon="" payment="" of="" the]="">The< required="">filing and issue< [fee]="">fees< for="" each="" [division]="">copending reissue application have
been paid, and
(4) Each petition for multiple reissue patents is granted prior to
issuance of a reissue patent on any of the copending reissue
applications.
(b) Each petition under paragraph (a) of this section must be
accompanied by:
(1) A request for the issuance of multiple reissue patents for
distinct and separate parts of the thing patented,
(2) The petition fee pursuant to Sec. 1.17(i),
(3) An identification of the other copending reissue
application(s),
(4) A statement that the inventions as claimed in the copending
reissue applications are distinct and separate parts of the thing
patented, and
(5) A showing sufficient to establish to the satisfaction of the
Commissioner that the claimed subject matter of the thing patented is
in fact being divided into distinct and separate parts<. [each="" division="" of="" a="" reissue="" constitutes="" the="" subject="" of="" a="" separate="" specification="" descriptive="" of="" the="" part="" or="" parts="" of="" the="" invention="" claimed="" in="" such="" division;="" and="" the="" drawing="" may="" represent="" only="" such="" part="" or="" parts,="" subject="" to="" the="" provisions="" of="" secs.="" 1.83="" and="" 1.84.]="">(c) When the copending reissue applications are filed at the same
time, each petition under paragraph (a) of this section, must be filed
no later than the earliest submission of the reissue oath or
declaration under Sec. 1.175(a) for any of the copending reissue
applications. When the copending reissue applications are filed at
different times, each petition under paragraph (a) of this section must
be filed no later than the earliest of:
(1) Payment of the issue fee for any of the copending reissue
applications, or
(2) Submission of the reissue oath or declaration under
Sec. 1.175(a) in the later filed copending reissue application.< [on="" filing="" divisional="" reissue="" applications,="" they="" shall="" be="" referred="" to="" the="" commissioner.="" unless="" otherwise="" ordered="" by="" the="" commissioner="" upon="" petition="" and="" payment="" of="" the="" fee="" set="" forth="" in="" sec.="" 1.17(i),="" all="" the="" divisions="" of="" a="" reissue="" will="" issue="" simultaneously,="" if="" there="" is="" any="" controversy="" as="" to="" one="" division,="" the="" others="" will="" be="" withheld="" from="" issue="" until="" the="" controversy="" is="" ended,="" unless="" the="" commissioner="" orders="" otherwise].="">(d) Where the requirements of this section have not been complied
with, the Commissioner will not permit multiple reissue patents to be
issued.< 70.="" section="" 1.181="" is="" proposed="" to="" be="" amended="" by="" removing="" paragraphs="" (d),="" (e)="" and="" (g).="" sec.="" 1.181="" petition="" to="" the="" commissioner.="" *="" *="" *="" *="" *="" (d)="" [removed].="" (e)="" [removed].="" *="" *="" *="" *="" *="" (g)="" [removed].="" 71.="" section="" 1.182="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" [[page="" 49858]]="" sec.="" 1.182="" questions="" not="" specifically="" provided="" for.="" all="" cases="" not="" specifically="" provided="" for="" in="" the="" regulations="" of="" this="" part="" will="" be="" decided="" in="" accordance="" with="" the="" merits="" of="" each="" case="" 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).="" sec.="" 1.184="" [removed="" and="" reserved]="" 72.="" section="" 1.184="" is="" proposed="" to="" be="" removed="" and="" reserved.="" 73.="" section="" 1.191="" is="" proposed="" to="" be="" 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,="" or="" every="" owner="" of="" a="" patent="" under="" reexamination[,="" any="" of]="">whose claims
have< [the="" claims="" of="" which="" have]="" been="" twice="" rejected="">in a particular
application or patent under reexamination< [or="" who="" has="" been="" given="" a="" final="" rejection="" (sec.="" 1.113)],="" may="">file an< [,="" upon="" the="" payment="" of="" the="" fee="" set="" forth="" in="" sec.="" 1.17(e),]="" appeal="" from="" the="" decision="" of="" the="" examiner="" to="" the="" board="" of="" patent="" appeals="" and="" interferences="">by filing a
notice of appeal and paying the fee set forth in Sec. 1.17(e)< within="" the="" time="" allowed="" for="">reply< [response].="" (b)="" the="">notice of< appeal="" in="" an="" application="" or="" reexamination="" proceeding="" must="" identify="" the="" rejected="" claim="" or="" claims="" appealed,="" and="" must="" be="" signed="" by="" the="" applicant,="" patent="" owner="" or="" duly="" authorized="" attorney="" or="" agent.="" *="" *="" *="" *="" *="" 74.="" section="" 1.192="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (a)="" to="" read="" as="" follows:="" sec.="" 1.192="" appellant's="" brief.="" (a)="">Appellant< [the="" appellant]="" shall,="" within="" [2]="">two< months="" from="" the="" date="" of="" the="" notice="" of="" appeal="" under="" sec.="" 1.191="" in="" an="" application,="" reissue="" application,="" or="" patent="" under="" reexamination,="" or="" within="" the="" time="" allowed="" for="">reply< [response]="" to="" the="" action="" appealed="" from,="" if="" such="" time="" is="" later,="" file="" a="" brief="" in="" triplicate.="" the="" brief="" must="" be="" accompanied="" by="" the="" requisite="" fee="" set="" forth="" in="" sec.="" 1.17(f)="" and="" must="" set="" forth="" the="" authorities="" and="" arguments="" on="" which="" the="" appellant="" will="" rely="" to="" maintain="" the="" appeal.="" any="" arguments="" or="" authorities="" not="" included="" in="" the="" brief="" may="" be="" refused="" consideration="" by="" the="" board="" of="" patent="" appeals="" and="" interferences.="" *="" *="" *="" *="" *="" 75.="" section="" 1.193="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 1.193="" examiner's="" answer="">and substitute brief<. (a)="">(1)< the="" primary="" examiner="" may,="" within="" such="" time="" as="" may="" be="" directed="" by="" the="" commissioner,="" furnish="" a="" written="" statement="" in="" answer="" to="" [the]="" 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="" [the]="" appellant.="" if="" the="" primary="" examiner="" shall="" find="" that="" the="" appeal="" is="" not="" regular="" in="" form="" or="" does="" not="" relate="" to="" an="" appealable="" action,="" [he]="">the primary examiner< shall="" so="" state="" [and="" a="" petition="" from="" such="" decision="" may="" be="" taken="" to="" the="" commissioner="" as="" provided="" in="" sec.="" 1.181].="">(a)(2) An examiner's answer may not include a new ground of
rejection.< (b)="">(1) Appellant< [the="" appellant]="" may="" file="" a="" [reply]="">substitute
appeal< brief="" [directed="" only="" to="" such="" new="" points="" of="" argument="" as="" may="" be="" raised="" in="" the]="">under Sec. 1.192 to an< examiner's="" answer,="" within="" two="" months="" from="" the="" date="" of="" [such="" answer]="">the examiner's answer.< [the="" new="" points="" or="" argument="" shall="" be="" specifically="" identified="" in="" the="" reply="" brief.="" if="" the="" examiner="" determines="" that="" the="" reply="" brief="" is="" not="" directed="" only="" to="" new="" points="" of="" argument="" raised="" in="" the="" examiner's="" answer,="" the="" examiner="" may="" refuse="" entry="" of="" the="" reply="" brief="" and="" will="" so="" notify="" the="" appellant.="" if="" the="" examiner's="" answer="" expressly="" states="" that="" it="" includes="" a="" new="" ground="" of="" rejection,="" appellant="" must="" file="" a="" reply="" thereto="" within="" two="" months="" from="" the="" date="" of="" such="" answer="" to="" avoid="" dismissal="" of="" the="" appeal="" as="" to="" the="" claims="" subject="" to="" the="" new="" ground="" of="" rejection;="" such="" reply="" may="" be="" accompanied="" by="" any="" amendment="" or="" material="" appropriate="" to="" then="" new="" ground.]="" see="" sec.="" 1.136(b)="" for="" extensions="" of="" time="" for="" filing="" a="" [reply]="">substitute< brief="" in="" a="" patent="" application="" and="" sec.="" 1.550(c)="" for="" extensions="" of="" time="" in="" a="" reexamination="" proceeding.="">The primary examiner
may either acknowledge receipt and entry of the substitute appeal brief
or reopen prosecution to respond to any new issues raised in the
substitute appeal brief. A substitute examiner's answer is not
permitted, except where 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 brief has been filed, an appeal brief under Sec. 1.192 is an
appropriate reply by an applicant to the reopening of prosecution if it
is accompanied by a request that the appeal be reinstated. If
reinstatement of the appeal is elected, no amendments, affidavits
(Secs. 1.131 or 1.132) or other new evidence are permitted. If
reinstatement of the appeal is not elected, amendments, affidavits and
other new evidence are permitted.< 76.="" section="" 1.194="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 1.194="" oral="" hearing.="" (a)="" an="" oral="" hearing="" should="" be="" requested="" only="" in="" those="" circumstances="" in="" which="" [the]="" appellant="" considers="" such="" a="" hearing="" necessary="" or="" desirable="" for="" a="" proper="" presentation="" of="" [his]="">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(g)="" within="" two="" months="" after="" the="" date="" of="" the="" examiner's="" answer.="" if="" appellant="" requests="" an="" oral="" hearing="" and="" submits="" therewith="" the="" fee="" set="" forth="" in="" sec.="" 1.17(g),="" 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="" in="" a="" reexamination="" proceeding.="" (c)="" if="" no="" request="" and="" fee="" for="" oral="" hearing="" have="" been="" timely="" filed="" by="" [the]="" appellant,="" the="" appeal="" will="" be="" assigned="" for="" consideration="" and="" decision.="" if="" [the]="" appellant="" has="" requested="" an="" oral="" hearing="" and="" has="" submitted="" the="" fee="" set="" forth="" in="" sec.="" 1.17(g),="" a="" day="" of="" hearing="" will="" be="" set,="" and="" due="" notice="" thereof="" given="" to="" [the]="" appellant="" and="" to="" the="" primary="" examiner.="">A< [hearing]="">hearing< will="" be="" held="" as="" stated="" in="" the="" notice,="" and="" oral="" argument="" will="" be="" limited="" to="" twenty="" minutes="" for="" [the]="" 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.< 77.="" section="" 1.196="" is="" proposed="" to="" be="" 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="" [appealed]="">pending< claim,="" it="" may="" include="" in="" the="" decision="" a="" statement="" to="" that="" effect="" with="" its="" reasons="" for="" so="" holding,="" which="" statement="" shall="" [[page="" 49859]]="" constitute="" a="" new="">ground of< rejection="" of="" the="" [claims]="">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="" [of="" an="" appealed="" claim],="" the="" appellant="">, within two months from the date of the decision,< may="" exercise="" [any="" one]="">either< of="" the="" following="" two="" options="" with="" respect="" to="" the="" new="" ground="">of rejection<: (1)="" the="" appellant="" may="" 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="" [statement]="">new ground of rejection< shall="" be="" 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="" [for]="">of< rejection="" stated="" in="" the="" decision.="" should="" the="" examiner="" [again="" reject="" the="" application]="">reject the claims, appellant< [the="" applicant]="" may="" again="" appeal="">pursuant to Secs. 1.191 through 1.195< to="" the="" board="" of="" patent="" appeals="" and="" interferences.="" (2)="" the="" appellant="" may="" have="" the="" case="" reconsidered="" under="" sec.="" 1.197(b)="" by="" the="" board="" of="" patent="" appeals="" and="" interferences="" upon="" the="" same="" record.="" the="" request="" for="" reconsideration="" [shall]="">must< address="" the="" new="" ground="" [for]="">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="" reconsideration="" is="" sought.="" where="" request="" for="" such="" reconsideration="" is="" made,="" the="" board="" of="" patent="" appeals="" and="" interferences="" shall="" reconsider="" the="" new="" ground="" [for]="">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="" reconsideration="" is="" deemed="" to="" incorporate="" the="" earlier="" decision="">for purposes of appeal<, except="" for="" those="" portions="" specifically="" withdrawn="" on="" reconsideration,="" and="" is="" final="" for="" the="" purpose="" of="" judicial="" review="">, except when noted otherwise in the decision<. *="" *="" *="" *="" *="" [(d)="" although="" the="" board="" of="" patent="" appeals="" and="" interferences="" normally="" will="" confine="" its="" decision="" to="" a="" review="" of="" rejections="" made="" by="" the="" examiner,="" should="" it="" have="" knowledge="" of="" any="" grounds="" for="" rejecting="" any="" allowed="" claim="" it="" may="" include="" in="" its="" decision="" a="" recommended="" rejection="" of="" the="" claim="" and="" remand="" the="" case="" to="" the="" examiner.="" in="" such="" event,="" the="" board="" shall="" set="" a="" period,="" not="" less="" than="" one="" month,="" within="" which="" the="" appellant="" may="" submit="" to="" the="" examiner="" an="" appropriate="" amendment,="" a="" showing="" of="" facts="" or="" reasons,="" or="" both,="" in="" order="" to="" avoid="" the="" grounds="" set="" forth="" in="" the="" recommendation="" of="" the="" board="" of="" patent="" appeals="" and="" interferences.="" the="" examiner="" shall="" be="" bound="" by="" the="" recommendation="" and="" shall="" enter="" and="" maintain="" the="" recommended="" rejection="" unless="" an="" amendment="" or="" showing="" of="" facts="" not="" previously="" of="" record="" is="" filed="" which,="" in="" the="" opinion="" of="" the="" examiner,="" overcomes="" the="" recommended="" rejection.="" should="" the="" examiner="" make="" the="" recommended="" rejection="" final="" the="" applicant="" may="" again="" appeal="" to="" the="" board="" of="" patent="" appeals="" and="" interferences.]="">(1) 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.
(2) Appellant will be given a time limit within which to reply to
the inquiry made under paragraph (d)(1) of this section.< *="" *="" *="" *="" *="" 78.="" section="" 1.197="" is="" proposed="" to="" be="" 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="" case="" shall="" be="" returned="" to="" the="" examiner,="" subject="" to="" [the]="" appellant's="" right="" of="" appeal="" or="" other="" review,="" for="" such="" further="" action="" by="" [the]="" appellant="" or="" by="" the="" examiner,="" as="" the="" condition="" of="" the="" case="" may="" require,="" to="" carry="" into="" effect="" the="" decision.="" (b)="" a="" single="" request="" for="" reconsideration="" or="" modification="" of="" the="" decision="" may="" be="" made="" if="" filed="" within="">two months< [one="" month]="" from="" the="" date="" of="" the="" original="" decision,="" unless="" the="" original="" decision="" is="" so="" modified="" by="" the="" decision="" on="" reconsideration="" as="" to="" become,="" in="" effect,="" a="" new="" decision,="" and="" the="" board="" of="" patent="" appeals="" and="" interferences="" so="" states.="" the="" request="" for="" reconsideration="" shall="" state="" with="" particularity="" the="" points="" believed="" to="" have="" been="" misapprehended="" or="" overlooked="" in="" rendering="" the="" decision="" and="" also="" state="" all="" other="" grounds="" upon="" which="" reconsideration="" is="" sought.="" see="" sec.="" 1.136(b)="" for="" extensions="" of="" time="" for="" seeking="" reconsideration="" in="" a="" patent="" application="" and="" sec.="" 1.550(c)="" for="" extensions="" of="" time="" in="" a="" reexamination="" proceeding.="" *="" *="" *="" *="" *="" 79.="" section="" 1.291="" is="" proposed="" to="" be="" 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.="" the="" office="" may="" communicate="" with="" the="" applicant="" regarding="" any="" protest="" and="" may="" require="" the="" applicant="" to="">reply< [respond]="" to="" specific="" questions="" raised="" by="" the="" protest.="" in="" the="" absence="" of="" a="" request="" by="" the="" office,="" an="" applicant="" has="" no="" duty="" to,="" and="" need="" not,="">reply< [respond]="" 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.="" 80.="" section="" 1.294="" is="" proposed="" to="" be="" 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< [response]="" established="" pursuant="" to="" this="" section="" are="" subject="" to="" the="" extension="" of="" time="" provisions="" of="" sec.="" 1.136.="" after="">reply< [response]="" 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.="" *="" *="" *="" *="" *="" [[page="" 49860]]="" 81.="" section="" 1.304="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (a)="" 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="" [consideration]="">reconsideration< or="" modification="" 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.="" *="" *="" *="" *="" *="" 82.="" section="" 1.312="" is="" proposed="" to="" be="" 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.< 83.="" section="" 1.313="" is="" proposed="" to="" be="" amended="" by="" adding="" a="" new="" paragraph="" (c)="" to="" read="" as="" follows:="" sec.="" 1.313="" withdrawal="" from="" issue.="" *="" *="" *="" *="" *="">(c) Unless an applicant receives written notification that the
application has been withdrawn from issue at least two weeks prior to
the projected date of issue, applicant should expect that the
application will issue as a patent.< 84.="" section="" 1.316="" paragraphs="" (b)="" through="" (f)="" are="" proposed="" to="" be="" removed.="" sec.="" 1.316="" application="" abandoned="" for="" failure="" to="" pay="" issue="" fee.="" *="" *="" *="" *="" *="" (b)="" [removed].="" (c)="" [removed].="" (d)="" [removed].="" (e)="" [removed].="" (f)="" [removed].="" 85.="" section="" 1.317="" paragraphs="" (b)="" through="" (f)="" are="" proposed="" to="" be="" removed.="" sec.="" 1.317="" lapsed="" patents;="" delayed="" payment="" of="" balance="" of="" issue="" fee.="" *="" *="" *="" *="" *="" (b)="" [removed].="" (c)="" [removed].="" (d)="" [removed].="" (e)="" [removed].="" (f)="" [removed].="" sec.="" 1.318="" [removed="" and="" reserved].="" 86.="" section="" 1.318="" is="" proposed="" to="" be="" removed="" and="" reserved.="" 87.="" section="" 1.324="" is="" proposed="" to="" be="" 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, < [whenever="" a="" patent="" is="" issued="" and="" it="" appears="" that="" the="" correct="" inventor="" or="" inventors="" were="" not="" named="" through="" error="" without="" deceptive="" intention="" on="" the="" part="" of="" the="" actual="" inventor="" or="" inventors,]="" the="" commissioner="" may,="" on="" petition="" [of="" all="" the="" parties="" and="" the="" assignees="" and="" satisfactory="" proof="" of="" the="" facts="" and="" payment="" of="" the="" fee="" set="" forth="" in="" sec.="" 1.20(b)],="" 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< [request]="" to="" correct="" inventorship="" of="" a="" patent="" involved="" in="" an="" interference="" shall="" comply="" with="" the="" requirements="" of="" this="" section="" and="" shall="" 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 their
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; such statement must comply
with the requirements of Sec. 3.73(b); and
(4) The fee set forth in Sec. 1.20(b).< sec.="" 1.325="" [removed="" and="" reserved]="" 88.="" section="" 1.325="" is="" proposed="" to="" be="" removed="" and="" reserved.="" sec.="" 1.351="" [removed="" and="" reserved]="" 89.="" sections="" 1.351="" is="" proposed="" to="" be="" removed="" and="" reserved.="" sec.="" 1.352="" [removed="" and="" reserved]="" 90.="" section="" 1.352="" is="" proposed="" to="" be="" removed="" and="" reserved.="" 91.="" section="" 1.366="" is="" proposed="" to="" be="" 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="" and="" 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="" 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="" [certificate]="" procedures="" of="" either="" 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="" [serial]="">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="" [[page="" 49861]]="" changed="" or="" claimed,="" the="" amount="" of="" the="" maintenance="" fee="" and="" any="" surcharge="" being="" paid,="" and="" any="" assigned="" payor="" number[,="" the="" patent="" issue="" date="" and="" the="" united="" states="" application="" filing="" date].="" 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="" [serial]="" number="" as="" required="" by="" paragraph="" (c)="" of="" this="" section="" and="" should="" also="" include="" the="" original="" patent="" number[,="" the="" original="" patent="" issue="" date,="" and="" the="" original="" united="" states="" application="" filing="" date].="" *="" *="" *="" *="" *="" 92.="" section="" 1.377="" is="" proposed="" to="" be="" 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="" paragraph="" (b)="" of="" sec.="" 1.181="" 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.="" [such="" petition="" must="" be="" in="" the="" form="" of="" a="" verified="" statement="" if="" made="" by="" a="" person="" not="" registered="" to="" practice="" before="" the="" patent="" and="" trademark="" office.]="" 93.="" section="" 1.378="" is="" proposed="" to="" be="" 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.="" [such="" petition="" must="" be="" in="" the="" form="" of="" a="" verified="" statement="" if="" made="" by="" a="" person="" not="" registered="" to="" practice="" before="" the="" patent="" and="" trademark="" office.]="" *="" *="" *="" *="" *="" 94.="" section="" 1.425="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 1.425="" filing="" by="" other="" than="" inventor.="" [(a)="" if="" a="" joint="" inventor="" refuses="" to="" join="" in="" an="" international="" application="" which="" designates="" the="" united="" states="" of="" america="" or="" cannot="" be="" found="" or="" reached="" after="" diligent="" effort,="" the="" international="" application="" which="" designates="" the="" united="" states="" of="" america="" may="" be="" filed="" by="" the="" other="" inventor="" on="" behalf="" of="" himself="" or="" herself="" and="" the="" omitted="" inventor.="" such="" an="" international="" application="" which="" designates="" the="" united="" states="" of="" america="" must="" be="" accompanied="" by="" proof="" of="" the="" pertinent="" facts="" and="" must="" state="" the="" last="" known="" address="" of="" the="" omitted="" inventor.="" the="" patent="" and="" trademark="" office="" shall="" forward="" notice="" of="" the="" filing="" of="" the="" international="" application="" to="" the="" omitted="" inventor="" at="" said="" address.="" (b)="" whenever="" an="" inventor="" refuses="" to="" execute="" an="" international="" application="" which="" designates="" the="" united="" states="" of="" america,="" or="" cannot="" be="" found="" or="" reached="" after="" diligent="" effort,="" a="" person="" to="" whom="" the="" 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="" file="" the="" international="" application="" on="" behalf="" of="" and="" as="" agent="" for="" the="" inventor.="" such="" an="" international="" application="" which="" designates="" the="" united="" states="" of="" america="" must="" be="" accompanied="" by="" proof="" of="" the="" pertinent="" facts="" and="" a="" showing="" that="" such="" action="" is="" necessary="" to="" preserve="" the="" rights="" of="" the="" parties="" or="" to="" prevent="" irreparable="" damage="" and="" must="" state="" the="" last="" known="" address="" of="" the="" inventor.="" the="" assignment,="" written="" agreement="" to="" assign="" or="" other="" evidence="" of="" proprietary="" interest,="" or="" a="" verified="" copy="" thereof,="" must="" be="" filed="" in="" the="" patent="" and="" trademark="" office.="" the="" office="" shall="" forward="" notice="" of="" the="" filing="" of="" the="" application="" to="" the="" inventor="" at="" the="" address="" stated="" in="" the="" application.]="" 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="" could="" not="" 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.="" 95.="" section="" 1.484="" is="" proposed="" to="" be="" 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< [respond].="" (e)="" if="" no="" written="" opinion="" under="" paragraph="" (d)="" of="" this="" section="" is="" necessary,="" or="" after="" any="" written="" opinion="" and="" the="">reply< [response]="" thereto="" or="" the="" expiration="" of="" the="" time="" limit="" for="">reply< [response]="" 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< [response]="" 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< [response]="" to="" the="" written="" opinion="" or,="" if="" applicant="" files="" no="">reply< [response],="" be="" made="" of="" record="" in="" the="" file="" by="" the="" examiner.="" 96.="" section="" 1.485="" is="" proposed="" to="" be="" 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< [response]="" 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.="" *="" *="" *="" *="" *="" 97.="" section="" 1.488="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (b)="" to="" read="" as="" follows:="" sec.="" 1.488="" determination="" of="" unity="" of="" invention="" before="" the="" international="" preliminary="" examining="" authority.="" *="" *="" *="" *="" *="" (b)="" if="" the="" international="" preliminary="" examining="" authority="" considers="" that="" the="" international="" application="" does="" not="" comply="" with="" the="" requirement="" of="" unity="" of="" invention,="" it="" may:="" (1)="" issue="" a="" written="" opinion="" and/or="" an="" international="" preliminary="" examination="" report,="" in="" respect="" of="" the="" entire="" international="" application="" and="" indicate="" that="" unity="" of="" invention="" is="" lacking="" and="" specify="" the="" reasons="" therefor="" without="" extending="" an="" invitation="" to="" restrict="" or="" pay="" additional="" fees.="" no="" international="" preliminary="" examination="" will="" be="" conducted="" on="" inventions="" not="" previously="" [[page="" 49862]]="" searched="" by="" an="" international="" searching="" authority.="" (2)="" invite="" the="" applicant="" to="" restrict="" the="" claims="" or="" pay="" additional="" fees,="" pointing="" out="" the="" categories="" of="" the="" invention="" found,="" within="" a="" set="" time="" limit="" which="" will="" not="" be="" extended.="" no="" international="" preliminary="" examination="" will="" be="" conducted="" on="" inventions="" not="" previously="" searched="" by="" an="" international="" preliminary="" examining="" authority,="" or="" (3)="" if="" applicant="" fails="" to="" restrict="" the="" claims="" or="" pay="" additional="" fees="" within="" the="" time="" limit="" set="" for="">reply< [response],="" 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.="" *="" *="" *="" *="" *="" 98.="" section="" 1.492="" is="" proposed="" to="" be="" 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) 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.< 99.="" section="" 1.494="" is="" proposed="" to="" be="" 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< [response]="" thereto="" submitted="" to="" the="" office.="" *="" *="" *="" *="" *="" 100.="" section="" 1.495="" is="" proposed="" to="" be="" 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< [response]="" thereto="" submitted="" to="" the="" office.="" *="" *="" *="" *="" *="" 101.="" section="" 1.510="" is="" proposed="" to="" be="" 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.="" 1.121(f)]="">Sec. 1.530(d)<. 102.="" section="" 1.530="" is="" proposed="" to="" be="" amended="" by="" revising="" the="" heading="" and="" paragraphs="" (a)="" and="" (d)="" to="" read="" as="" follows:="" sec.="" 1.530="" statement="" and="" [amendment]="">reply< by="" patent="" owner.="" (a)="" except="" as="" provided="" in="" sec.="" 1.510(e),="" no="" statement="" or="" other="">reply< [response]="" by="" the="" patent="" owner="" shall="" be="" filed="" prior="" to="" the="" determinations="" made="" in="" accordance="" with="" secs.="" 1.515="" or="" 1.520.="" if="" a="" premature="" statement="" or="" other="">reply< [response]="" is="" filed="" by="" the="" patent="" owner="" it="" will="" not="" be="" acknowledged="" or="" considered="" in="" making="" the="" determination.="" *="" *="" *="" *="" *="" [(d)="" any="" proposed="" amendment="" to="" the="" description="" and="" claims="" must="" be="" made="" in="" accordance="" with="" sec.="" 1.121(f).="" no="" amendment="" may="" enlarge="" the="" scope="" of="" the="" claims="" of="" the="" patent="" or="" introduce="" new="" matter.="" no="" amended="" or="" new="" claims="" may="" be="" proposed="" for="" entry="" in="" an="" expired="" patent.="" moreover,="" no="" amended="" or="" new="" claims="" will="" be="" incorporated="" into="" the="" patent="" by="" certificate="" issued="" after="" the="" expiration="" of="" the="" patent.]="">(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 claims: Amendments to the
specification other than claims may only be made as follows:
(i) The precise point in the specification must be indicated where
an amendment is to be made.
(ii) Amendments must be made by submission of the entire text of
the rewritten paragraph(s) with markings pursuant to paragraph
(d)(1)(iv) of this section.
(iii) Each submission of an amendment to the specification of the
patent must include all amendments to the specification relative to the
patent as of the date of the submission. This would include amendments
to the specification of the patent submitted for the first time as well
as any previously submitted amendments that are still desired. Any
previously submitted amendments to the specification that are no longer
desired must not be included in the submission.
(iv) 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 are made as follows:
(i)(A) The amendment must include the entire text of each patent
claim which is amended and each proposed claim with marking pursuant to
paragraph (d)(2)(i)(C) of this section, except a patent or proposed
claim should be cancelled by a statement cancelling the patent or
proposed claim without presentation of the text of the patent or
proposed claim.
(B) Patent claims must not be renumbered and the numbering of any
[[Page 49863]]
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 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, as of the
date of the amendment, of all patent claims, of all claims currently
proposed, and of all previously proposed claims that are no longer
being proposed.
(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.
(iv) Each submission of an amendment to any claim (patent claims
and all proposed claims) must include all amendments to the claims as
of the date of the submission. This would include amendments to the
claims submitted for the first time as well as any previously submitted
amendments to the claims that are still desired. Any previously
submitted amendments to the claims that are no longer desired must not
be included in the submission. A copy of any patent claims that have
not been amended are not to be presented with each amendment
submission.
(v) The failure to submit a copy of any proposed claim will be
construed as a direction to cancel that claim.
(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) Amendments made to a patent during a reexamination proceeding
will not be effective until a reexamination certificate is issued.
(5) The form of replies, amendments, briefs, appendices and other
papers must be in accordance with the following requirements. All
documents, including any amendments or corrections thereto, must be in
the English language. All papers which are to become a part of the
permanent records of the Patent and Trademark Office must be legibly
written either by a typewriter or mechanical printer in permanent dark
ink or its equivalent in portrait orientation on flexible, strong,
smooth, non-shiny, durable, and white paper. All printed matter must
appear in at least 11 point type. All of the 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. 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 1\1/2\ or double spaced. The
pages must be numbered consecutively, starting with 1, the numbers
being centrally located above or preferably, below, the text.
(6) Drawings: 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
changed submitted in compliance with Sec. 1.84< *="" *="" *="" *="" *="" 103.="" section="" 1.550="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraphs="" (a),="" (b)="" and="" (d)="" 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="">replies< [responses]="" thereto,="" the="" examination="" will="" be="" conducted="" in="" accordance="" with="" secs.="" 1.104="" through="" 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="" [30]="">thirty< days="" to="">reply< [respond]="" to="" any="" office="" action.="" such="">reply< [response]="" may="" include="" further="" statements="" in="">reply< [response]="" to="" any="" rejections="" and/="" or="" proposed="" amendments="" or="" new="" claims="" to="" place="" the="" patent="" in="" a="" condition="" where="" all="" claims,="" if="" amended="" as="" proposed,="" would="" be="" patentable.="" *="" *="" *="" *="" *="" (d)="" if="" the="" patent="" owner="" fails="" to="" file="" a="" timely="" and="" appropriate="">reply< [response]="" to="" any="" office="" action,="" the="" reexamination="" proceeding="" will="" be="" terminated="" and="" the="" commissioner="" will="" proceed="" to="" issue="" a="" certificate="" under="" sec.="" 1.570="" in="" accordance="" with="" the="" last="" action="" of="" the="" office.="" *="" *="" *="" *="" *="" 104.="" section="" 1.560="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (b)="" to="" read="" as="" follows:="" sec.="" 1.560="" interviews="" in="" reexamination="" proceedings.="" *="" *="" *="" *="" *="" (b)="" in="" every="" instance="" 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="" patent="" owner.="" an="" interview="" does="" not="" remove="" the="" necessity="" for="">reply< [response]="" to="" office="" actions="" as="" specified="" in="" sec.="" 1.111.="" 105.="" section="" 1.770="" is="" proposed="" to="" be="" 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< [response]="" 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.="" 106.="" section="" 1.785="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (d)="" to="" read="" as="" follows:="" sec.="" 1.785="" multiple="" applications="" for="" extension="" of="" term="" of="" the="" same="" patent="" or="" 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="" or="" express="" and="" exclusive="" authorization="" from="" the="" holder="" of="" the="" regulatory="" [[page="" 49864]]="" approval="" to="" rely="" on="" the="" regulatory="" review="" period="" for="" extension.="" 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="" within="" a="" non-="" extendable="" period="" of="" not="" less="" than="" one="" [(1)]="" 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< [response]="" set="" shall="" be="" regarded="" as="" conclusively="" establishing="" that="" the="" applicant="" is="" not="" the="" holder="" of="" the="" regulatory="" approval="" and="" is="" not="" expressly="" and="" exclusively="" authorized="" by="" the="" holder="" of="" the="" regulatory="" approval="" to="" seek="" the="" extension="" being="" sought.="" *="" *="" *="" *="" *="" 107.="" section="" 1.804="" is="" proposed="" to="" be="" 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="" shall="" promptly="" submit="" a="" [verified]="" statement="" from="" a="" person="" in="" a="" position="" to="" corroborate="" the="" fact,="" [and="" shall="" state]="">stating<, that="" the="" biological="" material="" which="" is="" deposited="" is="" a="" biological="" material="" specifically="" identified="" in="" the="" application="" as="" filed[,="" except="" if="" the="" person="" is="" an="" attorney="" or="" agent="" registered="" to="" practice="" before="" the="" office,="" in="" which="" case="" the="" statement="" need="" not="" be="" verified].="" 108.="" section="" 1.805="" is="" proposed="" to="" be="" 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:="" (1)="" includes="" a="" [verified]="" statement="" of="" the="" reason="" for="" making="" the="" replacement="" or="" supplemental="" deposit;="" (2)="" includes="" a="" [verified]="" statement="" from="" a="" person="" in="" a="" position="" to="" corroborate="" the="" fact,="" and="" [shall="" state]="">stating<, that="" the="" replacement="" or="" supplemental="" deposit="" is="" of="" a="" biological="" material="" which="" is="" identical="" to="" that="" originally="" deposited;="" (3)="" includes="" a="" [verified]="" 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="" [verified]="" 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[,="" except="" that="" if="" the="" person="" making="" one="" or="" more="" of="" the="" required="" statements="" or="" showing="" is="" an="" attorney="" or="" agent="" registered="" to="" practice="" before="" the="" office,="" that="" statement="" or="" showing="" need="" not="" be="" verified].="" *="" *="" *="" *="" *="" part="" 3--assignment,="" recording,="" and="" rights="" of="" assignee="" the="" authority="" citation="" for="" part="" 3="" continues="" to="" read="" as="" follows:="" authority:="" 15="" u.s.c.="" 1123;="" 35="" u.s.c.="" 6.="" 109a.="" section="" 3.11="" is="" proposed="" to="" be="" 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 (3 CFR 1943--1948 Comp.) 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 (3 CFR 1943--1948 Comp.) to be filed
will be recorded as provided in this Part.< 110.="" section="" 3.26="" is="" proposed="" to="" be="" 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="" [a="" verified]="">an< english="" translation="" signed="" by="" the="" individual="" making="" the="" translation.="" 110a.="" section="" 3.27="" is="" proposed="" to="" be="" 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< [documents]="" and="" cover="" sheets="" to="" be="" recorded="" should="" be="" addressed="" to="" the="" commissioner="" of="" patents="" and="" trademarks,="" box="" assignments,="" washington,="" dc="" 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 (3 CFR 1943--1948
Comp.) 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, DC 20231.< 111.="" section="" 3.31="" is="" proposed="" to="" be="" 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)).< 112.="" section="" 3.41="" is="" proposed="" to="" be="" 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< [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]="">chapter< for="" patents="" and="" in="" sec.="" 2.6(q)="" of="" this="" [chapter]="">chapter< for="" trademarks.="">(b) No fee is required for each patent application and patent
against which a document required by Executive Order 9424 (3 CFR 1943-
1948 Comp.) 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));
[[Page 49865]]
(2) The cover sheet is filed in a format approved by the Office;
and
(3) The document and cover sheet are mailed to the Office in
compliance with Sec. 3.27(b).< 113.="" section="" 3.51="" is="" proposed="" to="" be="" 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]="">part< is="" filed="" in="" the="" office.="" a="" document="" which="" does="" not="" comply="" with="" the="" identification="" requirements="" of="" 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="" [certification]="" procedure="" under="" either="" sec.="" 1.8="" or="" sec.="" 1.10="" of="" this="" [chapter]="">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.="" 114.="" section="" 3.58="" is="" proposed="" to="" be="" 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="" (3="" cfr="" 1943-1948="" comp.).="" 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="" (3="" cfr="" 1943-1948="" comp.).="" 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="">< 115.="" section="" 3.73="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (b)="" to="" read="" as="" follows:="" sec.="" 3.73="" establishing="" right="" of="" assignee="" to="" prosecute.="" *="" *="" *="" *="" *="" (b)="" when="" the="" assignee="" of="" the="" entire="" right,="" title="" and="" interest="" 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="" documentary="" evidence="" of="" a="" chain="" of="" title="" from="" the="" original="" owner="" to="" the="" assignee="">(e.g., copy of an
executed assignment submitted for recording, etc.)< or="" by="" specifying="" (e.g.,="" reel="" and="" frame="" number,="" etc.)="" where="" such="" evidence="" is="" recorded="" in="" the="" office.="" 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.="" [in="" addition,="" the="" assignee="" of="" a="" patent="" application="" or="" patent="" must="" submit="" a="" statement="" specifying="" that="" the="" evidentiary="" documents="" have="" been="" reviewed="" and="" certifying="" that,="" to="" the="" best="" of="" assignee's="" knowledge="" and="" belief,="" title="" is="" in="" the="" assignee="" seeking="" to="" take="" the="" action.]="" part="" 5--secrecy="" of="" certain="" inventions="" and="" licenses="" to="" export="" and="" file="" applications="" in="" foreign="" countries="" 116.="" the="" authority="" citation="" for="" part="" 5="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" authority:="" 35="" u.s.c.="" 6,="" 41,="" 181-188;="" 22="" u.s.c.="" 2751="" et="" seq.;="" 22="" u.s.c.="" 3201="" et="" seq.;="" 42="" u.s.c.="" 2011="" et="" seq..="" 117.="" section="" 5.1="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 5.1="" [defense="" inspection="" of="" certain="" applications]="">Correspondence<. [(a)="" the="" provisions="" of="" this="" part="" shall="" apply="" to="" both="" national="" and="" international="" applications="" filed="" in="" the="" patent="" and="" trademark="" office="" and,="" with="" respect="" to="" inventions="" made="" in="" the="" united="" states,="" to="" applications="" filed="" in="" any="" foreign="" country="" or="" any="" international="" authority="" other="" than="" the="" united="" states="" receiving="" office.="" the="" (1)="" filing="" of="" a="" national="" or="" an="" international="" application="" in="" a="" foreign="" country="" or="" with="" an="" international="" authority="" other="" than="" the="" united="" states="" receiving="" office,="" or="" (2)="" transmittal="" of="" an="" international="" application="" to="" a="" foreign="" agency="" or="" an="" international="" authority="" other="" than="" the="" united="" states="" receiving="" office="" is="" considered="" to="" be="" a="" foreign="" filing="" within="" the="" meaning="" of="" chapter="" 17="" of="" title="" 35,="" united="" states="" code.="" (b)="" in="" accordance="" with="" the="" provisions="" of="" 35="" u.s.c.="" 181,="" patent="" applications="" containing="" subject="" matter="" the="" disclosure="" of="" which="" might="" be="" detrimental="" to="" the="" national="" security="" are="" made="" available="" for="" inspection="" by="" defense="" agencies="" as="" specified="" in="" said="" section.="" only="" applications="" obviously="" relating="" to="" national="" security,="" and="" applications="" within="" fields="" indicated="" to="" the="" patent="" and="" trademark="" office="" by="" the="" defense="" agencies="" as="" so="" related,="" are="" made="" available.="" the="" inspection="" will="" be="" made="" only="" by="" responsible="" representatives="" authorized="" by="" the="" agency="" to="" review="" applications.="" such="" representatives="" are="" required="" to="" sign="" a="" dated="" acknowledgment="" of="" access="" accepting="" the="" condition="" that="" information="" obtained="" from="" the="" inspection="" will="" be="" used="" for="" no="" purpose="" other="" than="" the="" administration="" of="" 35="" u.s.c.="" 181-188.="" copies="" of="" applications="" may="" be="" made="" available="" to="" such="" representatives="" for="" inspection="" outside="" the="" patent="" and="" trademark="" office="" under="" conditions="" assuring="" that="" the="" confidentiality="" of="" the="" applications="" will="" be="" maintained,="" including="" the="" conditions="" that:="" (1)="" all="" copies="" will="" be="" returned="" to="" the="" patent="" and="" trademark="" office="" promptly="" if="" no="" secrecy="" order="" is="" imposed,="" or="" upon="" rescission="" of="" such="" order="" if="" one="" is="" imposed,="" and="" (2)="" no="" additional="" copies="" will="" be="" made="" by="" the="" defense="" agencies.="" a="" record="" of="" the="" removal="" and="" return="" of="" copies="" made="" available="" for="" defense="" inspection="" will="" be="" maintained="" by="" the="" patent="" and="" trademark="" office.="" applications="" relating="" to="" atomic="" energy="" are="" made="" available="" to="" the="" department="" of="" energy="" as="" specified="" in="" 1.14="" of="" this="" chapter.]=""> All correspondence in connection with this part, including
petitions, must
[[Page 49866]]
be addressed to ``Assistant Commissioner for Patents (Attention
Licensing and Review), Washington, DC 20231.''< 118.="" section="" 5.2="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (b)="" and="" removing="" paragraphs="" (c)="" and="" (d)="" to="" read="" as="" follows:="" sec.="" 5.2="" secrecy="" order.="" *="" *="" *="" *="" *="" (b)="" [the="" secrecy="" order="" is="" directed="" to="" the="" applicant,="" his="" successors,="" any="" and="" all="" assignees,="" and="" their="" legal="" representatives;="" hereinafter="" designated="" as="" principals.]="">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.< [(c)="" a="" copy="" of="" the="" secrecy="" order="" will="" be="" forwarded="" to="" each="" principal="" of="" record="" in="" the="" application="" and="" will="" be="" accompanied="" by="" a="" receipt,="" identifying="" the="" particular="" principal,="" to="" be="" signed="" and="" returned.="" (d)="" the="" secrecy="" order="" is="" directed="" to="" the="" subject="" matter="" of="" the="" application.="" where="" any="" other="" application="" in="" which="" a="" secrecy="" order="" has="" not="" been="" issued="" discloses="" a="" significant="" part="" of="" the="" subject="" matter="" of="" the="" application="" under="" secrecy="" order,="" the="" other="" application="" and="" the="" common="" subject="" matter="" should="" be="" called="" to="" the="" attention="" of="" the="" patent="" and="" trademark="" office.="" such="" a="" notice="" may="" include="" any="" material="" such="" as="" would="" be="" urged="" in="" a="" petition="" to="" rescind="" secrecy="" orders="" on="" either="" of="" the="" applications.]="" 119.="" section="" 5.3="" is="" proposed="" to="" be="" 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< [response]="" 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.="" *="" *="" *="" *="" *="" 120.="" section="" 5.4="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraphs="" (a)="" and="" (d)="" to="" read="" as="" follows:="" 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.="" [the="" petition="" must="" be="" accompanied="" by="" one="" copy="" of="" the="" application="" or="" an="" order="" for="" the="" same,="" unless="" a="" showing="" is="" made="" that="" such="" a="" copy="" has="" already="" been="" furnished="" to="" the="" department="" or="" agency="" which="" caused="" the="" secrecy="" order="" to="" be="" issued.]="" *="" *="" *="" *="" *="" (d)="" [unless="" based="" upon="" facts="" of="" public="" record,="" the="" petition="" must="" be="" verified.]=""> 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.< 121.="" section="" 5.5="" is="" proposed="" to="" be="" 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="" [and="" be="" accompanied="" by="" one="" copy="" of="" the="" application="" or="" an="" order="" for="" the="" same,="" unless="" a="" showing="" is="" made="" that="" such="" a="" copy="" has="" already="" been="" furnished="" to="" the="" department="" or="" agency="" which="" caused="" the="" secrecy="" order="" to="" be="" issued].="" *="" *="" *="" *="" *="" (e)="" [the="" permit="" or="" modification="" may="" contain="" conditions="" and="" limitations.]="">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]="" 122.="" section="" 5.6="" is="" proposed="" to="" be="" removed="" and="" reserved.="" sec.="" 5.7="" [removed="" and="" reserved]="" 123.="" section="" 5.7="" is="" proposed="" to="" be="" removed="" and="" reserved.="" sec.="" 5.8="" [removed="" and="" reserved]="" 124.="" section="" 5.8="" is="" proposed="" to="" be="" removed="" and="" reserved.="" 125.="" section="" 5.11="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraphs="" (b)="" and="" (c)="" 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)="" of="" this="" section="" 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]="">120< through="" 130="" (international="" traffic="" in="" arms="" regulations="" of="" the="" department="" of="" state),="" 15="" cfr="" [part="" 379="" (regulations="" of="" the="" bureau="" of="" export="" administration,="" department="" of="" commerce)]="">Parts 768-799 (Export Administration Regulations of the
Department of Commerce)< and="" 10="" cfr="" part="" 810="" [(foreign="" atomic="" energy="" programs="" of="" the="" department="" of="" energy)]="">(Assistance to Foreign Atomic
Energy Activities--Regulations 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="" [121]="">120< through="" 130="" (international="" traffic="" in="" arms="" regulations="" of="" the="" department="" of="" state),="" 15="" cfr="" [part="" 379="" (regulations="" of="" the="" bureau="" of="" export="" administration,="" department="" of="" commerce)]="">Parts 768-799 (Export Administration Regulations of the
Department of Commerce)< and="" 10="" cfr="" part="" 810="" [(foreign="" atomic="" energy="" programs="" of="" the="" department="" of="" energy)]="">(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="" [parts="" 121="" through="" 130]="">Part 120<, 15="" cfr="" [[page="" 49867]]="" part="" [379]="">779< and="">activities covered by< 10="" cfr="" part="" 810.="" *="" *="" *="" *="" *="" 126.="" section="" 5.13="" is="" proposed="" to="" be="" 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="" be="" accompanied="" by="" the="" required="" fee="" (sec.="" 1.17(h)),="" if="" expedited="" handling="" of="" the="" petition="" is="" also="" sought,="" and="" a="" legible="" copy="" of="" the="" material="" upon="" which="" a="" license="" is="" desired.="" this="" copy="" will="" be="" retained="" as="" a="" measure="" of="" the="" license="" granted.="" [for="" assistance="" in="" the="" identification="" of="" the="" subject="" matter="" of="" each="" license="" so="" issued,="" it="" is="" suggested="" that="" the="" petition="" be="" submitted="" in="" duplicate="" and="" provide="" a="" title="" and="" other="" description="" of="" the="" material.="" the="" duplicate="" copy="" of="" the="" petition="" will="" be="" returned="" with="" the="" license="" or="" other="" action="" on="" the="" petition.]="" 127.="" section="" 5.14="" is="" proposed="" to="" be="" 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="" include="" the="" required="" fee="" (sec.="" 1.17(h)),="" if="" expedited="" handling="" of="" the="" petition="" is="" also="" sought,="" and="" must="" identify="" this="" application="" by="" [serial]="">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.="" [where="" the="" title="" is="" not="" descriptive,="" and="" the="" subject="" matter="" is="" clearly="" of="" no="" interest="" from="" a="" security="" standpoint,="" time="" may="" be="" saved="" by="" a="" short="" statement="" in="" the="" petition="" as="" to="" the="" nature="" of="" the="" invention.]="" *="" *="" *="" *="" *="" 128.="" section="" 5.15="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (a)="" 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="" and="" sec.="" 5.1,="" 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="" which="" would="" require="" the="" united="" states="" application="" to="" have="" been="" made="" available="" for="" inspection="" under="" 35="" u.s.c.="" 181="" and="" sec.="" 5.1.="" [this="" license="" also="" covers="" the="" inventions="" disclosed="" in="" foreign="" applications="" which="" have="" been="" granted="" a="" license="" under="" this="" part="" prior="" to="" april="" 4,="" 1984,="" and="" which="" were="" not="" subject="" to="" security="" inspection="" under="" 35="" u.s.c.="" 181="" and="" sec.="" 5.1.]="" 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="" 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="" of="" 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="" and="" sec.="" 5.1="" 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]="">120< through="" 130;="" or="" (ii)="" restricted="" data,="" sensitive="" nuclear="" technology="" or="" technology="" useful="" for="" 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="" assistance="" to="" foreign="" atomic="" energy="" activities]="">of the Department of Energy for assistance to foreign
energy activities<, 10="" cfr="" part="" 810,="" in="" effect="" at="" the="" time="" of="" foreign="" filing.="" *="" *="" *="" *="" *="" sec.="" 5.16="" [removed="" and="" reserved]="" 129.="" section="" 5.16="" is="" proposed="" to="" be="" removed="" and="" reserved.="" sec.="" 5.17="" [removed="" and="" reserved]="" 130.="" section="" 5.17="" is="" proposed="" to="" be="" revised="" and="" removed.="" 131.="" section="" 5.18="" is="" proposed="" to="" be="" 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="" [121]="">120< through="" [128]="">130<); the="" articles="" designated="" as="" arms,="" ammunition,="" and="" implements="" of="" war="" are="" enumerated="" in="" the="" u.s.="" munitions="" list,="" 22="" cfr="" [121.01]="">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="" [5.15="" (22="" cfr="" 125.04(b),="" 125.20(b))]="">5.12 (22 CFR Part 125)<. (b)="" when="" a="" patent="" application="" containing="" subject="" matter="" on="" the="" munitions="" list="" (22="" cfr="" [121.01]="">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="" [125.05(d)]="">Part 125<). 132.="" section="" 5.19="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" sec.="" 5.19="" export="" of="" technical="" data.="" (a)="" under="" regulations="" (15="" cfr="" 770.10(j))="" established="" by="" the="" [u.s.]="" department="" of="" commerce,="" [bureau="" of="" export="" administration,="" office="" of="" export="" licensing,]="" a="" [validated="" export]="" 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="" (37="" cfr="" 5.11="" through="" 5.33)="" of="" the="" patent="" and="" trademark="" office.="" (b)="" [a="" validated]="">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="" [[page="" 49868]]="" returned="" to="" the="" united="" states="" for="" subsequent="" filing="" in="" the="" u.s.="" patent="" and="" trademark="" office="" (15="" cfr="" 779a.3(e)).="" (c)="" [removed].="" 133.="" section="" 5.20,="" paragraph="" (b),="" is="" proposed="" to="" be="" removed.="" sec.="" 5.20="" export="" of="" technical="" data="" relating="" to="" sensitive="" nuclear="" technology.="" *="" *="" *="" *="" *="" (b)="" [removed].="" 134.="" section="" 5.25,="" paragraph="" (c),="" is="" proposed="" to="" be="" removed.="" sec.="" 5.25="" petition="" for="" retroactive="" license.="" *="" *="" *="" *="" *="" (c)="" [removed].="" sec.="" 5.31="" [removed="" and="" reserved]="" 135.="" section="" 5.31="" is="" proposed="" to="" be="" removed="" and="" reserved.="" sec.="" 5.32="" [removed="" and="" reserved]="" 136.="" section="" 5.32="" is="" proposed="" to="" be="" removed="" and="" reserved.="" sec.="" 5.33="" [removed="" and="" reserved]="" 137.="" section="" 5.33="" is="" proposed="" to="" be="" removed="" and="" reserved.="" part="" 7--[removed="" and="" reserved]="" 138.="" part="" 7="" is="" proposed="" to="" be="" removed="" and="" reserved.="" dated:="" september="" 10,="" 1996.="" bruce="" a.="" lehman,="" assistant="" secretary="" of="" commerce="" and="" commissioner="" of="" patents="" and="" trademarks.="" [fr="" doc.="" 96-23665="" filed="" 9-20-96;="" 8:45="" am]="" billing="" code="" 3510-16-p="">