Section 1.173(a), as proposed, sets forth the current requirements for
the contents of a reissue application at filing, and the existing
prohibition against new matter in a reissue application.

   It is proposed in    1.173(a)(1) to now require that the specification,
including the claims, be furnished in the form of a copy of the printed
patent with a single column of the patent appearing on each individual
page of the specification of the reissue application. This format for
submitting a reissue application is currently set out in MPEP 1411.
Paragraph (a)(1) would also provide that amendments made to the
specification at filing must be made according to paragraph (b) of this
section.

   Proposed paragraph (a)(2) of    1.173 sets forth the requirements for the
drawings at the time the reissue application is filed. If clean copies
(i.e., good quality photocopies free of any extraneous markings) of the
drawings from the original patent are supplied by applicant at the time
of filing the application and the copies meet the requirements of
1.84, no further (formal) drawings would be required. The current
provision of    1.174 requiring temporary drawings would be eliminated
in view of this proposed change to    1.173. The Office will be able to
print a reissue patent using clean copies of the patentdrawings. How
changes to the patent drawings may be made at the time of filing of the
reissue application, or during the prosecution, would now be
specifically set forth and must be made in accordance with the
requirements of proposed paragraph (b)(3) of this section (which are
essentially the requirements of current    1.121(b)(3)(i) and (ii)). If
applicant has failed to provide clean copies of the patent drawings, or
if changes are made to the drawings during the reissue prosecution,
drawings in compliance with    1.84 would continue to be required at the
time of allowance. It is also proposed to eliminate the practice of
transferring drawings from the patent file since clean copies of patent
drawings will be acceptable for use in the printing of the reissue
patent.

   Section 1.173(b), as proposed, now sets out that amendments in a reissue
application made at the time of filing may be made either by physically
incorporating the amendments within the body of the specification
(including the claims) as filed, or by a preliminary amendment (separate
paper).

   Paragraphs (b)(1) and (b)(2) of    1.173 incorporate the provisions of
current    1.121(b)(1) and (b)(2) as to the manner of amending the
specification and claims, respectively.

   Proposed    1.173(b)(3) would incorporate the provisions currently set
forth in    1.121(b)(3) as to amending reissue drawings.

   Paragraph (c) of    1.173, as proposed, would now require, that whenever
an amendment is made to the claims, either at the time of filing or
during the prosecution, the amendment must be accompanied by a statement
as to the status of all patent claims and all added claims, and an
explanation as to the support in the disclosure for any concurrently
made changes to the claims.

   Paragraph (d), as proposed, would incorporate the provisions currently
set forth in    1.121(b)(1)(iii) and (b)(2)(i)(C) as to how changes in
reissue applications are shown in the specification and claims,
respectively.

   Paragraphs (e), (f) and (g), as proposed, merely reiterate requirements
for retaining original claim numbering, amending the disclosure when
required, and making amendments relative to the original patent, as are
set out currently in    1.121(b)(2)(B), (b)(4), and (b)(6), respectively.

   The current requirement of    1.121(b)(5) prohibiting enlarging the
scope of the claims more than two years after the patent grant has been
eliminated from proposed    1.173 as being redundant to existing
statutory language in 35 U.S.C. 251.

   Section 1.174: It is proposed that    1.174 be eliminated (and reserved)
in view of the inclusion of all filing and amendment requirements for
reissue drawings into proposed    1.173. Thus, in addition to the
reissue filing requirements of current    1.173, the reissue amendment
requirements of current    1.121(b) and the reissue drawing requirements
of current    1.174 would all be included in a single rule, proposed
1.173. The proposed changes consolidating several current rules into a
single section should make all reissue filing and amendment requirements
quicker to locate and easier to understand.

   Section 1.176: Section 1.176 is proposed to be amended to eliminate the
prohibition against requiring division in a reissue application. The
Federal Circuit has indicated that 35 U.S.C. 251 does not, under certain
circumstances, prohibit an applicant in a reissue application from
adding claims directed to an invention which is separate and distinct
from the invention defined by the original patent claims. See In re
Amos, 953 F.2d 613, 21 USPQ2d 1271 (Fed. Cir. 1991). Section 1.176,
however, presently prohibits the Office from making a restriction
requirement in a reissue application. This prohibition in    1.176, in
combination with the Federal Circuit's decision in Amos, frequently
places an unreasonable burden on the Office in requiring the examination
of multiple inventions in a single reissue application.

   Section 1.176 as proposed would allow the Office to make a restriction
requirement in a reissue application between claims added in a reissue
application and the original patent claims, where the added claims are
directed to an invention which is separate and distinct from the
invention(s) defined by the original patent claims. The criteria for
making a restriction requirement in a reissue application between added
claims and original claims would be the same as that applied in an
original application. See MPEP 806 through 806.05(i). See the discussion
of    1.177 concerning the proposed treatment of multiple reissue
applications and procedures following a restriction requirement in a
reissue.

   The Office would continue to not require restriction among original
claims of the patent (i.e., among 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 added claims, the added
claims must be directed toward inventions which are separate and
distinct from the invention(s) defined by the original patent claims.
Restriction between multiple inventions in the added claims would also
be possible provided the added claims are drawn to several separate and
distinct inventions.

   The changes being considered 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., 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). See In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir.
1990); In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978); and In re
Orita, 550 F.2d 1277, 193 USPQ 145 (CCPA 1977).

   Section 1.11(b) currently exempts reissue continued prosecution
applications (CPAs) under    1.53(d) from the announcement of reissue
filing in the Official Gazette. The proposed language of    1.176(b)
further clarifies that the examination of a CPA reissue is not subject
to a two-month examination delay following its filing.

   Section 1.177: It is proposed that    1.177 be modified to eliminate
current requirements that divisional reissues be limited to separate and
distinct parts of the thing patented, and that they be issued
simultaneously unless ordered by the Commissioner. It is proposed that
the rule be expanded to include continuations of reissues as well as
divisionals. As a result of comments received following publication in
the Advance Notice (Topic 17), none of which were opposed to the
proposed changes to    1.177, the Office is moving forward with the
changes proposed.

   The Federal Circuit has indicated that 35 U.S.C. 251,  2, does not
place stricter limitations on the filing of continuation or divisional
reissue applications than is placed by 35 U.S.C. 120 and 121 on the
filing of continuation or divisional non-reissue applications. See In re
Graff, 111 F.3d 874, 876, 42 USPQ2d 1471, 1473 (Fed. Cir. 1997). The
Federal Circuit specifically stated:

   * * * [35 U.S.C. 251,  3,] provides that the general rules for patent
applications apply also to reissue applications, and [35 U.S.C. 251,
2,] expressly recognizes that there may be more than one reissue patent
for distinct and separate parts of the thing patented. [35 U.S.C. 251]
does not prohibit divisional or continuation reissue applications, and
does not place stricter limitations on such applications when they are
presented by reissue, provided of course that the statutory requirements
specific to reissue applications are met. See [35 U.S.C. 251,  3].

   * * * [35 U.S.C. 251,  2,] is plainly intended as enabling, not
limiting. [35 U.S.C. 251,  2,] has the effect of assuring that a
different burden is not placed on divisional or continuation reissue
applications, compared with divisions and continuations of original
applications, by codifying [The Corn-Planter Patent, 90 U.S. 181
(1874),] which recognized that more than one patent can result from a
reissue proceeding. Thus, [35 U.S.C. 251,  2,] places no greater
burden on [a] continuation reissue application than upon a continuation
of an original application; [35 U.S.C. 251,  2,] neither overrides,
enlarges, nor limits the statement in [35 U.S.C. 251,  3,] that the
provisions of Title 35 apply to reissues.

   Graff, 111 F.3d at 876-77, 42 USPQ2d at 1473. Thus, the Federal Circuit
has indicated that a continuation or divisional reissue application is
not subject to any greater burden other than the burden imposed by 35
U.S.C. 120 and 121 on a continuation or divisional non-reissue
application, except that a continuation or divisional reissue
application must also comply with the statutory requirements specific to
reissue applications (e.g., the ``error without any deceptive
intention'' requirement of 35 U.S.C. 251,  1).

   Following Graff, the Office has adopted a policy of treating
continuations/divisionals of reissue applications in much the same
manner as continuations/divisionals of non-reissue applications.
Accordingly, it is proposed that the current requirements of    1.177 as
to petitioning for non-simultaneous issuance of multiple reissues,
suspending prosecution in an allowable reissue while the other is
prosecuted, and limiting the content of each reissue to separate and
distinct parts of the thing patented, all be eliminated. These
requirements are considered unique to reissue continuations/divisionals,
impose additional burdens on reissue applicants, and are not consistent
with the Federal Circuit's discussion of 35 U.S.C. 251,  2, in Graff.

   It is proposed that    1.177(a) be changed to require that all multiple
reissue applications from a single patent include as the first line of
the respective specifications a cross reference to the other reissue
application(s). The statement would provide the public with notice that
more than one reissue application has been filed to correct an error (or
errors) in a single patent. If one reissue has already issued without
the appropriate cross reference, a certificate of correction would be
issued to provide the cross reference in the issued reissue.

   In    1.177(b), it is proposed that all of the claims of the patent be
presented in each application as amended, unamended or canceled, and
that the same claim not be presented for examination in more than one
application in its original unamended version. Any added claims would
have to be numbered beginning with the next highest number following the
last patent claim.

   If the same or similar claims were presented in more than one of the
multiple reissue applications, statutory double patenting (35 U.S.C.
101) or non-statutory (judicially created doctrine) double patenting
considerations would be given by the examiner during examination, and
appropriate rejections made. If needed to overcome the rejections,
terminal disclaimers would be required in order to ensure common
ownership of any non-distinct claims throughout each of the patents'
lifetimes.

   It is also being proposed concurrently that restriction between the
original patent claims and any added claims to separate and distinct
subject matter be permitted in reissue applications (see the proposed
change to    1.176). If one or more divisional applications are filed
after such a restriction requirement, it is proposed in    1.177(c) that
the resulting multiple reissue applications would be issued alone or
together, but each of the reissue applications would be required to
include changes which correct an error in the original patent before it
can be issued as a reissue patent. If one of the applications resulting
from the restriction requirement was found to be allowable without any
changes relative to the patent (i.e., it includes only all the original
patent claims), further action would be suspended until one other
reissue application was allowable; then, the two would be recombined and
issued as a single reissue patent. If the several reissue applications
resulting from the restriction each included changes correcting some
error in the original patent, the reissue applications could be issued
separately, with an appropriate cross-reference to the other(s) in each
of the respective specifications.

   Section 1.178: Section 1.178 is proposed to be amended to no longer
require an offer to surrender the original patent at the time of
filingas part of the reissue application filing requirements. The
inclusion of a sentence regarding the ``offer'' is frequently overlooked
by reissue applicants at the time of filing and results in the Office
sending out a Notice to File Missing Parts of Application (Missing Parts
Notice). The time spent by the Office in preparing the Missing Parts
Notice, the time needed by applicant to reply, and the further time
needed by the Office to process applicant's ``offer'' reply, can all be
saved by the proposed change. The requirement for actual surrender of
the original patent (or a ``statement'' of its loss, asset out below)
before the reissue application is allowed, however, is retained.

   It is also proposed that    1.178 be amended to change``affidavit or
declaration'' (attesting to the loss or inaccessibility of the original
patent) to ``statement.'' This proposed change would eliminate the
verification requirements of the current rule, which are formalities
covered by      1.4 and 10.18. This change is in conformance with other
similar changes to the patent rules which were effective on December 1,
1997, to ease the verification requirements of applicants. See Changes
to Patent Practice and Procedure, 62 FR at 53175-78, 1203 Off. Gaz. Pat.
Office at 100-03.

   Section 1.193: Section 1.193(b)(1) is proposed to be amended to provide
that appellant may file a reply brief to an examiner's answer ``or a
supplemental examiner's answer.'' The purpose of this proposed amendment
is to clarify the current practice that the appellant may file a (or
another) reply brief within two months of a supplemental examiner's
answer (   1.193), but the appellant must file any request for an oral
hearing within two months of the examiner's answer (   1.194).

   Section 1.303: Section 1.303(a) is proposed to be amended to add the
phrase ``to an interference'' between ``any party'' and ``dissatisfied
with the decision of the Board of Patent Appeals and Interferences'' to
correct an inadvertent omission.

   Section 1.311: Section 1.311(b) is proposed to be amended to provide
that an authorization to charge the issue fee (   1.18) to a deposit
account may be filed in an individual application only after mailing of
the notice of allowance (PTOL-85).

   The suggestion of eliminating preauthorization of payment of the issue
fee was discussed in Topic 19 of the Advance Notice and received a
generally favorable response. Many patent attorneys stated that they
considered preauthorization a dangerous practice that they would not
use. Others thought that preauthorization was an important safety
feature, and that the Office should fix the internal clerical problems
which were motivating the change.

   After considering all of the comments, the Office has decided to go
forward with the proposal to eliminate the ability of applicants to
preauthorize payment of the issue fee. Section 1.311(b), as currently
written, causes problems for the Office that tend to increase Office
processing time. The language used by applicants to authorize that fees
be charged to a deposit account often varies from one application to
another. As a result, conflicts arise between the Office and applicants
as to the proper interpretation of authorizing language found in their
applications. For example, some applicants are not aware that it is
current Office policy to interpret broad language to ``charge any
additional fees which may be required at any time during the prosecution
of the application'' as authorization to charge the issue fee on
applications filed on or after October 1, 1982. See Deposit Account
Authorization to Charge Issue Fee, Notice 1095 Off. Gaz. Pat. Office 44
(October 25, 1988), reprinted at 1206 Off. Gaz. Pat. Office 95 (January
6, 1998).

   Even when the language preauthorizing payment of the issue fee is clear,
the preauthorization can present problems for both the Office and
practitioners. One problem is because it may not be clear to the Office
whether a preauthorization is still valid after the practitioner
withdraws or the practitioner's authority to act as a representative is
revoked. If the Office charges the issue fee to the practitioner's
deposit account, the practitioner may have difficulty getting
reimbursement from the practitioner's former client. Another problem is
that when the issue fee is actually charged at the time the notice of
allowance is mailed, a notice to that effect is printed on the notice of
allowance (PTOL-85) and applicant is given one month to submit/ return
the PTOL-85B with information to be printed on the patent. Applicants
are sometimes confused, however, by the usual three-month time period
provided for paying the issue fee and do not, therefore, return the
PTOL-85B until the end of the normal three-month period. As the Office
does not wait for the PTOL-85B to be returned to begin electronic
capture of the data to be printed as a patent, any PTOL-85B received
more than a month after the issue fee has been paid may not be matched
with the application file in time for the information thereon to be
included on the patent.

   Clerical problems are not the main reason for proposing to eliminate the
practice. The Office would like all of the information necessary for
printing a patent to be in the application when the issuefee is paid.
Thus, the Office is proposing to eliminate petitions under    3.81(b),
see below, and intends to no longer print any assignee data that is
submitted after payment of the issue fee. As explained in the Advance
Notice, it is not generally in applicant's best interest to pay the
issue fee at the time the notice of allowance is mailed, since it is
much easier to have a necessary amendment or an information disclosure
statement considered if filed before the issue fee is paid rather than
after the issue fee is paid. See current       1.97 and 1.312(b). Also,
once the issue fee has been paid, applicant's window of opportunity for
filing a continuing application is reduced and the applicant no longer
has the option of filing a continuation or divisional application as a
continued prosecution application (CPA) under    1.53(d). See Patents to
Issue More Quickly After Issue Fee Payment, 1220 Off. Gaz. Pat. Office
at 42, and Filing of Continuing Applications, Amendments, or Petitions
after Payment of Issue Fee, 1221 Off. Gaz. Pat. Office at 14. Many
applicants find the time period between the mailing date of the notice
of allowance and the due date for paying the issue fee useful for
re-evaluating the scope of protection afforded by the allowed claim(s)
and for deciding whether to pay the issue fee and/or to file one or more
continuing applications.

   If prompt issuance of the patent is a high priority, after receipt of
the notice of allowance applicant may promptly return the PTOL-85B
(supplying any desired assignee and attorney information) and pay the
issue fee. In this way, the Office will be able to process the payment
of the issue fee and the information on the PTOL-85B as a part of a
single processing step. Further, no time would be saved even if the
issue fee was preauthorized for payment as the Office would still not
have the assignee and attorney data which is taken from the PTOL-85B.
Thus, it is not seen that the proposal to eliminate the preauthorization
to pay the issue fee would have any adverse effects on our customers.

   Section 1.312: Section 1.312(a) is proposed to be amended to change
``case'' to ``application'' for clarity. Section 1.312(b) is proposed to
be amended to replace the required showing of good and sufficient reason
of why the amendment is needed and was not earlier presented, to provide
that any amendment pursuant to    1.312 filed after the date the issue
fee is paid must be accompanied by: (1) A petition under    1.313(c)(1)
to withdraw the application from issue; (2) an unequivocal statement
that one or more claims are unpatentable; and (3) an explanation as to
how the amendment is necessary to render such claim or claims
patentable. The proposed change to    1.312(b) isnecessary because the
change in the patent printing process (discussed above with respect to
 1.55) will dramatically reduce the period between the date of issue fee
payment and the date a patent is issued. In view of the brief period
between the date of issue fee payment and the date a patent is issued,
the Office must limit amendments under   1.312 to those necessary to
avoid the issuance of a patent containing an unpatentable claim or
claims. Other amendments must be filed prior to payment of the issue fee
(preferably within one month of the mailing of a notice of allowance),
or be sought in a continuing application (see    1.313(c)(2)) or by
certificate of correction under 35 U.S.C. 255 and    1.323.

   Section 1.313: Section 1.313(a) is proposed to be amended to provide
that: (1) Applications may be withdrawn from issue for further action at
the initiative of the Office or upon petition by the applicant; (2) to
request that the Office withdraw an application from issue, the
applicant must file a petition under this section including the fee set
forth in    1.17(h) and a showing of good and sufficient reasons why
withdrawal of the application is necessary; and (3) if the Office
withdraws the application from issue, the Office will issue a new notice
of allowance if the Office again allows the application. The changes
proposed to separate the language directed to actions by applicants and
those actions by the Office are also proposed toincrease the clarity of
the section.

   Section 1.313(b) is proposed to be amended to provide that once the
issue fee has been paid, the Office will not withdraw the application
from issue at its own initiative for any reason except: (1) a mistake on
the part of the Office; (2) a violation of    1.56 or illegality in the
application; (3) unpatentability of one or more claims; or (4) for
interference. Section 1.313(c) is proposed to provide that once theissue
fee has been paid, the application will not be withdrawn from issue upon
petition by the applicant for any reason except: (1) Unpatentability of
one or more claims (see    1.312(b)); or (2) for express abandonment
(which express abandonment may be in favor of a continuing application).
As discussed above, changes in the patent printing process will
dramatically reduce the period between the date of issue fee payment and
the date a patent is issued. The Office must streamline the provisions
of current    1.313(b) or the Office will not be able to render
decisions on such petitions before the application is issued as a patent.

   It is the Office's experience that petitions under current    1.313(b)
are rarely filed (and even more rarely granted) on the basis of: (1) A
mistake on the part of the Office; (2) a violation of    1.56 or
illegality in the application; (3) unpatentability of one or more
claims; or (4) for interference. Therefore, the Office is proposing to
provide that the Office may withdraw applications from issue after
payment of the issue fee at its own initiative for these bases, but
limit petitions under current    1.313(b) (   1.313(c) as proposed) to:
(1) unpatentability ofone or more claims; or (2) for express
abandonment, (which express abandonment may be in favor of a continuing
application). If a petition under    1.313(c) filed on the basis of
unpatentability of one or more claims (   1.313(c)(1)), that petition
must (in addition to meeting the requirements of    1.313(a)) be
accompanied by an amendment (pursuant to    1.312), an unequivocal
statement that one or more claims are unpatentable, and an explanation
as to how the amendment is necessary to render such claim or claims
patentable. See discussion of    1.312(b).

   Obviously, if an applicant believes that an application should be
withdrawn from issue (after payment of the issue fee) on the basis of a
mistake on the part of the Office, a violation of    1.56 or illegality
in the application, or for interference, the applicant may contact the
examiner and suggest that the examiner request the Group Director to
withdraw the application from issue at the initiative of the Office. The
applicant, however, cannot insist that the Office withdraw an
application from issue (after payment of the issue fee) for these
reasons.

   Section 1.313(d) is proposed to provide that a petition under    1.313
will not be effective to withdraw the application from issue unless it
is actually received and granted by the appropriate officials before the
date of issue. Section 1.313(d) is also proposed to advise applicants
that withdrawal of an application from issue after payment of the issue
fee may not be effective to avoid publication of application
information. While the Office takes reasonable steps to stop the
publication and dissemination of application information (e.g., the
patent document) once an application has been withdrawn from issue,
withdrawal from issue after payment of the issue fee often occurs too
late in the patent printing process to completely maintain the
application in confidence. How much of the application information is
actually disseminated depends upon how close to the issue date the
application is withdrawn from issue. The change in the patent printing
process (discussed above with respect to    1.55) will make it less
likely that the Office can completely stop the publication and
dissemination of application information in an application withdrawn
from issue under    1.313 after payment of the issue fee.

   Section 1.314: Section 1.314 is proposed to be amended to changethe
reference to the fee set forth in ``   1.17(i)'' to the fee set forth in
``   1.17(h).'' This change is for consistency with the changes to
1.17(h) and    1.17(i). See discussion of changes to    1.17(h) and
1.17(i).

   Section 1.322: Section 1.322(a) is proposed to be amended to provide
that: (1) The Office may issue a certificate of correction under the
conditions specified in 35 U.S.C. 254 at the request of the patentee or
the patentee's assignee or at its own initiative; and (2) the Office
will not issue such a certificate at its own initiative without first
notifying the patentee (including any assignee of record) at the
correspondence address of record and affording the patentee an
opportunity to be heard. Section 1.322 as proposed would continue to
provide that if the request relates to a patent involved in an
interference, the request must comply with the requirements of this
section and be accompanied by a motion under    1.635. The current
language of    1.322(a) permits a third party request for a certificate
for correction (a party ``not owning an interest in the patent''), which
has led third parties to conclude that they have standing to demand that
the Office issue, or refuse to issue, a certificate of correction. Third
parties do not have standing to demand that the Office issue, or refuse
to issue, a certificate of correction. See Hallmark Cards, Inc. v.
Lehman, 959 F. Supp. 539, 543-44, 42 USPQ2d 1134, 1138 (D.D.C. 1997).
Since the burden on the Office caused by such third-party requests now
outweighs the benefit such information provides to the Office, the
Office is proposing to amend    1.322 such that a certificate of
correction will be issued only at the request of the patentee or at the
initiative of the Office.

   Section 1.323: Section 1.323 is proposed to be amended to provide that
the Office may issue a certificate of correction under the conditions
specified in 35 U.S.C. 255 at the request of the patentee or the
patentee's assignee, upon payment of the fee set forth in    1.20(a).
The language from 35 U.S.C. 255 currently in    1.323 that provides the
specific conditions under which a certificate of correction under
1.323 will be issued is proposed to be eliminated for consistency with
 1.322 and because it is redundant to repeat the language of the statute
in the rule. Section 1.323 as proposed would continue to provide that if
the request relates to a patent involved in an interference, the request
must comply with the requirements of this section and be accompanied by
a motion under    1.635.

   Section 1.324: Section 1.324 would have the title revised to reference
the statutory basis for the rule, 35 U.S.C. 256. It is particularly
important to recognize that 35 U.S.C. 256, the statutory basis for
corrections of inventorship in patents under    1.324, is stricter than
35 U.S.C. 116, the statutory basis for corrections of inventorship in
applications under    1.48. 35 U.S.C. 256 requires ``on application of
all the parties and assignees,'' while 35 U.S.C. 116 does not have the
same requirement. Thus, the flexibility under 35 U.S.C. 116, and
1.48, wherein waiver requests under    1.183 may be submitted (e.g.,
MPEP 201.03, page 200-6, Statement of Lack of Deceptive Intention), is
not possible under 35 U.S.C. 256, and    1.324.

   Section 1.324(b)(1) would be revised to eliminate the requirement for a
statement from an inventor being deleted stating that the inventorship
error occurred without deceptive intent. The revision would be made to
conform Office practice to judicial practice as enunciated in  v.
Advanced Magnetics, Inc., .3d 1551, 43 USPQ2d 1321 (Fed. Cir. 1997),
which held that 35 U.S.C. 256 only requires an inquiry into the intent
of a nonjoined inventor. The clause stating ``such error arose without
deceptive intent on his part'' was interpreted by the court as being
applicable only when there is an error where an inventor is not named,
and not when there is an error where a person is named as an inventor.
While the decision recognized that the Office's additional inquiry as to
inventors named in error was appropriate under 35 U.S.C. 256 when read
in conjunction with inequitable conduct standards, the Office no longer
wishes to conduct an inquiry broader in scope than what would be
conducted had the matter been raised in a court proceeding rather than
under    1.324.

   Section 1.324(b)(2), which requires a statement from the current named
inventors either agreeing to the requested change or stating that they
have no disagreement to the requested change, would not be revised.
Paragraph (b)(2) in combination with paragraph (b)(1) ensures compliance
with the requirement of the statute for application by all the parties,
which requirement is separate from the requirement that certain parties
address the lack of deceptive intent in the inventorship error.

   Section 1.324(c) would be a newly added paragraph to reference
1.48, 1.497 and 1.634 for corrections of inventorship in national
applications, international applications and interferences, respectively.

   Section 1.366: Section 1.366(c) is proposed to be amended to continue to
provide that a maintenance fee payment must include the patent number
and the application number of the United States application for the
patent on which the maintenance fee is being paid, but to further
provide that if the payment includes identification of only the patent
number (i.e., does not identify the application number for the patent on
which the maintenance fee is being paid), the Office may apply the
payment to the patent identified by patent number in the payment or may
return the payment. The Office requires the application number to detect
situations in which a maintenance payment is submitted for the incorrect
patent (e.g., due to a transposition error in the patent number).
Nevertheless, a significant number of maintenance fee payments contain
only the patent number and not the application number for the patent on
which the maintenance fee is being paid.

   The proposed change to    1.366(c) will permit the Office to streamline
processing of maintenance fee payments that lack the application number
for the patent on which the maintenance fee is being paid. The Office
intends to treat payments that do not contain both a patent number and
application number as follows: First, a reasonable attempt will be made
to contact the person who submitted the payment (patentee or agent) by
telephone to confirm the patent number and application number of the
patent for which the maintenance fee is being paid. Second, if such an
attempt is not successful but the payment includes at least a patent
number, the payment will be processed as a maintenance fee paid for the
patent number provided, and the person who submitted the payment will be
sent a letter informing him or her of the patent number and application
number of the patent to which the maintenance fee was posted and given a
period of time within which to file a petition under    1.377 (and $130)
if the maintenance fee was not posted to the patent for which the
payment was intended. If the payment does not include a patent number
(e.g., includes only an application number), the payment will be
returned to the person who submitted the payment.

   Section 1.446: Section 1.446 is proposed to be amended in such that its
refund provisions are consistent with the refund provisions of    1.26.
See discussion of    1.26.

   Section 1.497: Section 1.497(b)(2) has been proposed to be amended in a
manner consistent with    1.64(b). Therefore,    1.497(b)(2) is proposed
to be amended to refer to any supplemental oath or declaration and to
provide that if the person making the oath or declaration is the legal
representative, the oath or declaration shall state that the person is
the legal representative and shall state the citizenship, residence, and
mailing address of the legal representative. In addition,    1.497(b)(2)
is proposed to be amended to clarify that facts submitted under
1.42, 1.43, and 1.47 are not required to be in the    1.497 oath or
declaration. Section 1.497(d) is proposed to provide for the situation
in which an oath or declaration filed pursuant to 35 U.S.C. 371(c)(4)
and    1.497 names an inventive entity different from the inventive
entity set forth in the international stage. Section 1.497(d) is
proposed to be added to provide that such an oath or declaration must be
accompanied by: (1) A statement from each person being added as an
inventor and from each person being deleted as an inventor that any
error in inventorship in the international stage occurred without
deceptive intention on his or her part; (2) the processing fee set forth
in    1.17(i); and (3) if an assignment has been executed by any of the
original named inventors, the written consent of the assignee (see
3.73(b)). Thus, naming a different inventive entity in an oath or
declaration filed to enter the national stage under 35 U.S.C. 371 in an
international application is not analogous to the filing of an oath or
declaration to complete an application under 35 U.S.C. 111(a) (which
operates itself to name the new inventive entity under      1.41(a)(1)
and 1.48(f)(1)), but is analogous to correction of inventorship under
1.48(a).

   Section 1.510: Paragraph (b)(4) of    1.510 is proposed to be revised to
correspond to paragraph (a) of    1.173 as revised by the present
notice, see the discussion as to the revision of    1.173. It is
considered advantageous for the reexamination and reissue provisions to
correspond with each other to the maximum extent possible, in order to
eliminate confusion.

   Section 1.530: Paragraph (d) of    1.530 is proposed to be revised, and
paragraphs (e)-(i) are proposed to be added, to correspond to paragraph
(b) et seq. of    1.173 as revised by the present notice, see the
discussion as to the revision of    1.173. It is considered advantageous
for the reexamination and reissue provisions to correspond with each
other to the maximum extent possible, in order to eliminate confusion.
Paragraphs (d)(3) and (d)(4) of    1.530 are proposed to be redesignated
as paragraphs (j) and (k) of    1.530.

   Section 1.530(l) is proposed to be added to make it clear that where the
inventorship of a patent being reexamined is to be corrected, a petition
for correction of inventorship which complies with    1.324 must be
submitted during the prosecution of the reexamination proceeding. If the
petition under    1.324 is granted, a certificate of correction
indicating the change of inventorship will not be issued, because the
reexamination certificate that will ultimately issue will contain the
appropriate change-of-inventorship information (i.e., the certificate of
correction is in effect merged with the reexamination certificate). In
the rare instances where the reexamination proceeding terminates but
does not result in a reexamination certificate under    1.570
(reexamination is vacated or the order for reexamination is denied),
patentee may then request that the inventorship be corrected by a
certificate of correction indicating the change of inventorship.

   Section 1.550: Where an application has become abandoned for failure to
timely respond, the application can be revived under 35 U.S.C. 133 upon
an appropriate showing of unavoidable delay via petition for revival and
a petition fee. Analogously, where a reexamination proceeding becomes
terminated for failure to timely respond, the proceeding can be restored
to pendency under 35 U.S.C. 133 upon an appropriate showing of
unavoidable delay, again via a petition and fee. See In re Katrapat, AG,
6 USPQ2d 1863, 1865-66 (Comm'r Pat. 1988).

   In a situation where an appropriate showing of unavoidable delay cannot
be made, an abandoned application can be revived upon an appropriate
showing that the delay was unintentional via a petition and fee. The
showing that the delay was unintentional is a lesser standard than that
of unavoidable delay; however, the required petition fee for an
unintentional delay petition is substantially larger than that of an
unavoidable delay petition. This unintentional delay alternative has
been found to be highly desirable to deal with situations where the
higher standard for revival cannot be met; to eliminate paperwork, time,
and effort in making the unavoidable delay showing; and to eliminate the
need to request reconsideration if the initial petition for revival is
dismissed or denied.

   Despite the advantages of relief to petitioners via the unintentional
delay alternative, there is no such alternative in reexamination
proceedings. See Katrapat, 6 USPQ2d at 1866-67. It would be desirable to
provide an unintentional delay alternative by rulemaking. Unfortunately,
the statute does not provide a basis for unintentional delay relief in
reexamination proceedings that is analogous to that for an application.
The statutory basis for revival of an application based upon the
unintentional delay standard is 35 U.S.C. 41(a)(7). There is no such
statutory basis for restoring a reexamination proceeding to pendency
based upon the unintentional delay standard.

   Section 1.550(c) is proposed to be revised to provide the reexamination
patentee with unintentional delay relief for any reply filed within the
full statutory time period for submission of the papers that were
unintentionally delayed. This relief would be provided in the form of an
extension of time under    1.550(c), which would be granted when
unintentional delay is established and the appropriate extension of time
fee is paid.

   This avenue of unintentional delay relief is expected to deal with the
majority of reexamination proceedings terminated for untimely response.
The reason for this is as follows. Late responses are most often
generated because of one of three reasons: (1) The patentee does not
realize that an extension must be requested prior to the response due
date and thus, files the response after the due date together with an
extension request; (2) the patentee files the extension request shortly
prior to the due date but fails to give reasons for the extension, and
the time expires before a proper reexamination extension request can
subsequently be provided and (3) the patentee is aware of the need for
giving reasons and for filing of the request prior to the due date,
however, the reminder docket system is not set up for the reexamination
type of extension request and the request is not timely or properly
made. In all three of these situations, the extension generally reaches
the Office prior to the full six-month statutory period for submission
of the response, especially given the fact that a one- or two-month
shortened statutory period is set for response in reexamination. If
there is time remaining in the statutory period, the Office can notify
the patentee that an extension in accordance with    1.550(c)(2) is
needed to maintain pendency.

   It is understood that the proposed revision will not provide relief to
patentees in all cases with an unintentional termination of
reexamination proceedings. However, in the absence of a statutory
amendment to providing unintentional delay relief analogous to that of
35 U.S.C. 41(a)(7) for an application, the present rule change is
believed to be the best avenue available to give patentees unintentional
delay relief in reexamination proceedings.

   Section 1.666: Section 1.666(b) is proposed to be amended to change the
reference to the fee set forth in ``   1.17(i)'' to the fee set forth in
``   1.17(h).'' This change is for consistency with the changes to
1.17(h) and    1.17(i). See discussion of changes to    1.17(h) and
1.17(i).

   Section 1.720: Section 1.720(b) is proposed to be amended to clarify
that a patent extended under    1.701 or    1.790 would also be eligible
for patent term extension. Section 1.720(g) is proposed to be amended to
clarify that an application for patent term extension may be timely
filed during the period of an interim extension under    1.790.

   Section 1.730: Section 1.730 is proposed to be amended to add new
paragraphs (b), (c) and (d) which state who should sign the patent term
extension application and what proof of authority may be required of the
person signing the application. 35 U.S.C. 156 provides that an
application for patent term extension must be filed by the patent
ownerof record or an agent of the patent owner. The Office interprets an
agent of a patent owner to be either a licensee of the patent owner(for
example, the party that sought permission from the Food and Drug
Administration for permission to commercially use or sell a product,
i.e., the marketing applicant), or a registered attorney or agent.
Proposed    1.730(b) explains that, if the application is submitted by
the patent owner, the correspondence must be signed by the patent owner
or a registered practitioner. Proposed    1.730(c) states that, if the
application is submitted by an agent of the patent owner, the
correspondence must be signed by a registered practitioner, and that the
Office may require proof that the agent is authorized to act on behalf
of the patent owner. Lastly, proposed    1.730(d) states that the Office
may require proof of authority of a registered practitioner who signs
the application for patent term extension on behalf of the patent owner
or the agent of the patent owner.

   Section 1.740: Currently, for each product claim, method of use claim,
and method of manufacturing claim which reads on the approved product, a
showing is required demonstrating the manner in which each applicable
claim reads on the approved product. Section 1.740(a)(9) is proposed to
be amended to provide that the application for patent term extension
only needs to explain how one product claim claims the approved product,
if there is a claim to the product. In addition, the application would
only need to explain how one method of use claim claims the method of
use of the approved product, if there is a claim to the method of use of
the product. Lastly, the application would only need to explain how one
claim claims the method of manufacturing the approved product, if there
is a claim to the method of manufacturing the approved product. With
this proposed change, applicants for patent term extension should be
able to reduce the time required to prepare the application since at the
most only three claims would have to be addressed rather than all the
claims that read on the three categories. Each claim that claims the
approved product, the method of use of the approved product, or the
method of manufacturing the approved product would still be required to
be listed. See 35 U.S.C. 156(d)(1)(B).

   Section 1.740(a)(10) is proposed to be amended to separate the text into
paragraphs (A), (B) and (C) to aid in comprehension of the text.

   Section 1.740(a)(14) is proposed to be amended to add ``and'' after the
semicolon since the paragraph is now the next to last paragraph.

   Section 1.740(a)(15) is proposed to be amended to change the semicolon
to a period.

   Section 1.740(a)(16) is proposed to be moved to    1.740(b), the number
of copies changed from two to three, and to eliminate the express
``certification'' requirement.

   Section 1.740(a)(17) is proposed to be deleted as the requirement for an
oath or declaration is being deleted in    1.740(b).

   Section 1.740(b) is proposed to be amended to delete the requirement for
an oath or declaration since the averments set forth in    1.740(b) are
implicit in the submission of an application for patent term extension
and the signature to the application.

   Section 1.740(c) is proposed to be amended to increase the time period
for response to a notice of informality for an application for patent
term extension from one month to two months, where the notice of
informality does not set a time period

   Section 1.741: Section 1.741(a) is proposed to be amended to clarify the
language to reference      1.8 and 1.10 instead of referencing the rules
and the titles of the rules. Section 1.741(a)(5) is proposed to be
amended to correct the format of the citation of the statute. Section
1.741(b) is proposed to be amended to provide that requests for review
of a decision that the application for patent term extension is
incomplete, or review of the filing date accorded to the application,
must be filed as a petition under    1.741 accompanied by the fee set
forth in    1.17(h), rather than a petition under    1.181, and that the
petition must be filed within two months of the date of the notice, and
that the extension of time provisions of    1.136 apply.

   Section 1.780: Section 1.780, including the title, is proposed to be
amended to use terminology consistent with current practice by inserting
the term ``order.''

   Section 1.809: Section 1.809(b) is proposed to be amended to change
``respond'' to ``reply'' (see    1.111), and    1.809(b)(1) is proposed
to be amended to eliminate the language discussing payment of the issue
fee. Section 1.809(c) is proposed to be amended to provide that if an
application for patent is otherwise in condition for allowance except
for a needed deposit and the Office has received a written assurance
that an acceptable deposit will be made, applicant will be notified and
given a period of time within which the deposit must be made in order to
avoid abandonment. Section 1.809(c) is also proposed to be amended to
provide that this time period is not extendable under    1.136 (a) or
(b) (see    1.136(c)). Section 1.809(c) is also proposed to be amended
to eliminate the language stating that failure to make a needed deposit
will result in abandonment for failure to prosecute because abandonment
for failure to prosecute occurs by operation of law when an applicant
fails to timely comply with such a requirement (see 35 U.S.C. 133).

   Section 1.821: The Office indicated in the Advance Notice that the
submission of sequence listings on paper is a significant burden on the
applicants and the Office, and that it was considering changes to
1.821 et seq. to: (1) Permit a machine-readable submission of the
nucleotide and/or amino acid sequence listings to be submitted in an
appropriate archival medium; and (2) no longer require the voluminous
paper submission of nucleotide and/or amino acid sequence listings. See
Changes to Implement the Patent Business Goals, 63 FR at 53510-12,
1215Off. Gaz. Pat. Office at 99-100.

   Unlike a computer program listing appendix under    1.96(c), a sequence
listing under    1.821 is part of the disclosure of the application. The
Office, however, may accept electronically filed material in a patent
application, regardless of whether it is considered ``essential'' or
``nonessential.'' The patent statute requires that ``[a]n application
for patent shall be made * * * in writing to the Commissioner.'' 35
U.S.C. 111(a)(1) (emphasis added). With regard to the meaning of the
``in writing'' requirement of 35 U.S.C. 111(a)(1), ``[i]n determining
any Act of Congress, unless the context indicates otherwise * * *,
``writing'' includes printing and typewriting and reproduction of visual
symbols by photographing, multigraphing, mimeographing, manifolding, or
otherwise.'' 1 U.S.C. 1 (emphasis added); see also Fed. R. Evid. 1001(1)
(writing defined as including magnetic impulse and electronic recording)
and title XVII of the Omnibus Consolidated and Emergency Supplemental
Appropriations Act, 1999, Pub. L. 105-277, 112 Stat. 2681 (1998) (the
Government Paperwork Elimination Act). An electronic document (or an
electronic transmission of a document) is a ``reproduction of visual
symbols,'' and the ``in writing'' requirement of 35 U.S.C. 111(a)(1)
does not preclude the Office from accepting an electronically filed
document. Likewise, there is nothing in the patent statute that
precludes the Office from designating an ``electronic'' record of an
application file as the Office's ``official'' copy of the application.

   As discussed with regard to the proposed change to    1.96, CD-ROM and
CD-R are the only practical electronic media of archival quality. The
CD-ROM or CD-R sequence listing would serve as the ``original'' of the
sequence listing, yet still offer the conveniences of small size and
ease in viewing. Thus, the Office is specifically considering revising
 1.821 et seq. to permit applicants to submit the official copy of the
sequence listing either on paper or on CD-ROM or CD-R.

   Section 1.821(c) is proposed to be amended to provide that a ``Sequence
Listing'' must be submitted either: (1) on paper in compliance with
1.823(a)(1) and (b); or (2) as a CD-ROM or CD-R in compliance with
1.823(a)(2) and (b) that will be retained with the paper file. Section
1.821 is also proposed to be amended to provide that applicant may
submit a second copy of the CD-ROM or CD-R ``Sequence Listing'' to
satisfy the requirement for a ``Sequence Listing'' in a computer
readable format pursuant to    1.821(e), provided that the CD-ROM or
CD-R ``Sequence Listing'' meets the requirements of    1.824(c)(4).
However, in order for a sequence listing to be a part of an
international application, it must be filed in paper.

   Section 1.821(e) and    1.821(f) are proposed to be amended for
consistency with the provisions in    1.821(c) that permit the official
copy of the ``Sequence Listing'' required by    1.821(c) to be a paper
or a CD-ROM or CD-R copy. Should these provisions be adopted, conforming
changes may be made in the regulations to accommodate international
applications in the national stage.

   Section 1.823: The heading of    1.823 is proposed to be amended for
consistency with the provisions in    1.821(c) that permit the official
copy of the ``Sequence Listing'' required by    1.821(c) to be a paper
or a CD-ROM or CD-R copy. Section 1.823(a) is proposed to be amended to
be divided into a paragraph (a)(1) that sets forth its current
requirement as applying if the ``Sequence Listing'' submitted pursuant
to    1.821(c) is on paper, and a paragraph (a)(2) setting forth the
requirements if the ``Sequence Listing'' submitted pursuant to
1.821(c) is on a CD-ROM or CD-R. Section 1.823(a)(2) is proposed to
provide that: (1) a ``Sequence Listing'' submitted on a CD-ROM or CD-R
must be a text file in the American Standard Code for Information
Interchange (ASCII) in accordance with the standards for that medium set
forth in 36 CFR 1228.188(c)(2)(i) (no other format allowed); (2) the
CD-ROM or CD-R ``Sequence Listing'' must be accompanied by documentation
on paper that contains the machine format (e.g., IBM-PC, Macintosh
(etc.)), the operating system (e.g., MS-DOS, Macintosh, Unix) and any
other special information that is necessary to identify, maintain, and
interpret the electronic ``Sequence Listings''; and (3) a notation that
``Sequence Listing'' is submitted on a CD-ROM or CD-R must be placed
conspicuously in the specification (see    1.77(b)(11)). Section
1.823(a)(2) is also proposed to provide that the CD-ROM or CD-R
``Sequence Listing'' must be labeled with the following information: (1)
The name of each inventor (if known); (2) title of the invention; (3)
the sequence identifiers of the ``Sequence Listings'' on that CD-ROM or
CD-R; and (4) the docket number used by the person filing the
application to identify the application (if applicable). Finally,
1.823(c)(4) is proposed to be amended to refer to CD-R (as well as the
CD-ROM currently provided for). Should these provisions be adopted,
conforming changes may be made in the regulations to accommodate
international applications in the national stage.

   Section 1.825: Section 1.825(a) is proposed to be amended to provide
that any amendment to the CD-ROM or CD-R copy of the ``Sequence
Listing'' submitted pursuant to    1.821 must be made by submission of a
new CD-ROM or CD-R containing a substitute ``Sequence Listing,'' and
that such amendments must be accompanied by a statement that indicates
support for the amendment in the application-as-filed, and a statement
that the new CD-ROM or CD-R includes no new matter. Section 1.825(b) is
proposed to be amended to provide that any amendment to the CD-ROM or
CD-R copy of the ``Sequence Listing'' pursuant to    1.825(a) must be
accompanied by a substitute copy of the computer readable form of the
``Sequence Listing'' required pursuant to    1.821(e), including all
previously submitted data with the amendment incorporated therein, and
accompanied by a statement that the computer readable form copy is the
same as the new CD-ROM or CD-R copy of the ``Sequence Listing.'' Should
these provisions be adopted, conforming changes may be made in the
regulations to accommodate international applications in the national
stage.

   The comments are addressed above in the discussion of the proposed
change to    1.96. See discussion of    1.96.

Part 3

   Section 3.27: Section 3.27 is proposed to be amended to eliminate the
reference to petitions under    3.81(b) and the reference to a document
required by Executive Order 9424 which does not affect title. See
discussion of    3.81(b).

   Section 3.71: It is proposed that    3.71 be revised as discussed
immediately below. In conjunction with the propose revision, the section
would be broken into paragraphs (a) through (d), with each paragraph
being given a heading, in order to more clearly delineate the topics of
the paragraphs.

   Proposed paragraph (a) of    3.71 would clarify that the assignee must
be of record in a U.S. national patent application in order to conduct
prosecution in place of the inventive entity (the inventors of the
application) or any previous assignee that was entitled to conduct
prosecution.

   Paragraph (b) of    3.71 has been proposed in order to clarify and
define what is meant by the    3.71(a) assignee which may conduct the
prosecution of a U.S. national application for a patent.

   A national patent application is owned by the inventor(s), an assignee
or assignees of the inventor(s), or some combination of the two. All
parties having a portion of the ownership must act together in order to
be entitled to conduct the prosecution.

   If there is an assignee of the entire right, title and interest in the
patent application,    3.71(b)(1) (as proposed) states that thesingle
assignee may act alone to conduct the prosecution of an application.

   If there is no assignee of the entire right, title and interest of the
patent application, then two possibilities exist:

   (1) The application has not been assigned; thus, ownership resides
solely in the inventor(s) (i.e., the applicant(s)). In this situation,
 3.71 does not apply (since there is no assignee), and the single
inventor, or the combination of all the joint inventors, is needed to
conduct the prosecution of an application.

   (2) The application has been assigned; thus, there is at least one
``partial assignee.'' As pointed out in    3.71(b)(2), a partial
assignee is any assignee of record who has less than the entire right,
title and interest in the application. The application will be owned by
the combination of all partial assignees and all inventors who have not
assigned away their right, title and interest in the application. As
proposed,    3.71(b)(2) points out that where at least one inventor
retains an ownership interest together with the partial assignee(s), the
combination of all partial assignees and inventors retaining ownership
interest is needed to conduct the prosecution of an application. Where
no inventor retains an ownership interest, the combination of all
partial assignees is needed to conduct the prosecution of an application.

   To illustrate this, note as follows. Inventors A and B invent a process
and file their application. Inventors A and B together may conduct
prosecution. Inventor A then assigns his/her rights in the application
to Corporation X. As soon as Corporation X (now a partial assignee) is
made of record in the application as a partial assignee (by filing a
statement pursuant to    3.73(b) stating fifty percent ownership),
Corporation X and Inventor B together may conduct prosecution.
Corporation X and Inventor B then both assign their rights in the
application to Corporation Y. As soon as Corporation Y (now an assignee
of the entire right, title and interest) is made of record in the
application as the assignee (by filing a statement pursuant to
3.73(b) stating one-hundred percent ownership), Corporation Y may, by
itself, conduct prosecution.

   This definition of the assignee would apply wherever the assignee is
permitted to take action in the prosecution of an application for patent.

   Proposed paragraph (c) of    3.71 defines the meaning of the term ``of
record'' used in proposed paragraph (b) of    3.71. An assignee is made
of record in an application by filing a statement which is in compliance
with    3.73(b). Note that the assignee being made ``of record'' in an
application is different than the recording of an assignment in the
assignment records of the Office pursuant to    3.11.

   Proposed paragraphs (a) through (c) of    3.71 have been drafted to
allow for the situation where an assignee takes action in the
prosecution of a reexamination proceeding (in addition to that where a
patent application is involved). In a reexamination, the assignee has
the entire right, title and interest in the patent upon which
reexamination is based.

   Proposed paragraph (d) of    3.71, concerning trademarks, expands the
list of actions an assignee may take or request. Specifically, an
assignee may also rely on its federal trademark application or
registration when filing papers against a third party. This subsection
also corrects the inappropriate use of the term ``prosecution'' when
referring to maintaining a registered trademark.

   In various places in proposed    3.71, ``national'' has been added
before ``application.'' Section 3.71 is directed to national
applications as defined in    1.9(a)(1) and not to international (PCT)
applications. In an international (PCT) application the assignee is
often the applicant for some, or all, of the designated states (except
the U.S.) and may control prosecution as the applicant. Section 3.71
would apply to international applications after entry into the U.S.
national stage under 35 U.S.C. 371.

   Section 3.73: In Paragraph (a) of    3.73, it is proposed to revise the
second sentence to include a trademark registration, in addition to a
trademark application which is currently recited. The sentence would
read: ``The original applicant is presumed to be the owner of a
trademark application or registration, unless there is an assignment.''

   Under the proposal, paragraph (b) of    3.73 would be revised for
clarity and paragraph formatting. Additionally, paragraph (b) of    3.73
is proposed to be revised to clarify that the statement establishing
ownership must explicitly identify the assignee (by adding the language
``a signed statement identifying the assignee * * *''). Paragraph (b) of
   3.73 is further proposed to be revised to make it clear that while
the submission establishing ownership is separate from, and in addition
to, the specific action taken by the assignee (e.g., appointing a new
attorney), the two may be presented together as part of the same paper.
This would be done by adding that ``The establishment of ownership by
the assignee may be combined with the paper that requests or takes the
action.''

   Currently, paragraph (b) of    3.73 requires that the submission
(statement) establishing ownership ``must be signed by a party
authorized to act on behalf of the assignee.'' Under the proposal, this
language would be expanded upon by newly added paragraph (b)(2) of
3.73 which would clarify what is acceptable to show that the party
signing the submission is authorized to act on behalf of the assignee.
(1) The submission could include a statement that the party signing the
submission is authorized to act on behalf of the assignee. (2)
Alternatively, the submission could be signed by a person having
apparent authority to sign on behalf of the assignee, e.g., an officer
of the assignee.

I   n the first case, the statement that the party signing the submission
is authorized to act on behalf of the assignee could be an actual
statement included in the text of the submission that the signing person
``is authorized to act on behalf of the assignee.'' Alternatively, it
could be in the form of a resolution by the organization owning the
property (e.g., a corporate resolution, a partnership resolution)
included with the submission.

   In the second case, the title of the person signing must be given in the
submission, and it must be one which empowers the person to act on
behalf of the assignee. The president, vice-president, secretary,
treasurer, and chairman of the board of directors are presumed to have
authority to act on behalf of the organization. Modifications of these
basic titles are acceptable, such as vice-president for sales, executive
vice-president, assistant treasurer, vice-chairman of the board of
directors. A title such as manager, director, administrator, or general
counsel does not clearly set forth that the person is an officer of the
organization, and as such, does not provide a presumption of authority
to sign the statement on behalf of the assignee. A power of attorney
from the inventors or the assignee to a practitioner to prosecute an
application does not make that practitioner an official of an assignee
and does not empower the practitioner to sign the statement on behalf of
the assignee.

   Proposed new paragraph (c)(1) of    3.73 would require that the
submission establishing ownership by the assignee must be submitted
prior to, or at the same time, that the paper requesting or taking
action is submitted. If the submission establishing ownership is not
present, the action sought to be taken will not be given effect.

   Proposed new paragraph (c)(2) of    3.73 would point out that for
patents, if an assignee of less than the entire right, title and
interest (i.e., a partial assignee) fails to indicate in the submission
the extent (e.g., by percentage) of its ownership interest, the Office
may refuse to accept the submission.

   Section 3.81: Section 3.81 is proposed to be amended to eliminate the
provisions of    3.81(b). As discussed above, changes in the patent
printing process will dramatically reduce the period between the date of
issue fee payment and the date a patent is issued. This change will
eliminate the opportunity for providing an assignee name after the date
the issue fee is paid.

   Section 5.1: Section 5.1 is proposed to be amended to locate its current
text in    5.1(a).

   Section 5.1 is also proposed to be amended to add a    5.1(b) to clarify
that application as used in Part 5 includes provisional applications
filed under 35 U.S.C. 111(b) (   1.9(a)(2)), nonprovisional applications
filed under 35 U.S.C. 111(a) or entering the national stage from an
international application after compliance with 35 U.S.C. 371 (
1.9(a)(3)), or international applications filed under the Patent
Cooperation Treaty prior to entering thenational stage of processing (
1.9(b)).

   Section 5.1 is also proposed to be amended to add a    5.1(c) to state
current practice that: (1) Patent applications and documents relating
thereto that are national security classified (see    1.9(i)) and
contain authorized national security markings (e.g., ``Confidential,''
``Secret'' or ``Top Secret'') are accepted by the Office; and (2)
national security classified documents filed in the Office must be
either hand-carried to Licensing and Review or mailed to the Office in
compliance with    5.1(a).

Section 5.1 is also proposed to be amended to add a    5.1(d) to provide
that: (1) The applicant in a national security classified patent
application must obtain a secrecy order pursuant to    5.2(a);(2) if a
national security classified patent application is filed without a
notification pursuant to    5.2(a), the Office will set a time period
within which either the application must be declassified, or the
application must be placed under a secrecy order pursuant to    5.2(a),
or the applicant must submit evidence of a good faith effort to obtain a
secrecy order pursuant to    5.2(a) from the relevant department or
agency in order to prevent abandonment of the application; and (3) if
evidence of a good faith effort to obtain a secrecy order pursuant to
5.2(a) from the relevant department or agency is submitted by the
applicant within the time period set by the Office, but the application
has not been declassified or placed under a secrecy order pursuant to
5.2(a), the Office will again set a time period within which either the
application must be declassified, or the application must be placed
under a secrecy order pursuant to    5.2(a), or the applicant must
submit evidence of a good faith effort to again obtain a secrecy order
pursuant to    5.2(a) from the relevant department or agency in order to
prevent abandonment of the application. Section 5.1(d) as proposed sets
forth the treatment of national security classified applications that is
currently set forth in MPEP 130.

   Section 5.1 is also proposed to be amended to add a    5.1(e) to provide
that a national security classified patent application will not be
allowed pursuant to    1.311 of this chapter until the application is
declassified and any secrecy order pursuant to    5.2(a) has been
rescinded.

   Section 5.1 is also proposed to be amended to add a    5.1(f) to clarify
that applications on inventions not made in the United States and on
inventions in which a U.S. Government defense agency has a property
interest will not be made available to defense agencies.

   Section 5.2: Section 5.2(c) is proposed to be added to provide that: (1)
An application disclosing any significant part of the subject matter of
an application under a secrecy order pursuant to    5.2(a) also falls
within the scope of such secrecy order; (2) any such application that is
pending before the Office must be promptly brought to the attention of
Licensing and Review, unless such application is itself under a secrecy
order pursuant to    5.2(a); and (3) any subsequently filed application
containing any significant part of the subject matter of an application
under a secrecy order pursuant to    5.2(a) must either be hand-carried
to Licensing and Review or mailed to the Office in compliance with
5.1(a).

   Section 5.12: Section 5.12(b) is proposed to be amended to require that
the fee set forth in    1.17(h) is required for any petition under
5.12 for a foreign filing license. As a practical matter, all petitions
under    5.12 are treated on an expedited basis. Therefore, it is
appropriate to require the fee set forth in    1.17(h) for all petitions
under    5.12.

Part 10

   Section 10.23: Section 10.23(c)(11) is proposed to be amended to add
the phrase ``[e]xcept as permitted by    1.52(c)'' for consistency with
the proposed amendment to    1.52(c).

Review Under the Paperwork Reduction Act of 1995 and Other Considerations

   This notice is in conformity with the requirements of the Regulatory
Flexibility Act (5 U.S.C. 601 et seq.), Executive Order 12612 (October
26, 1987), and the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.). It has been determined that this rulemaking is not significant
for the purposes of Executive Order 12866 (September 30, 1993).

   This notice involves information collection requirements which are
subject to review by the Office of Management and Budget (OMB) under the
Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The
collections of information involved in this notice have been reviewed
and previously approved by OMB under the following control numbers:
0651-0016, 0651-0020, 0651-0021, 0651-0022, 0651-0024, 0651-0027, 0651-
0031, 0651-0032, 0651-0033, 0651-0034, 0651-0035, and 0651-0037.

   As required by the Paperwork Reduction Act of 1995 (44 U.S.C. 3507(d)),
the Patent and Trademark Office has submitted an information collection
package to OMB for its review and approval of the proposed information
collections under OMB control numbers 0651-0031, 0651-0032, and
0651-0035. The Patent and Trademark Office is submitting information
collection packages to OMB for its review and approval of these
information collections because the following changes proposed in this
notice do affect the information collection requirements associated with
the information collections under OMB control numbers 0651-0031,
0651-0032, and 0651-0035: (1) The proposed change to      1.27 and 1.28
will permit an applicant to establish small entity status in an
application by a simple assertion of entitlement to small entity status
(without a statement having a formalistic reference to    1.9 or a
standard form (PTO/SB/09/10/11/12)); (2) the proposed change to
1.55, 1.63 and 1.78 would eliminate the need for an applicant using the
application data sheet (   1.76) to provide priority claims in the oath
or declaration or specification; (3) the proposed change to    1.96
would require applicants to submit lengthy computer listings on a CD-ROM
or CD-R (rather than microfiche); (4) the proposed change to      1.821,
1.823, and 1.825 would permit applicants to submit sequence listings on
a CD-ROM or CD-R (rather than paper); and (5) the proposed change to
1.155 would allow an applicant to seek expedited examination of a design
application by filing a request for expedited examination.

   As discussed above, the notice also involves currently approved
information collections under OMB control numbers: 0651-0016, 0651-0020,
0651-0021, 0651-0022, 0651-0024, 0651-0027, 0651-0033, 0651-0034, and
0651-0037. The Patent and Trademark Office is not resubmitting
information collection packages to OMB for its review and approval of
these information collections because the changes proposed in this
notice do not affect the information collection requirements associated
with the information collections under these OMB control numbers.

   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. Included in each estimate is the time for
reviewing instructions, gathering and maintaining the data needed, and
completing and reviewing the collection of information. Any collections
of information whose requirements will be revised as a result of the
proposed rule changes discussed in this notice will be submitted to OMB
for approval. The principal impact of the changes under consideration in
this notice is to raise the efficiency and effectiveness of the Patent
and Trademark Office's business processes to make the Patent and
Trademark Office a more business-like agency and increase the level of
the Patent and Trademark Office's service to the public.

   OMB Number: 0651-0016. Title: Rules for Patent Maintenance Fees.

   Form Numbers: PTO/SB/45/47/65/66.

   Type of Review: Approved through July of 1999.

   Affected Public: Individuals or Households, Business or Other
For-Profit, Not-for-Profit Institutions and Federal Government.

   Estimated Number of Respondents: 273,800.

   Estimated Time Per Response: 0.08 hour.

   Estimated Total Annual Burden Hours: 22,640 hours.

   Needs and Uses: Maintenance fees are required to maintain a patent,
except for design or plant patents, in force under 35 U.S.C. 41(b).
Payment of maintenance fees are required at 3 1/2, 7 1/2  and 11 1/2
years after the grant of the patent. A patent number and application
number of the patent on which maintenance fees are paid are required in
order to ensure proper crediting of such payments.

   OMB Number: 0651-0020.

   Title: Patent Term Extension.

   Form Numbers: None.

   Type of Review: Approved through September of 2001.

   Affected Public: Individuals or households, businesses or other
for-profit, not-for-profit institutions, farms, Federal Government, and
state, local, or tribal governments.

   Estimated Number of Respondents: 57.

   Estimated Time Per Response: 22.8 hour.

   Estimated Total Annual Burden Hours: 1,302 hours.

   Needs and Uses: The information supplied to the PTO by an applicant
seeking a patent term extension is used by the Patent and Trademark
Office, the Department of Health and Human Services, and the Department
of Agriculture to determine the eligibility of a patent for extension
and to determine the period of any such extension. The applicant can
apply for patent term and interim extensions, petition the Patent and
Trademark Office to review final eligibility decisions, and withdraw
patent term extensions. If there are multiple patents, the applicant can
designate which patents should be extended. An applicant can also
declare their eligibility to apply for a patent term extension.

   OMB Number: 0651-0021.

   Title: Patent Cooperation Treaty.

   Form Numbers: PCT/RO/101, ANNEX/134/144, PTO-1382, PCT/IPEA/401,
PCT/IB/328.

   Type of Review: Approved through May of 2000.

   Affected Public: Individuals or Households, Business or Other
For-Profit, Federal Agencies or Employees, Not-for-Profit Institutions,
Small Businesses or Organizations.

   Estimated Number of Respondents: 102,950.

   Estimated Time Per Response: 0.9538 hour.

   Estimated Total Annual Burden Hours: 98,195 hours.

   Needs and Uses: The information collected is required by the Patent
Cooperation Treaty (PCT). The general purpose of the PCT is to simplify
the filing of patent applications on the same invention in different
countries. It provides for a centralized filing procedure and a
standardized application format.

   OMB Number: 0651-0022.

   Title: Deposit of Biological Materials for Patent Purposes.

   Form Numbers: None.

   Type of Review: Approved through December of 2000.

   Affected Public: Individuals or Households, State or Local Governments,
Farms, Business or Other For-Profit, Federal Agencies or Employees,
Not-for-Profit Institutions, Small Businesses or Organizations.

   Estimated Number of Respondents: 3,300.

   Estimated Time Per Response: 1.0 hour.

   Estimated Total Annual Burden Hours: 3,300 hours.

   Needs and Uses: Information on depositing of biological materials in
depositories is required for (1) Office determination of compliance with
the patent statute where the invention sought to be patented relies on
biological material subject to deposit requirement, which includes
notifying interested members of the public where to obtain samples of
deposits, and (2) depositories desiring to be recognized as suitable by
the Office.

   OMB Number: 0651-0024.

   Title: Requirements for Patent Applications Containing Nucleotide
Sequence and/or Amino Acid Sequence Disclosures.

   Form Numbers: None.

   Type of Review: Approved through November of 1999.

   Affected Public: Individuals or households, business or other for-profit
institutions, not-for-profit institutions, and Federal Government.

   Estimated Number of Respondents: 4,600.

   Estimated Time Per Response: 80 minutes.

   Estimated Total Annual Burden Hours: 6,133 hours.

   Needs and Uses: This information is used by the Office during the
examination process, the public and the patent bar. The Patent and
Trademark Office also participates with the EPO and JPO in a Trilateral
Sequence Exchange project, to facilitate the international exchange of
published sequence data.

   OMB Number: 0651-0027.

   Title: Changes in Patent and Trademark Assignment Practices.

   Form Numbers: PTO-1618 and PTO-1619, PTO/SB/15/41.

   Type of Review: Approved through May of 2002.

   Affected Public: Individuals or Households and Businesses or Other
For-Profit.

   Estimated Number of Respondents: 209,040.

   Estimated Time Per Response: 0.5 hour.

   Estimated Total Annual Burden Hours: 104,520 hours.

   Needs and Uses: The Office records about 209,040 assignments or
documents related to ownership of patent and trademark cases each year.
The Office requires a cover sheet to expedite the processing of these
documents and to ensure that they are properly recorded.

   OMB Number: 0651-0031.

   Title: Patent Processing (Updating).

   Form Numbers: PTO/SB/08/21-27/31/42/43/61/62/63/64/67/68/91/92/96/97.

   Type of Review: Approved through September of 2000.

   Affected Public: Individuals or Households, Business or Other For-Profit
Institutions, Not-for-Profit Institutions and Federal Government.

   Estimated Number of Respondents: 2,040,630.

   Estimated Time Per Response: 0.39 hours.

   Estimated Total Annual Burden Hours: 788,421 hours.

   Needs and Uses: During the processing for an application for a patent,
the applicant/agent may be required or desire to submit additional
information to the Office concerning the examination of a specific
application. The specific information required or which may be submitted
includes: Information Disclosure Statements; Terminal Disclaimers;
Petitions to Revive; Express Abandonments; Appeal Notices; Petitions for
Access; Powers to Inspect; Certificates of Mailing or Transmission;
Statements under    3.73(b); Amendments, Petitions and their Transmittal
Letters; and Deposit Account Order Forms.

   OMB Number: 0651-0032.

   Title: Initial Patent Application.

   Form Number: PTO/SB/01-07/13PCT/17-19/29/101-110.

   Type of Review: Approved through September of 2000.

   Affected Public: Individuals or Households, Business or Other
For-Profit, Not-for-Profit Institutions and Federal Government.

   Estimated Number of Respondents: 344,100.

   Estimated Time Per Response: 8.7 hours.

   Estimated Total Annual Burden Hours: 2,994,160 hours.

   Needs and Uses: The purpose of this information collection is to permit
the Office to determine whether an application meets the criteria set
forth in the patent statute and regulations. The standard Fee
Transmittal form, New Utility Patent Application Transmittal form, New
Design Patent Application Transmittal form, New Plant Patent Application
Transmittal form, Declaration, and Plant Patent Application Declaration
will assist applicants in complying with the requirements of the patent
statute and regulations, and will further assist the Office in
processing and examination of the application.

   OMB Number: 0651-0033.

   Title: Post Allowance and Refiling.

   Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.

   Type of Review: Approved through September of 2000.

   Affected Public: Individuals or Households, Business or Other
For-Profit, Not-for-Profit Institutions and Federal Government.

   Estimated Number of Respondents: 135,250.

   Estimated Time Per Response: 0.325 hour.

   Estimated Total Annual Burden Hours: 43,893 hours.

   Needs and Uses: This collection of information is required to administer
the patent laws pursuant to title 35, U.S.C., concerning the issuance of
patents and related actions including correcting errors in printed
patents, refiling of patent applications, requesting reexamination of a
patent, and requesting a reissue patent to correct an error in a patent.
The affected public includes any individual or institution whose
application for a patent has been allowed or who takes action as covered
by the applicable rules.

   OMB Number: 0651-0034.

   Title: Secrecy/License to Export.

   Form Numbers: None.

   Type of Review: Approved through January of 2001.

   Affected Public: Individuals or Households, Business or Other
For-Profit, Not-for-Profit Institutions and Federal Government.

   Estimated Number of Respondents: 2,187.

   Estimated Time Per Response: 0.67 hour.

   Estimated Total Annual Burden Hours: 1,476 hours.

   Needs and Uses: In the interest of national security, patent laws and
regulations place certain limitations on the disclosure of information
contained in patents and patent applications and on the filing of
applications for patent in foreign countries.

   OMB Number: 0651-0035.

   Title: Address-Affecting Provisions.

   Form Numbers: PTO/SB/81-84/121-125.

   Type of Review: Approved through June of 1999.

   Affected Public: Individuals or Households, Business or Other
For-Profit, Not-for-Profit Institutions and Federal Government.

   Estimated Number of Respondents: 263,520.

   Estimated Time Per Response: 0.05 hour.

   Estimated Total Annual Burden Hours: 13,386 hours.

   Needs and Uses: Under existing law, a patent applicant or assignee may
appoint, revoke or change a representative to act in a representative
capacity. Also, an appointed representative may withdraw from acting in
a representative capacity. This collection includes the information
needed to ensure that Office correspondence reaches the appropriate
individual.

   OMB Number: 0651-0037.

   Title: Provisional Applications.

   Form Numbers: PTO/SB/16.

   Type of Review: Approved through January of 2001.

   Affected Public: Individuals or Households, Business or Other
For-Profit, Not-for-Profit Institutions and Federal Government.

   Estimated Number of Respondents: 25,000.

   Estimated Time Per Response: 8.0 hour.

   Estimated Total Annual Burden Hours: 200,000 hours.

   Needs and Uses: The information included on the provisional application
cover sheet is needed by the Office to identify the submission as a
provisional application and not some other kind of submission, to
promptly and properly process the provisional application, to prepare
the provisional application filing receipt which is sent to the
applicant, and to identify those provisional applications which must be
reviewed by the Office for foreign filing licenses.

   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.

   As required by the Paperwork Reduction Act of 1995 (44 U.S.C. 3507(d)),
the Patent and Trademark Office has submitted an information collection
package to OMB for its review and approval of the proposed information
collections under OMB control numbers 0651-0031, 0651-0032, and
0651-0035. As discussed above, the notice also involves currently
approved information collections under OMB control numbers: 0651-0016,
0651-0020, 0651-0021, 0651-0022, 0651-0024, 0651-0027, 0651-0033,
0651-0034, and 0651-0037. The Patent and Trademark Office is not
resubmitting information collection packages to OMB for its review and
approval of these information collections because the changes proposed
in this notice do not materially affect, or change the burden hours
associated with, these information collections.

   Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this burden,
to Robert J. Spar, Director, Special Program Law Office, Patent and
Trademark Office, Washington, D.C. 20231, or to the Office of
Information and Regulatory Affairs of OMB, New Executive Office
Building, 725 17th Street, NW, room 10235, Washington, DC 20503,
Attention: Desk Officer for the Patent and Trademark Office.

   The Chief Counsel for Regulation of the Department of Commerce certified
to the Chief Counsel for Advocacy, Small Business Administration, that
the changes proposed in this rule, if adopted, would not have a
significant impact on a substantial number of small entities (Regulatory
Flexibility Act, 5 U.S.C. 605(b)). In furtherance of the Patent Business
Goals, the Office is proposing changes to the rules of practice to
eliminate unnecessary formal requirements, streamline the patent
application process, and simplify and clarify procedures. In
streamlining this process, the Office will be able to issue a patent in
a shorter time by eliminating formal requirements that must be performed
by the applicant, his or her representatives and the Office. All
applicants will benefit from a reduced overall cost to them for
receiving patent protection and from a faster receipt of their patents.
In addition, small entities will benefit from the proposed changes to
the requirements for establishing small entity status under    1.27 for
purposes of paying reduced patent fees under 35 U.S.C.41(h). The
currently used small entity statement forms are proposed to be
eliminated. Small entity status would be established at any time by a
simple assertion of entitlement to small entity status. A simpler
procedure to establish small entity status would reduce processing time
with the Office and would be a benefit to small entity applicants as it
would eliminate the time-consuming and aggravating processing
requirements that are mandated by the current rules.

   The Patent and Trademark Office has determined that this notice has no
Federalism implications affecting the relationship between the National
Government and the States as outlined in Executive Order 12612.

List of Subjects

37 CFR Part 1


   Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.

37 CFR Part 3

   Administrative practice and procedure, Inventions and patents,
Reporting and record keeping requirements.

37 CFR Part 5

   Classified information, Foreign relations, Inventions and patents.

37 CFR Part 10

   Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.

   For the reasons set forth in the preamble, 37 CFR parts 1, 3, 5, and 10
are proposed to be amended as follows:

PART 1-RULES OF PRACTICE IN PATENT CASES

   1. The authority citation for 37 CFR part 1 is revised to read as
follows:

   Authority: 35 U.S.C. 6, unless otherwise noted.

   2. Section 1.4 is proposed to be amended by revising paragraphs (b)and
   (c) to read as follows:

1.4 Nature of correspondence and signature requirements.

* * * * *

   (b) Since each file must be complete in itself, a separate copy of
every paper to be filed in a patent or trademark application, patent
file, trademark registration file, or other proceeding must be furnished
for each file to which the paper pertains, even though the contents of
the papers filed in two or more files may be identical. The filing of
duplicate copies of correspondence in the file of an application,
patent, trademark registration file, or other proceeding should be
avoided, except in situations in which the Office requires the filing of
duplicate copies. The Office may dispose of duplicate copies of
correspondence in the file of an application, patent, trademark
registration file, or other proceeding.

   (c) Since different matters may be considered by different branches or
sections of the Patent and Trademark Office, each distinct subject,
inquiry or order must be contained in a separate paper to avoid
confusion and delay in answering papers dealing with different subjects.

* * * * *

   3. Section 1.6 is proposed to be amended by revising paragraph(d)(9)
to read as follows:

1.6 Receipt of correspondence.

* * * * *

   (d) * * *

   (9) Correspondence to be filed in an interference proceeding which
consists of a preliminary statement under    1.621; a transcript of a
deposition under    1.676 or of interrogatories, or
cross-interrogatories; or an evidentiary record and exhibits under
1.653.

* * * * *
   4. Section 1.9 is proposed to be amended by removing and reserving
paragraphs (c), (d) and (e), and revising paragraph (f) and adding a new
paragraph (i) to read as follows:

1.9 Definitions.

* * * * *

   (f) Small entities. A small entity as used in this chapter means any
party (person, small business concern, or nonprofit organization) under
paragraphs (f)(1) through (f)(3) of this section.

   (1) Person: A person, as used in    1.27(b), means any inventor or other
individual (e.g., an individual to whom an inventor has transferred some
rights in the invention), who has not assigned, granted, conveyed, or
licensed, and is under no obligation under contract or law to assign,
grant, convey, or license, any rights in the invention. An inventor or
other individual who has transferred some rights, or is under an
obligation to transfer some rights in the invention to one or more
parties, can also qualify for small entity status if all the parties who
have had rights in the invention transferred to them also qualify for
small entity status either as a person, small business concern, or
nonprofit organization under this section.

   (2) Small business concern: A small business concern, as used in
1.27(b), means any business concern that:

   (i) Has not assigned, granted, conveyed, or licensed, and is under no
obligation under contract or law to assign, grant, convey, or license,
any rights in the invention to any person, concern, or organization
which would not qualify under this section for small entity status as a
person, small business concern, or nonprofit organization.

   (ii) Meets the size standards set forth in 13 CFR part 121 to be
eligible for reduced patent fees. Questions related to size standards
for a small business concern may be directed to: Small Business
Administration, Size Standards Staff, 409 Third Street, SW, Washington,
DC 20416.

   (3) Nonprofit organization. A nonprofit organization, as used in
1.27(b), means any nonprofit organization that:

   (i) Has not assigned, granted, conveyed, or licensed, and is under no
obligation under contract or law to assign, grant, convey, or license,
any rights in the invention to any person who could not qualify for
small entity status, or to any concern or organization which would not
qualify as a small business concern, or a nonprofit organization under
this section, and

   (ii) Is either:

   (A) A university or other institution of higher education located in any
country;

   (B) An organization of the type described in section 501(c)(3) of the
Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from
taxation under section 501(a) of the Internal Revenue Code (26 U.S.C.
501(a));

   (C) Any nonprofit scientific or educational organization qualified under
a nonprofit organization statute of a state of this country (35 U.S.C.
201(i)); or

   (D) Any nonprofit organization located in a foreign country which would
qualify as a nonprofit organization under paragraphs (f)(3)(ii)(B) or
(f)(3)(ii)(C) of this section if it were located in this country.

   (4) License to a Federal Agency. (i) For persons under paragraph (f)(1)
of this section, a license to the Government resulting from a rights
determination under Executive Order 10096 does not constitute a license
so as to prohibit claiming small entity status.

   (ii) For small business concerns and nonprofit organizations under
paragraphs (f)(2) and (f)(3) of this section, 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.

* * * * *

   (i) National security classified as used in this chapter means
specifically authorized under criteria established by an Act of Congress
or Executive order to be kept secret in the interest of national defense
or foreign policy and, in fact, properly classified pursuant to such Act
of Congress or Executive order.

   5. Section 1.12 is proposed to be amended by revising paragraph(c)(1) to
read as follows:

1.12 Assignment records open to public inspection.

* * * * *

   (c) * * *

   (1) Be in the form of a petition including the fee set forth in
1.17(h); or

* * * * *

   6. Section 1.14 is proposed to be revised to read as follows:

1.14 Patent applications preserved in confidence.

   (a) Confidentiality of patent application information. Patent
applications are generally preserved in confidence pursuant to 35 U.S.C.
122. Information concerning the filing, pendency, or subject matter of
an application for patent, including status information, and access to
the application, will only be given to the public as set forth in
1.11 or in this section.

   (1) Status information is:

   (i) Whether the application is pending, abandoned, or patented; and

   (ii) The application ``numerical identifier'' which may be:

   (A) The eight digit application number (the two digit series code plus
the six digit serial number); or

   (B) The six digit serial number plus any of the filing date of the
national application, the international filing date, or date of entry
into the national stage.

   (2) Access is defined as providing the application file for review and
copying of any material.

   (b) When status information may be supplied. Status information of an
application may be supplied by the Office to the public if any of the
following apply:

   (1) Access to the application is available pursuant to paragraph (e) of
this section;

   (2) The application is referred to by its numerical identifier in a
published patent document (e.g., a U.S. patent or a published
international application) or in a U.S. application open to public
inspection (   1.11(b) or paragraph (e)(2)(i) of this section); or

   (3) The application is a published international application in which
the United States of America has been indicated as a designated state.

   (c) Copy of application-as-filed. If a pending or abandoned application
is incorporated by reference in a U.S. patent, a copy ofthat
application-as-filed may be provided to any person upon written request
including the fee set forth in    1.19(b)(1).

   (d) Power to inspect a pending or abandoned application may be granted
by a party named in the application file. Access to an application may
be provided to any person if the application file is available, and the
application contains written authority (e.g., a power to inspect) in
that particular application granting access to such person that is
signed by:

   (1) An applicant;

   (2) An attorney or agent of record;

   (3) An authorized official of an assignee of record (made of record
pursuant to    3.71 of this chapter); or

   (4) A registered attorney or agent named in papers accompanying the
application papers filed under    1.53 or the national stage documents
filed under      1.494 or 1.495, if an executed oath or declaration
pursuant to    1.63 or    1.497 has not been filed.

   (e) Public access to a pending or abandoned application may be provided.
Access to an application may be provided to any person if a written
request for access is submitted, the application file is available, and
any of the following apply:

   (1) The application is open to public inspection pursuant to    1.11(b);
or

   (2) The application is abandoned, it is not within the file jacket of a
pending application under    1.53(d), and it is referred to:

   (i) In a U.S. patent; or

   (ii) In another U.S. application which is open to public inspection
either pursuant to    1.11(b) or paragraph (e)(2)(i) of this section.

   (f) Applications that may be destroyed. Applications that are abandoned
or for which proceedings are otherwise terminated may be destroyed, and
thus may not be available for access as permitted by paragraphs (d) or
(e) of this section, after twenty years from their filing or deposit
date. Exceptions may be made for applications to which particular
attention has been called and which have been marked for preservation.

   (g) Applications reported to Department of Energy. Applications for
patents which appear to disclose, purport to disclose or do disclose
inventions or discoveries relating to atomic energy are reported to the
Department of Energy, which Department will be given access to the
applications. Such reporting does not constitute a determination that
the subject matter of each application so reported is in fact useful or
is an invention or discovery, or that such application in fact discloses
subject matter in categories specified by 42 U.S.C. 2181 (c) and (d).

   (h) Decisions by the Commissioner or the Board of Patent Appealsand
Interferences. Any decision by the Commissioner or the Board of Patent
Appeals and Interferences which would not otherwise be open to public
inspection may be published or made available for public inspection if:

   (1) The Commissioner believes the decision involves an interpretation of
patent laws or regulations that would be of precedential value; and

   (2) The applicant, or a party involved in an interference for which a
decision was rendered, is given notice and an opportunity to object in
writing within two months on the ground that the decision discloses a
trade secret or other confidential information. Any objection must
identify the deletions in the text of the decision considered necessary
to protect the information, or explain why the entire decision must be
withheld from the public to protect such information. An applicant or
party will be given time, not less than twenty days, to request
reconsideration and seek court review before any portions of a decision
are made public under this paragraph over his or her objection.

   (i) Publication pursuant to    1.47. Information as to the filing of an
application will be published in the Official Gazette in accordance with
   1.47 (a) and (b).

   (j) International applications. Copies of an application file for which
the United States acted as the International Preliminary Examining
Authority, or copies of a document in such an application file, will be
furnished in accordance with Patent Cooperation Treaty (PCT) Rule 94.2
or 94.3, upon payment of the appropriate fee (   1.19(b)(2) or
1.19(b)(3)).

   (k) Access or copies in other circumstances. The Office, either sua
sponte or on petition, may also provide access or copies of an
application if necessary to carry out an Act of Congress or if warranted
by other special circumstances. Any petition by a member of the public
seeking access to, or copies of, any pending or abandoned application
preserved in confidence pursuant to paragraph (a) of this section, or
any related papers, must include:

   (1) The fee set forth in    1.17(h); and

   (2) A showing that access to the application is necessary to carry out
an Act of Congress or that special circumstances exist which warrant
petitioner being granted access to the application.

   7. Section 1.17 is proposed to be amended by revising paragraphs (h),
(i), (k), (l), (m), and (q) and adding paragraph (t) to read as follows:

   1.17 National application processing fees.

* * * * *

   (h) For filing a petition to the Commissioner under a section listed
below which refers to this paragraph                                $130.00

   1.12-for access to an assignment record.

   1.14-for access to an application.

   1.47-for filing by other than all the inventors or a person not the
inventor.

   1.53(e)-to accord a filing date.

   1.59-for expungement and return of information.

   1.91-for entry of a model or exhibit.

   1.102-to make an application special.

   1.103(a)-to suspend action in application.

   1.182-for decision on a question not specifically provided for.

   1.183-to suspend the rules.

   1.295-for review of refusal to publish a statutory invention
registration.

   1.313-to withdraw an application from issue.

   1.314-to defer issuance of a patent.

   1.377-for review of decision refusing to accept and record payment of
a maintenance fee filed prior to expiration of a patent.

   1.378(e)-for reconsideration of decision on petition refusing to
accept delayed payment ofmaintenance fee in an expired patent.

   1.550(c)(2)-for a petition for an extension of time to accept an
unintentionally delayed response in a reexamination proceeding.

   1.644(e)-for petition in an interference.

   1.644(f)-for request for reconsideration of a decision on petition in
an interference.

   1.666(b)-for access to an interference settlement agreement.

   1.666(c)-for late filing of interference settlement agreement.

   1.741(b)-to accord a filing date to an application for extension of a
patent term.

   5.12-for expedited handling of a foreign filing license.

   5.15-for changing the scope of a license.

   5.25-for retroactive license.

   (i) Processing fee for taking action under a section listed below which
refers to this paragraph                                             130.00

   1.28(c)(3)-for processing a non-itemized fee deficiency based on
an error in small entity status.

   1.41-for supplying the name or names of the inventor or inventors
after the filing date without an oath or declaration as prescribed by
1.63,except in provisional applications.

   1.48-for correcting inventorship, except in provisional applications.

   1.52(d)-for processing a nonprovisional application filed with a
specification in a language other than English.

   1.55-for entry of late priority papers.

   1.103(b)-for requesting limited suspension of action in continued
prosecution application.

   1.497(d)-for filing an oath or declaration pursuant to 35 U.S.C.
371(c)(4) naming an inventiveentity different from the inventive entity
set forthin the international stage.

* * * * * * *

   (k) For accepting color drawings or color photographs
   (   1.84(a))                                                      200.00

   (l) For filing a petition for the revival of an unavoidably abandoned
application under 35 U.S.C. 111, 133, 364, or 371, or the unavoidably
delayed payment of the issue fee under 35 U.S.C. 151 (   1.137(a)):

   By a small entity (   1.9(f))                                      55.00

   By other than a small entity                                      110.00

   m) For filing a petition for the revival of an unintentionally abandoned
application or the unintentionally delayed payment of the issue fee
under 35 U.S.C. 41(a)(7) (   1.137(b)):

   By a small entity (   1.9(f))                                     605.00

   By other than a small entity                                    1,210.00

* * * * * * *

   (q) Processing fee for taking action under a section listed below which
refers to this paragraph                                              50.00

   1.41-to supply the name or names of the inventor or inventors
after the filing date without a coversheet as prescribed by
1.51(c)(1) in a provisional application.

   1.48-for correction of inventorship in a provisional application.

   1.53(c)-to convert a nonprovisional application filed under
1.53(b) to a provisional application under    1.53(c).

* * * * * * *

   (t) For filing a request for expedited examination
under    1.155(a)                                                    900.00

   8. Section 1.19 is proposed to be amended by revising its
introductory text and paragraphs (a) and (b) and removing paragraph (h)
to read as follows:

   1.19 Document supply fees.

   The Patent and Trademark Office will supply copies of the following
documents upon payment of the fees indicated. The copies will be in
black and white unless the original document is in color, a color copy
is requested and the fee for a color copy is paid.

   (a) Uncertified copies of patents:

   (1) Printed copy of a patent, including a design patent, statutory
invention registration, or defensive publication document:

   (i) Regular service                                               $ 3.00

   (ii) Overnight delivery to PTO Box or overnight facsimile           6.00

   (iii) Expedited service for copy ordered byexpedited mail or
facsimile delivery service and delivered to the customer within two
workdays                                                              25.00

   (2) Printed copy of a plant patent in color                        15.00

   (3) Color copy of a patent (other than a plant patent)  or statutory
invention registration containing a color drawing                     25.00

   (b) Certified and uncertified copies of Office documents:

   (1) Certified or uncertified copy of patent application as filed:

   (i) Regular service                                                15.00

   (ii) Expedited regular service                                     30.00

   (2) Certified or uncertified copy of patent-related file wrapper and
contents:

   (i) File wrapper and contents of 400 or fewer pages               250.00

   (ii) Additional fee for each additional 100 pages or
portion thereof                                                       25.00

   (3) Certified or uncertified copy of Office records, per document
except as otherwise provided in this section                          25.00

   (4) For assignment records, abstract of title and certification, per
patent                                                                25.00

* * * * * * *

   9. Section 1.22 is proposed to be amended by revising paragraph (b)
and adding paragraph (c) to read as follows:

   1.22 Fee payable in advance.

* * * * *

   (b) All fees paid to the Patent and Trademark Office must be itemized in
each individual application, patent, trademark registration file, or
other proceeding in such a manner that it is clear for which purpose the
fees are paid. The Office may return fees that are not itemized as
required by this paragraph. The provisions of    1.5(a) do not apply to
the resubmission of fees returned pursuant to this paragraph.

   (c)(1) A fee paid by an authorization to charge such fee to a deposit
account containing sufficient funds to cover the applicable fee amount (
  1.25) is considered paid:

   (i) On the date the paper for which the fee is payable is received in
the Office (   1.6), if the paper including the deposit account charge
authorization was filed prior to or concurrently with such paper;

   (ii) On the date the paper including the deposit account charge
authorization is received in the Office (   1.6), if the paper including
the deposit account charge authorization is filed after the filing of
the paper for which the fee is payable; and

   (iii) On the date of the agreement, if the deposit account charge
authorization is the result of an agreement between the applicant and an
Office employee that is reduced to a writing.

   (2) A fee paid other than by an authorization to charge such fee to a
deposit account is considered paid on the date the applicable fee amount
is received in the Office (   1.6).

   (3) The applicable fee amount is determined by the fee in effect on the
date such fee is paid in full.

   10. Section 1.25 is proposed to be amended by revising paragraph(b) to
read as follows:

   1.25 Deposit accounts.

* * * * *

   (b) Filing, issue, appeal, international-type search report,
international application processing, petition, and post-issuance fees
may be charged against these accounts if sufficient funds are on deposit
to cover such fees. A general authorization to charge all fees, or only
certain fees, set forth in    1.16 to    1.18 to a deposit account
containing sufficient funds may be filed in an individual application,
either for the entire pendency of the application or with respect to a
particular paper filed. An authorization to charge fees under    1.16 in
an application submitted under    1.494, or    1.495 will be treated as
an authorization to charge fees under    1.492. An authorization to
charge fees set forth in    1.18 to a deposit account is subject to the
provisions of    1.311(b). An authorization to charge to a deposit
account the fee for a request for reexamination pursuant to    1.510 and
any other fees required in a reexamination proceeding in a patent may
also be filed with the request for reexamination. An authorization to
charge a fee to a deposit account will not be considered payment of the
fee on the date the authorization to charge the fee is effective as to
the particular fee to be charged unless sufficient funds are present in
the account to cover the fee.

   11. Section 1.26 is proposed to be amended by revising paragraph(a) and
adding paragraph (b) to read as follows:

   1.26 Refunds.

   (a) The Commissioner may refund a fee paid by mistake or in excess of
that required. A change of purpose after the payment of a fee, as when a
party desires to withdraw a patent or trademark filing for which the fee
was paid, including an application, an appeal, or a request for an oral
hearing, will not entitle a party to a refund of such fee. The Office
will not refund amounts of twenty-five dollars or less unless a refund
is specifically requested, and will not notify the payor of such
amounts. If a party paying a fee or requesting a refund does not
instruct the Office that refunds are to be credited to a deposit
account, and does not provide the banking information necessary for
making refunds by electronic funds transfer, the Commissioner may either
require such banking information or use the banking information on the
payment instrument to make a refund.

   (b) Any request for refund must be filed within two years from the date
the fee was paid, except as otherwise provided in this paragraph or in
 1.28(a). If the Office charges a deposit account by an amount other
than an amount specifically indicated in an authorization (   1.25(b)),
any request for refund based upon such charge must be filed within two
years from the date of the deposit account statement indicating such
charge, and include a copy of that deposit account statement. The time
periods set forth in this paragraph are not extendable.

* * * * *

   12. Section 1.27 is proposed to be revised to read as follows:

   1.27 Establishing status as small entity to permit payment of small
entity fees; when a determination of entitlement to small entity status
and notification of loss of entitlement to small entity status are
required; fraud on the Office.

   (a) Establishment of small entity status permits payment of reduced
fees. A small entity, as defined in    1.9(f), who has properly asserted
entitlement to small entity status pursuant to paragraph (b) of this
section will be accorded small entity status by the Office in the
particular application or patent in which entitlement to small entity
status was asserted. Establishment of small entity status allows the
payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h).

   (b) Assertion of small entity status. Any party (person, small business
concern or nonprofit organization) who has made a determination,
pursuant to paragraph (e) of this section, of entitlement to be accorded
small entity status pursuant to    1.9(f) must, in order to establish
small entity status for the purpose of paying small entity fees, make an
assertion of entitlement to small entity status, pursuant to paragraph
(b)(1) or (b)(3) of this section, in the application or patent in which
such small entity fees are to bepaid.

   (1) Assertion by writing. Small entity status may be established by a
written assertion of entitlement to small entity status. A written
assertion must:

   (i) Be clearly identifiable;

   (ii) Be signed; and

   (iii) Convey the concept of entitlement to small entity status, such as
by stating that applicant is a small entity, or that small entity status
is entitled to be asserted for the application or patent. While no
specific words or wording are required to assert small entity status,
the intent to assert small entity status must be clearly indicated in
order to comply with the assertion requirement.

   (2) Parties who can sign the written assertion. The written assertion
can be signed by:

   (i) One of the parties identified in    1.33(b) (e.g., an attorney or
agent registered with the Office),    3.73(b) of this chapter
notwithstanding;

   (ii) At least one of the inventors,    1.33(b)(4) notwithstanding; or

   (iii) An assignee of an undivided part interest,      1.33(b)(3) and
3.73(b) of this chapter notwithstanding.

   (3) Assertion by payment of the small entity basic filing or national
fee. The payment, by any party, of the exact amount of one of the small
entity basic filing fees set forth in    1.16(a), (f), (g), (h), or (k),
or one of the small entity national fees set forth in    1.492(a)(1),
(a)(2), (a)(3), (a)(4), or (a)(5), will be treated as a written
assertion of entitlement to small entity status even if the type of
basic filing or national fee is inadvertently selected in error.

   (i) If the Office accords small entity status based on payment of a
small entity fee that is not applicable to that application, any balance
of the small entity fee that is applicable to that application will be
due.

   (ii) The payment of any small entity fee other than those set forth in
paragraph (b)(3) (whether in the exact fee amount or not) of this
section will not be treated as a written assertion of entitlement to
small entity status and will not be sufficient to establish small entity
status in an application or a patent.

   (4) Assertion required in related, continuing, and reissue applications.
Status as a small entity must be specifically established by an
assertion in each related, continuing and reissue application in which
status is appropriate and desired. Status as a small entity in one
application or patent does not affect the status of any other
application or patent, regardless of the relationship of the
applications or patents. The refiling of an application under    1.53 as
a continuation, divisional, or continuation-in-part application
(including a continued prosecution application under    1.53(d)), or the
filing of a reissue application, requires a new assertion as to
continued entitlement to small entity status for the continuing or
reissue application.

   (c) When small entity fees can be paid. Any fee, other than the small
entity basic filing fees and the small entity national fees of paragraph
(b)(3) of this section, can be paid in the small entity amount only if
it is submitted with, or subsequent to, the submission of a written
assertion of entitlement to small entity status, except when refunds are
permitted by    1.28(a).

   (d) Only one assertion required. (1) An assertion of small entity status
need only be filed once in an application or patent. Small entity
status, once established, remains in effect until changed pursuant to
1.28(b) of this part. Where an assignment of rights or an obligation to
assign rights to other parties who are small entities occurs subsequent
to an assertion of small entity status, a second assertion is not
required.

   (2) Once small entity status is withdrawn pursuant to paragraph (f)(2)
of this section, a new written assertion is required to again obtain
small entity status.

   (e) Assertion requires a determination of entitlement to pay small
entity fees. Prior to submitting an assertion of entitlement to small
entity status in an application, including a related, continuing, or
reissue application, a determination of such entitlement should be made
pursuant to the requirements of    1.9(f). It should be determined that
all parties holding rights in the invention qualify for small entity
status. The Office will generally not question any assertion of small
entity status that is made in accordance with the requirements of this
section, but note paragraph (g) of this section.

   (f)(1) New determination of entitlement to small entity status is needed
when issue and maintenance fees are due. Once status as a small entity
has been established in an application or patent, fees as asmall entity
may thereafter be paid in that application or patent without regard to a
change in status until the issue fee is due or any maintenance fee is
due.

   (2) Notification of loss of entitlement to small entity status is
required when issue and maintenance fees are due. Notification of a loss
of entitlement to small entity status must be filed in the application
or patent prior to paying, or at the time of paying, the earliest of the
issue fee or any maintenance fee due after the date on which status as a
small entity as defined in    1.9(f) is no longer appropriate. The
notification that small entity status is no longer appropriate must be
signed by a party identified in    1.33(b). Payment of a fee in other
than the small entity amount is not sufficient notification that small
entity status is no longer appropriate.

   (g) Fraud attempted or practiced on the Office. (1) Any attempt to
fraudulently establish status as a small entity, or to pay fees as a
small entity, shall be considered as a fraud practiced or attempted on
the Office.

   (2) Improperly, and with intent to deceive, establishing status as a
small entity, or paying fees as a small entity, shall be considered as a
fraud practiced or attempted on the Office.

   13. Section 1.28 is proposed to be revised to read as follows:

   1.28 Refunds when small entity status is later established; how
errors in small entity status are excused.

   (a) Refunds based on later establishment of small entity status: A
refund pursuant to    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 an
assertion under    1.27(b) and a request for a refund of the excess
amount are filed within three months of the date of the timely payment
of the full fee. The three-month time period is not extendable under
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
three months of the date of payment of, the full fee.

   (b) Date of payment. (1) The three-month period for requesting a refund,
pursuant to paragraph (a) of this section, starts on the date that a
full fee has been paid as defined in    1.22(c);

   (2) The date when a deficiency payment is paid in full determines the
amount of deficiency that is due, pursuant to paragraph (c) of this
section, and is defined in    1.22(c).

   (c) How errors in small entity status are excused. 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 loss of entitlement to
small entity status as required by    1.27(f)(2), the error will be
excused upon: compliance with the separate submission and itemization
requirements of paragraphs (c)(1) and (c)(2) of this section, and the
deficiency payment requirement of paragraph (c)(2) of this section:

   (1) Separate submission required for each application or patent. Any
paper submitted under this paragraph must be limited to the deficiency
payment (all fees paid in error), required by paragraph (c)(2) of this
section, for one application or one patent. Where more than one
application or patent is involved, separate submissions ofdeficiency
payments (e.g., checks) and itemizations are required for each
application or patent. See    1.4(b).

   (2) Payment of deficiency owed. The deficiency owed, resulting from the
previous erroneous payment of small entity fees, must be paid.

   (i) Calculation of the deficiency owed. The deficiency owed for each
previous fee erroneously paid as a small entity is the difference
between the current fee amount (for other than a small entity) on the
date the deficiency is paid in full and the amount of the previous
erroneous (small entity) fee payment. The total deficiency payment owed
is the sum of the individual deficiency owed amounts for each fee amount
previously erroneously paid as a small entity;

   (ii) Itemization of the deficiency payment. An itemization of the total
deficiency payment is required. The itemization must include the
following information:

   (A) Each particular type of fee that was erroneously paid as a small
entity, (e.g., basic statutory filing fee, two-month extension of time
fee) along with the current fee amount for a non-small entity;

   (B) The small entity fee actually paid, and when. This will permit the
Office to differentiate, for example, between two one-month extension of
time fees erroneously paid as a small entity but on different dates;

   (C) The deficiency owed amount (for each fee erroneously paid); and

   (D) The total deficiency payment owed, which is the sum or total of the
individual deficiency owed amounts set forth in paragraph (c)(2)(ii)(C)
of this section.

   (3) Failure to comply with requirements. If the requirements of
paragraphs (c)(1) and (c)(2) of this section are not complied with, such
failure will either: be treated as an authorization for the Office to
process the deficiency payment and charge the processing fee set forth
in    1.17(i), or result in a requirement for compliance within a
one-month non-extendable time period to avoid the return of the fee
deficiency paper, at the option of the Office.

   (d) Payment of deficiency operates as notification of loss of status.
Any payment submitted under paragraph (c) of this section will be
treated under    1.27(f)(2) as a notification of a loss of entitlement
to small entity status.

   14. Section 1.33 is proposed to be amended by revising paragraphs(a) and
(b) to read as follows:

   1.33 Correspondence respecting patent applications, reexamination
proceedings, and other proceedings.

   (a) Correspondence address and daytime telephone number. When filing
an application, a correspondence address must be set forth in either an
application data sheet (   1.76), or elsewhere in a clearly identifiable
manner in any paper submitted with an application filing. If no
correspondence address is specified, the Office may treat the mailing
address of the first named inventor (if provided, see    1.76(b)(1) and
  1.63(c)(2)) as the correspondence address. The Office will direct all
notices, official letters, and other communications relating to the
application to the correspondence address. The Office will not engage in
double correspondence with an applicant and an attorney or agent, or
with more than one attorney or agent except as deemed necessary by the
Commissioner. If more than one correspondence address is specified, the
Office will establish one as the correspondence address. For the party
to whom correspondence is to be addressed, a daytime telephone number
should be supplied in a clearly identifiable manner and may be changed
by any party who may change the correspondence address. The
correspondence address may be changed as follows:

   (1) Prior to filing of a    1.63 oath or declaration by any of the
inventors. If a Sec. 1.63 oath or declaration has not been filed by any
of the inventors, the correspondence address may be changed by the party
who filed the application. If the application was filed by a registered
attorney or agent, any other registered practitioner named in the
transmittal papers may also change the correspondence address. Thus, the
inventor(s), any registered practitioner named in the transmittal papers
accompanying the original application, or a party that will be the
assignee who filed the application, may change the correspondence
address in that application under this paragraph.

   (2) Where a    1.63 oath or declaration has been filed by any of the
inventors. If a    1.63 oath or declaration has been filed, or is filed
concurrent with the filing of an application, by any of the inventors,
the correspondence address may be changed by the parties set forth in
paragraph (b) of this section, except for (b)(2).

   (b) Amendments and other papers: Amendments and other papers filed in
the application must be signed by:

   (1) An attorney or agent of record appointed in compliance with
1.34(b);

   (2) A registered attorney or agent not of record who acts in a
representative capacity under the provisions of    1.34(a);

   (3) An assignee as provided for under    3.71(b) of this chapter; or

   (4) All of the applicants (   1.41(b)) for patent, unless there is an
assignee of the entire interest and such assignee has taken action in
the application in accordance with    3.71 of this chapter.

* * * * *

   15. Section 1.41 is proposed to be amended by revising paragraph(a)
to read as follows:

   1.41 Applicant for patent.

   (a) A patent is applied for in the name or names of the actual
inventor or inventors.

   (1) The inventorship of a nonprovisional application is that
inventorship set forth in the oath or declaration as prescribed by
1.63, except as provided for in    1.53(d)(4) and    1.63(d). If an oath
or declaration as prescribed by    1.63 is not filed during the pendency
of a nonprovisional application, the inventorship is that inventorship
set forth in the application papers filed pursuant to    1.53(b), unless
applicant files a paper including the processing fee set forth in
1.17(i) and supplying or changing the name or names of the inventor or
inventors.

   (2) The inventorship of a provisional application is that inventorship
set forth in the cover sheet as prescribed by    1.51(c)(1). If a cover
sheet as prescribed by    1.51(c)(1) is not filed during the pendency of
a provisional application, the inventorship is that inventorship set
forth in the application papers filed pursuant to    1.53(c), unless
applicant files a paper including the processing fee set forth in
1.17(q) and supplying or changing the name or names of the inventor or
inventors.

   (3) In a nonprovisional application filed without an oath or declaration
as prescribed by    1.63 or a provisional application filed without a
cover sheet as prescribed by    1.51(c)(1), the name, residence, and
citizenship of each person believed to be an actual inventor should be
provided when the application papers pursuant to    1.53(b) or (c) are
filed.

   (4) The inventors who submitted an application under      1.494 or 1.495
are the inventors in the international application designating the
United States.

* * * * *

   1.44 [Removed and reserved]

   16. Section 1.44 is proposed to be removed and reserved.

   17. Section 1.47 is proposed to be revised to read as follows:

   1.47 Filing when an inventor refuses to sign or cannot be reached.

   (a) If a joint inventor refuses to join in an application for patent
or cannot be found or reached after diligent effort, the application may
be made by the other inventor on behalf of himself or herself and the
nonsigning inventor. The oath or declaration in such an application must
be accompanied by a petition including proof of the pertinent facts, the
fee set forth in    1.17(h), and the last known address of the
nonsigning inventor. The nonsigning inventor may subsequently join in
the application on filing an oath or declaration complying with    1.63.

   (b) Whenever all of the inventors refuse to execute an application for
patent, or cannot be found or reached after diligent effort, a person to
whom an inventor has assigned or agreed in writing to assign the
invention, or who otherwise shows sufficient proprietary interest in the
matter justifying such action, may make application for patenton behalf
of and as agent for all the inventors. The oath or declaration in such
an application must be accompanied by a petition including proof of the
pertinent facts, a showing that such action is necessary to preserve the
rights of the parties or to prevent irreparable damage, the fee set
forth in    1.17(h), and the last known address of all of the inventors.
An inventor may subsequently join in the application on filing an oath
or declaration complying with    1.63.

   (c) The Office will send notice of the filing of the application to all
inventors who have not joined in the application at the address(es)
provided in the petition under this section, and publish notice of the
filing of the application in the Official Gazette. The Office may
dispense with this notice provision in a continuation or divisional
application, if notice regarding the filing of the prior application was
given to the nonsigning inventor(s).

   18. Section 1.48 is proposed to be revised to read as follows:

   1.48 Correction of inventorship in a patent application, other than a
reissue application, pursuant to 35 U.S.C. 116.

   (a) Nonprovisional application after oath/declaration filed. If the
inventive entity is set forth in error in an executed    1.63 oath or
declaration in a nonprovisional application, and such error arose
without any deceptive intention on the part of the person named as an
inventor in error or on the part of the person who through error was not
named as an inventor, the inventorship of the nonprovisional application
may be amended to name only the actual inventor or inventors. If the
nonprovisional application is involved in an interference, the amendment
must comply with the requirements of this section and must be
accompanied by a motion under    1.634. Amendment of the inventorship
requires:

   (1) A request to correct the inventorship that sets forth the desired
inventorship change;

   (2) A statement from each person being added as an inventor and from
each person being deleted as an inventor that the error in inventorship
occurred without deceptive intention on his or her part;