(3) An oath or declaration by the actual inventor or inventors as
required by 1.63 or as permitted by 1.42, 1.43 or 1.47;
(4) The processing fee set forth in 1.17(i); and
(5) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see 3.73(b) of this
chapter).
(b) Nonprovisional application-fewer inventors due to amendment or
cancellation of claims. If the correct inventors are named in a
nonprovisional application, and the prosecution of the nonprovisional
application results in the amendment or cancellation of claims so that
fewer than all of the currently named inventors are the actual inventors
of the invention being claimed in the nonprovisional application, an
amendment must be filed requesting deletion of the name or names of the
person or persons who are not inventors of the invention being claimed.
If the application is involved in an interference, the amendment must
comply with the requirements of this section and must be accompanied by
a motion under 1.634. Amendment of the inventorship requires:
(1) A request, signed by a party set forth in 1.33(b), to correct the
inventorship that identifies the named inventor or inventors being
deleted and acknowledges that the inventor's invention is no longer
being claimed in the nonprovisional application; and
(2) The processing fee set forth in 1.17(i).
(c) Nonprovisional application-inventors added for claims tounclaimed
subject matter. If a nonprovisional application discloses unclaimed
subject matter by an inventor or inventors not named in the application,
the application may be amended to add claims to the subject matter and
name the correct inventors for the application. If the application is
involved in an interference, the amendment must comply with the
requirements of this section and must be accompanied by a motion under
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 that the
addition is necessitated by amendment of the claims and that the
inventorship error occurred without deceptive intention on his or her
part;
(3) An oath or declaration by the actual inventors as required by
1.63 or as permitted by 1.42, 1.43 or 1.47;
(4) The processing fee set forth in 1.17(i); and
(5) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see 3.73(b) of this
chapter).
(d) Provisional application-adding omitted inventors. If the name or
names of an inventor or inventors were omitted in a provisional
application through error without any deceptive intention on the part of
the omitted inventor or inventors, the provisional application may be
amended to add the name or names of the omitted inventor or inventors.
Amendment of the inventorship requires:
(1) A request, signed by a party set forth in 1.33(b), to correct the
inventorship that identifies the inventor or inventors being added and
states that the inventorship error occurred without deceptive intention
on the part of the omitted inventor or inventors; and
(2) The processing fee set forth in 1.17(q).
(e) Provisional application-deleting the name or names of the inventor
or inventors. If a person or persons were named as an inventor or
inventors in a provisional application through error without any
deceptive intention on the part of such person or persons, an amendment
may be filed in the provisional application deleting the name or names
of the person or persons who were erroneously named. Amendment of the
inventorship requires:
(1) A request to correct the inventorship that sets forth the desired
inventorship change;
(2) A statement by the person or persons whose name or names are being
deleted that the inventorship error occurred without deceptive intention
on the part of such person or persons;
(3) The processing fee set forth in 1.17(q); and
(4) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see 3.73(b) of this
chapter).
(f)(1) Nonprovisional application-filing executed oath/declaration
corrects inventorship. If the correct inventor or inventors are not
named on filing a nonprovisional application under 1.53(b) without an
executed oath or declaration under 1.63 by any of the inventors, the
first submission of an executed oath or declaration under 1.63 by any
of the inventors during the pendency of the application will act to
correct the earlier identification of inventorship. See 1.497(d) for
submission of an executed oath or declaration to enter the national
stage under 35 U.S.C. 371 and 1.494 or 1.495 naming an inventive
entity different from the inventive entity set forth in the
international stage.
(2) Provisional application-filing cover sheet corrects inventorship. If
the correct inventor or inventors are not named on filing a provisional
application without a cover sheet under 1.51(c)(1), the later
submission of a cover sheet under 1.51(c)(1) during the pendency of
the application will act to correct the earlier identification of
inventorship.
(g) Additional information may be required. The Office may require such
other information as may be deemed appropriate under the particular
circumstances surrounding the correction of inventorship.
(h) Reissue applications not covered. The provisions of this section do
not apply to reissue applications. See 1.171 and 1.175 for
correction of inventorship in a patent via a reissue application.
(i) Correction of inventorship in patent or interference. See 1.324
for correction of inventorship in a patent, and 1.634 for correction
of inventorship in an interference.
19. Section 1.51 is proposed to be amended by revising paragraph(b) to
read as follows:
1.51 General requisites of an application.
* * * * *
(b) A complete application filed under 1.53(b) or 1.53(d)
comprises:
(1) A specification as prescribed by 35 U.S.C. 112, including a claim or
claims, see 1.71 to 1.77;
(2) An oath or declaration, see 1.63 and 1.68;
(3) Drawings, when necessary, see 1.81 to 1.85; and
(4) The prescribed filing fee, see 1.16.
* * * * *
20. Section 1.52 is proposed to be revised to read as follows:
1.52 Language, paper, writing, margins.
(a) Papers which are to become a part of the permanent Patent and
Trademark Office records in the file of a patent application. (1) All
papers, other than drawings, which are to become a part of the permanent
Patent and Trademark Office records in the file of a patent application
must be on sheets of paper that are:
(i) Flexible, strong, smooth, non-shiny, durable, and white;
(ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8
1/2 by 11 inches), with each sheet including a top margin of at least
2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1 inch), a
right side margin of at least 2.0 cm (3/4 inch), and a bottom margin of
at least 2.0 cm (3/4 inch);
(iii) Written on only one side in portrait orientation;
(iv) Plainly and legibly written either by a typewriter or machine
printer in permanent dark ink or its equivalent; and
(v) Presented in a form having sufficient clarity and contrast between
the paper and the writing thereon to permit the direct reproduction of
readily legible copies in any number by use of photographic,
electrostatic, photo-offset, and microfilming processes and electronic
capture by use of digital imaging and optical character recognition.
(2) All papers which are to become a part of the permanent records of
the Patent and Trademark Office should have no holes in the sheets as
submitted.
(3) The provisions of this paragraph and paragraph (b) of this section
do not apply to the pre-printed information on forms provided by the
Office.
(4) See 1.58 for chemical and mathematical formulae and tables, and
1.84 for drawings.
(5) If papers are submitted as part of the permanent record, other than
the drawings, that do not comply with paragraph (a)(1) of this section
the Office may at its option:
(i) Convert the papers submitted by applicant into papers that do comply
with paragraph (a)(1) of this section and charge the applicant the costs
incurred by the Office in doing so ( 1.21(j)); or
(ii) Require that the applicant provide substitute papers that comply
with paragraph (a)(1) of this section within a set time period.
(b) The application (specification, including the claims, drawings, and
oath or declaration) and any amendments or corrections to the
application. (1) The application and any amendments or corrections to
the application (including any translation submitted pursuant to
paragraph (d) of this section), except as provided for in 1.69 and
paragraph (d) of this section, must:
(i) Comply with the requirements of paragraph (a) of this section; and
(ii) Be in the English language or be accompanied by a translation of
any corrections or amendments into the English language together with a
statement that the translation is accurate.
(2) The specification (including the abstract and claims), and any
amendments to the specification, must have:
(i) Lines that are 1 1/2 or double spaced;
(ii) Text written in a block (nonscript) type font or lettering style
having capital letters which are at least 0.21 cm (0.08 inch) high; and
(iii) No more than a single column of text.
(3) The claim or claims must commence on a separate sheet ( 1.75(h)).
(4) The abstract must commence on a separate sheet ( 1.72(b)).
(5) The pages of the specification including claims and abstract must be
numbered consecutively, starting with 1, the numbers being centrally
located above or preferably, below, the text.
(6) Paragraphs in the specification, other than in the claims or
abstract, should be individually and consecutively numbered using Arabic
numerals, so as to unambiguously identify each paragraph. The number
should consist of at least four numerals contained in square brackets,
including leading zeros (e.g., [0001]). The numbers and enclosing
brackets should appear to the right of the left margin as the first item
in each paragraph, before the first word of the paragraph, and should be
highlighted in bold. A gap, equivalent to approximately four spaces,
should follow the number. Nontext elements (e.g., tables, mathematical
or chemical formulas, chemical structures, and sequence data) are
considered part of the numbered paragraph around or above the elements,
and should not be independently numbered. Even if a nontext element
extends to the left margin, it should not be numbered as a separate and
independent paragraph. A list is also treated as part of the paragraph
around or above the list, and should not be independently numbered.
Paragraph or section headers (titles), whether abutting the left margin
or centered on the page, are not considered paragraphs and should not be
numbered.
(7) If papers are submitted as part of the application that do not
comply with paragraphs (b)(1) through (b)(5) of this section, the Office
may at its option:
(i) Convert the papers submitted by applicant into papers that do comply
with paragraphs (b)(1) through (b)(5) of this section and charge the
applicant the costs incurred by the Office in doing so ( 1.21(j)); or
(ii) Require that the applicant provide substitute papers that comply
with paragraphs (b)(1) through (b)(5) of this section within a set time
period.
(c)(1) Any interlineation, erasure, cancellation or other alteration of
the application papers filed must be made before the signing of any
accompanying oath or declaration pursuant to 1.63 referring to those
application papers and should be dated and initialed or signed by the
applicant on the same sheet of paper. Application papers containing
alterations made after the signing of an oath or declaration referring
to those application papers must be supported by a supplemental oath or
declaration under 1.67. In either situation, a substitute
specification ( 1.125) is required if the application papers do not
comply with paragraphs (a) and (b) of this section.
(2) After the signing of the oath or declaration referring to the
application papers, amendments may only be made in the manner provided
by 1.121.
(3) Notwithstanding the provisions of this paragraph, if an oath or
declaration is a copy of the oath or declaration from a prior
application, the application for which such copy is submitted may
contain alterations that do not introduce matter that would have been
new matter in the prior application.
(d) A nonprovisional or provisional application may be filed in a
language other than English.
(1) Nonprovisional application. If a nonprovisional application is filed
in a language other than English, an English language translation of the
non-English language application, a statement that the translation is
accurate, and the processing fee set forth in 1.17(i) are required.
If these items are not filed with the application, applicant will be
notified and given a period of time within which they must be filed in
order to avoid abandonment.
(2) Provisional application: If a provisional application is filed in a
language other than English, an English language translation of the
non-English language provisional application will not be required in the
provisional application. If a nonprovisional application claims the
benefit of such provisional application, however, an English language
translation of the non-English language provisional application and a
statement that the translation is accurate must be supplied if the
nonprovisional application is involved in an interference ( 1.630), or
when specifically required by the examiner.
21. Section 1.53 is proposed to be amended by revising paragraphs
(c)(1), (c)(2), (d)(4), (e)(2), (f) and (g) and adding paragraph (d)(10)
to read as follows:
1.53 Application number, filing date, and completion of application.
* * * * *
(c) * * *
(1) A provisional application must also include the cover sheet required
by 1.51(c)(1), which may be an application data sheet ( 1.76), or a
cover letter identifying the application as a provisional application.
Otherwise, the application will be treated as an application filed under
paragraph (b) of this section.
(2) An application for patent filed under paragraph (b) of this section
may be converted to a provisional application and be accorded the
original filing date of the application filed under paragraph (b) of
this section. The grant of such a request for conversion will not
entitle applicant to a refund of the fees which were properly paid in
the application filed under paragraph (b) of this section. Such a
request for conversion must be accompanied by the processing fee set
forth in 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of this
section;
(ii) Payment of the issue fee on the application filed under paragraph
(b) of this section;
(iii) Expiration of twelve months after the filing date of the
application filed under paragraph (b) of this section; or
(iv) The filing of a request for a statutory invention registration
under 1.293 in the application filed under paragraph (b) of this
section.
* * * * *
(d) * * *
(4) An application filed under this paragraph may be filed by fewer than
all the inventors named in the prior application, provided that the
request for an application under this paragraph when filed is
accompanied by a statement requesting deletion of the name or names of
the person or persons who are not inventors of the invention being
claimed in the new application. No person may be named as an inventor in
an application filed under this paragraph who was not named as an
inventor in the prior application on the date the application under this
paragraph was filed, except by way of correction of inventorship under
1.48.
* * * * *
(10) See 1.103(b) for requesting a limited suspension of action in
an application filed under this paragraph.
(e) * * *
(2) Any request for review of a notification pursuant to paragraph
(e)(1) of this section, or a notification that the original application
papers lack a portion of the specification or drawing(s), must be by way
of a petition pursuant to this paragraph accompanied by the fee set
forth in 1.17(h). In the absence of a timely ( 1.181(f)) petition
pursuant to this paragraph, the filing date of an application in which
the applicant was notified of a filing error pursuant to paragraph
(e)(1) of this section will be the date the filing error is corrected.
* * * * *
(f) Completion of application subsequent to filing-Nonprovisional
(including continued prosecution and reissue) application. (1) If an
application which has been accorded a filing date pursuant to paragraph
(b) or (d) of this section does not include the basic filing fee, or if
an application which has been accorded a filing date pursuant to
paragraph (b) of this section does not include an oath or declaration by
the applicant pursuant to 1.63, 1.162 or 1.175, and applicant has
provided a correspondence address ( 1.33(a)), applicant will be
notified and given a period of time within which to pay the filing fee,
file an oath or declaration in an application under paragraph (b) of
this section, and pay the surcharge required by 1.16(e) to avoid
abandonment.
(2) If an application which has been accorded a filing date pursuant to
paragraph (b) of this section does not include the basic filing fee or
an oath or declaration by the applicant pursuant to 1.63, 1.162 or
1.175, and applicant has not provided a correspondence address (
1.33(a)), applicant has two months from the filing date of the
application within which to pay the basic filing fee, file an oath or
declaration, and pay the surcharge required by 1.16(e) to avoid
abandonment.
(3) This paragraph applies to continuation or divisional applications
under paragraphs (b) or (d) of this section and to continuation-in-part
applications under paragraph (b) of this section.
(4) See 1.63(d) concerning the submission of a copy of the oath or
declaration from the prior application for a continuation or divisional
application under paragraph (b) of this section.
(5) If applicant does not pay one of the basic filing fee or the
processing and retention fee set forth in 1.21(l) during the pendency
of the application, the Office may dispose of the application.
(g) Completion of application subsequent to filing-provisional
application. (1) If a provisional application which has been accorded a
filing date pursuant to paragraph (c) of this section does not include
the cover sheet required by 1.51(c)(1) or the basic filing fee (
1.16(k)), and applicant has provided a correspondence address (
1.33(a)), applicant will be notified and given a period of time within
which to pay the basic filing fee, file a cover sheet ( 1.51(c)(1)),
and pay the surcharge required by 1.16(l) to avoid abandonment.
(2) If a provisional application which has been accorded a filing date
pursuant to paragraph (c) of this section does not include the cover
sheet required by 1.51(c)(1) or the basic filing fee ( 1.16(k)),
and applicant has not provided a correspondence address ( 1.33(a)),
applicant has two months from the filing date of the application within
which to pay the basic filing fee, file a cover sheet ( 1.51(c)(1)),
and pay the surcharge required by 1.16(l) to avoid abandonment.
(3) If applicant does not pay the basic filing fee during the pendency
of the application, the Office may dispose of the application.
* * * * *
22. Section 1.55 is proposed to be amended by revising paragraph(a)
to read as follows:
1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the benefit
of the filing date of one or more prior foreign applications under the
conditions specified in 35 U.S.C. 119(a) through (d), 172, and 365(b).
(1) The claim for priority must identify the foreign application for
which priority is claimed, as well as any foreign application for the
same subject having a filing date before that of the application for
which priority is claimed, by specifying the application number, country
(or intergovernmental organization), day, month, and year of its filing.
(2)(i) In an application filed under 35 U.S.C. 111(a), the claim for
priority and the certified copy of the foreign application specified in
35 U.S.C. 119(b) must be filed before the patent is granted.
(ii) In an application that entered the national stage from an
international application after compliance with 35 U.S.C. 371, the claim
for priority must be made within the time limit set forth in the PCT and
the Regulations under the PCT. If the certified copy of the foreign
application has not been filed in accordance with the PCT and the
Regulations under the PCT, it must be filed before the patent is granted.
(iii) When the application becomes involved in an interference (
1.630), when necessary to overcome the date of a reference relied upon
by the examiner, or when deemed necessary by the examiner, the Office
may require that the claim for priority and the certified copy of the
foreign application be filed earlier than provided in paragraph
(a)(2)(i) or (a)(2)(ii) of this section.
(iv) If the claim for priority or the certified copy of the foreign
application is filed after the date the issue fee is paid, it must be
accompanied by the processing fee set forth in 1.17(i) but the patent
will not include the priority claim unless corrected by acertificate of
correction under 35 U.S.C. 255 and 1.323 of this part.
(3) An English-language translation of a non-English-language foreign
application is not required except when the application is involved in
an interference ( 1.630), when necessary to overcome the date of a
reference relied upon by the examiner, or when specifically required by
the examiner. If an English-language translation is required, it must be
filed together with a statement that the translation of the certified
copy is accurate.
* * * * *
23. Section 1.56 is proposed to be amended by adding a new paragraph
(e) to read as follows:
1.56 Duty to disclose information material to patentability.
* * * * *
(e) In any continuation-in-part application, the duty under this
section includes the duty to disclose to the Office all information
known to the person to be material to patentability, as defined in
paragraph (b) of this section, which became available between the filing
date of the prior application and the national or PCT international
filing date of the continuation-in-part application.
24. Section 1.59 is proposed to be amended by revising paragraph(b) to
read as follows:
1.59 Expungement of information or copy of papers in application file.
* * * * *
(b) An applicant may request that the Office expunge and return
information, other than what is excluded by paragraph (a)(2) of this
section, by filing a petition under this paragraph. Any petition to
expunge and return information from an application must include the fee
set forth in 1.17(h) and establish to the satisfaction of the
Commissioner that the return of the information is appropriate.
* * * * *
25. Section 1.63 is proposed to be amended by revising paragraphs
(a), (b), (c) and (e) to read as follows:
1.63 Oath or declaration.
(a) An oath or declaration filed under 1.51(b)(2) as a part of a
nonprovisional application must:
(1) Be executed (i.e., signed) in accordance with either 1.66 or
1.68;
(2) Identify each inventor and country of citizenship of each inventor;
and
(3) State that the person making the oath or declaration believes the
named inventor or inventors to be the original and first inventor or
inventors of the subject matter which is claimed and for which a patent
is sought.
(b) In addition to meeting the requirements of paragraph (a), the oath
or declaration must also:
(1) Identify the application to which it is directed;
(2) State that the person making the oath or declaration has reviewed
and understands the contents of the application, including the claims,
as amended by any amendment specifically referred to in the oath or
declaration; and
(3) State that the person making the oath or declaration acknowledges
the duty to disclose to the Office all information known to the person
to be material to patentability as defined in 1.56.
(c) Unless such information is supplied on an application data sheet in
accordance with 1.76, the oath or declaration must also identify:
(1) Each inventor, by full name, including the family name, and at least
one given name without abbreviation together with any other given name
or initial;
(2) The mailing address and residence (if different from the mailing
address) of each inventor; and
(3) Any foreign application for patent (or inventor's certificate) for
which a claim for priority is made pursuant to 1.55, and any foreign
application having a filing date before that of the application on which
priority is claimed, by specifying the application number, country, day,
month, and year of its filing.
* * * * *
(e) A newly executed oath or declaration must be filed in any
continuation-in-part application, which application may name all, more,
or fewer than all of the inventors named in the prior application.
26. Section 1.64 is proposed to be revised to read as follows:
1.64 Person making oath or declaration.
(a) The oath or declaration ( 1.63), including any supplemental oath
or declaration ( 1.67), must be made by all of the actual inventors
except as provided for in 1.42, 1.43, 1.47 or 1.67.
(b) If the person making the oath or declaration or any supplemental
oath or declaration is not the inventor ( 1.42, 1.43, 1.47 or 1.67),
the oath or declaration shall state the relationship of the person to
the inventor, and, upon information and belief, the facts which the
inventor is required to state. If the person signing the oath or
declaration is the legal representative of a deceased inventor, the oath
or declaration shall also state that the person is a legal
representative and the citizenship, residence and mailing address of the
legal representative.
27. Section 1.67 is proposed to be amended by revising paragraph(a) and
removing paragraph (c) to read as follows:
1.67 Supplemental oath or declaration.
(a) The Office may require a supplemental oath or declaration meeting
the requirements of 1.63 or 1.162 to correct any deficiencies or
inaccuracies present in the earlier filed oath or declaration. If the
earlier filed oath or declaration complied with 1.63(a), the Office
may permit the supplemental oath or declaration to be made by fewer than
all of the inventors or by an applicant other than the inventor.
* * * * *
28. Section 1.72 is proposed to be revised to read as follows:
1.72 Title and abstract.
(a) Unless the title is supplied in an application data sheet (
1.76), the title of the invention, which should be as short and specific
as possible, should appear as a heading on the first page of the
specification.
(b) A brief abstract of the technical disclosure in the specification
must commence on a separate sheet, preferably following the claims,
under the heading ``Abstract'' or ``Abstract of the Disclosure.'' The
abstract in an application filed under 35 U.S.C. 111 may not exceed 150
words in length. The purpose of the abstract is to enable the Patent and
Trademark Office and the public generally to determine quickly from a
cursory inspection the nature and gist of the technical disclosure. The
abstract will not be used for interpreting the scope of the claims.
29. A new 1.76 is proposed to be added to read as follows:
1.76 Application data sheet.
(a) An application data sheet is a sheet or sheets containing
bibliographic data concerning a patent application arranged in a
specified format. If an application data sheet is provided, the
application data sheet is part of the application.
(b) Bibliographic data as used in paragraph (a) of this section
includes:
(1) Applicant information. This information includes the name,
residence, mailing address, and citizenship of each applicant (
1.41(b)). The name of each applicant must include the family name, and
at least one given name without abbreviation together with any other
given name or initial. If the applicant is not an inventor, this
information also includes the applicant's authority ( 1.42, 1.43 and
1.47) to apply for the patent on behalf of the inventor. The citizenship
of each inventor must be provided in the oath or declaration under
1.63 even if it is provided in the application data sheet (35 U.S.C.
115).
(2) Correspondence information. This information includes the
correspondence address, which may be indicated by reference to a
customer number, to which correspondence is to be directed (see
1.33(a)).
(3) Application information. This information includes the title of the
invention, the total number of drawing sheets, whether the drawings are
formal, any docket number assigned to the application, and the type
(e.g., utility, plant, design, reissue utility, provisional) of
application, and whether the application discloses any significant part
of the subject matter of an application under a secrecy order pursuant
to 5.2 of this chapter (see 5.2(c)).
(4) Representative information. This information includes the
registration number of each practitioner, or the customer number, having
a power of attorney or authorization of agent in the application.
Providing this information in the application data sheet does not
constitute a power of attorney or authorization of agent in the
application (see 1.34(b)).
(5) Domestic priority information. This information includes the
application number, the filing date, the status (including patent number
if available), and relationship of each application for which a benefit
is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). Providing this
information in the application data sheet constitutes the specific
reference required by 35 U.S.C. 119(e) or 120 and 1.78(a)(2) or
1.78(a)(4) of this part.
(6) Foreign priority information. This information includes the
application number, country, and filing date of each foreign application
for which priority is claimed, as well as any foreign application having
a filing date before that of the application for which priority is
claimed. Providing this information in the application data sheet
constitutes the claim for priority as required by 35 U.S.C. 119(b) and
1.55(a) of this part.
(c) If an application contains an application data sheet, any
inconsistency between the information provided in the application data
sheet and the oath or declaration under 1.63 will be resolved in
favor of the information provided in the application data sheet. A
supplemental application data sheet may be submitted to correct or
update information provided in a previous application data sheet.
30. Section 1.77 is proposed to be revised to read as follows:
1.77 Arrangement of application elements.
(a) The elements of the application, if applicable, should appear in
the following order:
(1) Utility application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see 1.76).
(4) Specification.
(5) Drawings.
(6) Executed oath or declaration.
(b) The specification should include the following sections in order:
(1) Title of the invention, which may be accompanied by an introductory
portion stating the name, citizenship and residence of the applicant.
(2) Cross-reference to related applications (unless included in the
application data sheet).
(3) Statement regarding federally sponsored research or development.
(4) Reference to a ``computer program listing appendix'' (see 1.96
(c)).
(5) Background of the invention.
(6) Brief summary of the invention.
(7) Brief description of the several views of the drawing.
(8) Detailed description of the invention.
(9) A claim or claims.
(10) Abstract of the disclosure.
(11) Sequence listing (see 1.821 through 1.825).
(c) The text of the specification sections defined in paragraphs (b)(1)
through (b)(3) and (b)(5) through (b)(11) of this section, if
applicable, should be preceded by a section heading in uppercase and
without underlining or bold type.
31. Section 1.78 is proposed to be amended by revising paragraphs
(a)(2), (a)(4) and (c) to read as follows:
1.78 Claiming benefit of earlier filing date and cross-references to
other applications.
(a) * * *
(2) Except for a continued prosecution application filed under
1.53(d), any nonprovisional application claiming the benefit of one or
more prior filed copending nonprovisional applications or international
applications designating the United States of America must contain a
reference to each such prior application, identifying it by application
number (consisting of the series code and serial number) or
international application number and international filing date and
indicating the relationship of the applications. Unless the reference
required by this paragraph is included in an application data sheet (
1.76), the specification must contain or be amended to contain such
reference in the first sentence following the title. The request for a
continued prosecution application under 1.53(d) is the specific
reference required by 35 U.S.C. 120 to the prior application. The
identification of an application by application number under this
section is the specific reference required by 35 U.S.C. 120 to every
application assigned that application number. Cross-references to other
related applications may be made when appropriate (see 1.14).
* * * * *
(4) Any nonprovisional application claiming the benefit of one or
more prior filed copending provisional applications must contain a
reference to each such prior provisional application, identifying it as
a provisional application, and including the provisional application
number (consisting of series code and serial number). Unless the
reference required by this paragraph is included in an application data
sheet ( 1.76), the specification must contain or be amended to contain
such reference in the first sentence following the title.
* * * * *
(c) If an application or a patent under reexamination and at least
one other application naming different inventors are owned by the same
party and contain conflicting claims, and there is no statement of
record indicating that the claimed inventions were commonly owned or
subject to an obligation of assignment to the same person at the time
the later invention was made, the Office may require the assignee to
state whether the claimed inventions were commonly owned or subject to
an obligation of assignment to the same person at the time the later
invention was made, and, if not, indicate which named inventor is the
prior inventor.
32. Section 1.84 is proposed to be revised to read as follows:
1.84 Standards for drawings.
(a) Drawings. There are two acceptable categories for presenting
drawings in utility patent applications:
(1) Black ink. Black and white drawings are normally required. India
ink, or its equivalent that secures solid black lines, must be used for
drawings, or
(2) Color. On rare occasions, color drawings may be necessary as the
only practical medium by which to disclose the subject matter sought to
be patented in a utility patent application or the subject matter of a
statutory invention registration. The Patent and Trademark Office will
accept color drawings in utility patent applications and statutory
invention registrations only if color drawings are necessary for the
understanding of the claimed invention and upon payment of the fee set
forth in 1.17(k) and submission of three sets of the color drawings.
Color drawings are not permitted in international applications (see PCT
Rule 11.13). If the subject matter of the application admits of
illustration by a black and white drawing, the examiner may require a
black and white drawing in place of the color drawing. The color
drawings must be of sufficient quality so that all details in the
drawings are reproducible in the printed patent. If color drawings are
submitted, the specification must contain or be amended to contain the
following language as the first paragraph of the brief description of
the drawings:
The file of this patent contains at least one drawing executed in color.
Copies of this patent with color drawing(s) will be provided by the
Patent and Trademark Office upon request and payment of the necessary
fee.
(b)(1) Photographs. Photographs are not ordinarily permitted in utility
patent applications. The Office will accept photographs in utility
patent applications, however, if photographs are the only practicable
medium for illustrating the claimed invention. If the subject matter of
the application admits of illustration by a drawing, the examiner may
require a drawing in place of the photograph. The photographs must be of
sufficient quality so that all details in the photographs are
reproducible in the printed patent.
(2) Color photographs. Color photographs will be accepted in utility
patent applications if the conditions for accepting color drawings and
photographs have been satisfied. See paragraphs (a)(2) and (b)(1) of
this section.
(c) Identification of drawings. Identifying indicia, if provided, should
include the title of the invention, inventor's name, and application
number, or docket number (if any) if an application number has not been
assigned to the application. If this information is provided, it must be
placed on the front of each sheet and centered within the top margin.
(d) Type of paper. Drawings submitted to the Office must be made on
paper which is flexible, strong, white, smooth, non-shiny, and durable.
All sheets must be reasonably free from cracks, creases, and folds. Only
one side of the sheet may be used for the drawing. Each sheet must be
reasonably free from erasures and must be free from alterations,
overwritings, and interlineations. Photographs must be developed on
paper or be permanently mounted on Bristol board meeting the sheet-size
requirements of paragraph (e) of this section and the margin
requirements of paragraph (f) of this section. See paragraph (b) of this
section for other requirements for photographs.
(e) Size of paper. All drawing sheets in an application must be the same
size. One of the shorter sides of the sheet is regarded as its top. The
size of the sheets on which drawings are made must be:
(1) 21.0 cm by 29.7 cm (DIN size A4); or
(2) 21.6 cm by 27.9 cm (8 1/2 by 11 inches).
(f) Margins. The sheets must not contain frames around the sight (i.e.,
the usable surface), but should have scan target points (i.e.,
cross-hairs) printed on two catercorner margin corners. Each sheet must
include a top margin of at least 2.5 cm (1 inch), a left side margin of
at least 2.5 cm (1 inch), a right side margin of at least 1.5 cm (5/8
inch), and a bottom margin of at least 1.0 cm (3/8 inch), and must leave
a sight no greater than 17.0 cm by 26.2 cm on 21.0 cm by 29.7 cm (DIN
size A4) drawing sheets, and a sight no greater than 17.0 cm by 24.4 cm
(6 3/4 by 9 5/8 inches) on 21.6 cm by 27.9 cm (8 1/2 by 11 inch) drawing
sheets.
(g) Scale. The scale to which a drawing is made must be large enough to
show the mechanism without crowding when the drawing is reduced in size
to two-thirds in reproduction. Indications such as ``actual size'' or
``scale 1/2'' on the drawings are not permitted since these lose their
meaning with reproduction in a different format.
(h) Character of lines, numbers, and letters. All drawings must be made
by a process which will give them satisfactory reproduction
characteristics. Every line, number, and letter must be durable, clean,
black (except for color drawings), sufficiently dense and dark, and
uniformly thick and well-defined. The weight of all lines and letters
must be heavy enough to permit adequate reproduction. This requirement
applies to all lines however fine, to shading, and to lines representing
cut surfaces in sectional views. Lines and strokes of different
thicknesses may be used in the same drawing where different thicknesses
have a different meaning.
(i) Legends. Suitable descriptive legends may be used subject to
approval by the Office, or may be required by the examiner where
necessary for understanding of the drawing. They should contain as few
words as possible.
(j) Numbers, letters, and reference characters. (1) Reference characters
(numerals are preferred), sheet numbers, and view numbers must be plain
and legible, and must not be used in association with brackets or
inverted commas, or enclosed within outlines, e.g., encircled. They must
be oriented in the same direction as the view so as to avoid having to
rotate the sheet.
(2) The English alphabet must be used for letters, except where another
alphabet is customarily used, such as the Greek alphabet to indicate
angles, wavelengths, and mathematical formulas.
(3) Numbers, letters, and reference characters must measure at least
0.32 cm (1/8 inch) in height.
(4) The same part of an invention appearing in more than one view of the
drawing must always be designated by the same reference character, and
the same reference character must never be used to designate different
parts.
(5) Only reference characters mentioned in the description may appear in
the drawings. Reference characters mentioned in the description must
appear in the drawings.
(k) Lead lines. Lead lines are those lines between the reference
characters and the details to which they refer. Such lines may be
straight or curved and should be as short as possible. They must
originate in the immediate proximity of the reference character and
extend to the feature indicated. Lead lines must not cross each other.
Lead lines are required for each reference character except for those
which indicate the surface or cross section on which they are placed.
Such a reference character must be underlined to make it clear that a
lead line has not been left out by mistake. Lead lines must be executed
in the same way as lines in the drawing. See paragraph (h) of this
section.
(l) Numbering of sheets of drawings. The sheets of drawings should be
numbered in consecutive Arabic numerals, starting with 1, within the
sight as defined in paragraph (g) of this section. These numbers, if
present, must be placed in the middle of the top of the sheet, but not
in the margin. The numbers can be placed on the right-hand side if the
drawing extends too close to the middle of the top edge of the usable
surface. The drawing sheet numbering must be clear and larger than the
numbers used as reference characters to avoid confusion. The number of
each sheet may be shown by two Arabic numerals placed on either side of
an oblique line, with the first being the sheet number and the second
being the total number of sheets of drawings, with no other marking.
(m) Numbering of views. (1) The different views must be numbered in
consecutive Arabic numerals, starting with 1, independent of the
numbering of the sheets and, if possible, in the order in which they
appear on the drawing sheet(s). Partial views intended to form one
complete view, on one or several sheets, must be identified by the same
number followed by a capital letter. View numbers must be preceded by
the abbreviation ``FIG.'' Where only a single view is used in an
application to illustrate the claimed invention, it must not be numbered
and the abbreviation ``FIG.'' must not appear.
(2) Numbers and letters identifying the views must be simple and clear
and must not be used in association with brackets, circles, or inverted
commas. The view numbers must be larger than the numbers used for
reference characters.
(n) Security markings. Authorized security markings may be placed on the
drawings provided they are outside the sight, preferably centered in the
top margin.
(o) Corrections. Any corrections on drawings submitted to the Office
must be durable and permanent.
(p) See 1.152 for design drawings, 1.165 for plant drawings, and
1.173 for reissue drawings.
33. Section 1.85 is proposed to be revised to read as follows:
1.85 Corrections to drawings.
(a) If a drawing meets the requirements of 1.84(d), (e) and (f)
and is suitable for reproduction, but is not otherwise in compliance
with 1.84, the drawing may be admitted for examination.
(b) The Office will not release drawings for purposes of correction. If
corrections are necessary, new corrected drawings must be submitted
within the time set by the Office.
(c) If a corrected drawing is required or if a drawing does not comply
with 1.84 at the time an application is allowed, the Office may
notify the applicant and set a three month period of time from the mail
date of the notice of allowability within which the applicant must file
a corrected or formal drawing in compliance with 1.84 to avoid
abandonment. This time period is not extendable under 1.136(a) or (b).
34. Section 1.91 is proposed to be amended by revising
paragraph(a)(3)(i) to read as follows:
1.91 Models or exhibits not generally admitted as part of application
or patent.
(a) * * *
(3) * * *
(i) The fee set forth in 1.17(h); and
* * * * *
35. Section 1.96 is proposed to be amended by revising paragraphs(b)
and (c) to read as follows:
1.96 Submission of computer program listings.
* * * * *
(b) Material which will be printed in the patent. If the computer
program listing is contained on one sheet, it may be submitted either as
a drawing or as part of the specification.
(1) Drawings. If the listing is submitted as a drawing, it must be
submitted in the manner and complying with the requirements for drawings
as provided in 1.84. At least one figure numeral is required on the
sheet of drawing.
(2) Specification. (i) If the listing is submitted as part of the
specification, it must be submitted in accordance with the provisions of
1.52, at the end of the description but before the claims.
(ii) Any listing submitted as part of the specification must be a direct
printout (i.e., not a copy) from the computer's printer with dark solid
black letters not less than 0.21 cm high, on white, unshaded and unlined
paper, and the sheet should be submitted in a protective cover. Any
amendments must be made by way of submission of a substitute sheet.
(c) As an appendix which will not be printed. Any computer program
listing may, and any computer program listing that would be contained on
more than one sheet must, be submitted on a Compact Disk-Read Only
Memory (CD-ROM) or Compact Disk-Recordable (CD-R), which must be
referred to in the specification (see 1.77(b)(4)). A CD-ROM or CD-R
containing such a computer program listing is to be referred to as a
``computer program listing appendix.'' The ``computer program listing
appendix'' will not be part of the printed patent. Reference in the
application to the ``computer program listing appendix'' must be made at
the location indicated in 1.77(b)(4). Any amendment to the ``computer
program listing appendix'' must be by way of a new CD-ROM or CD-R
containing a substitute computer program listing.
(1) Availability of appendix. Such ``computer program listing
appendix'' will be available to the public for inspection, and copies
thereof will be available for purchase with the file wrapper and
contents, after a patent based on such application is granted or the
application is otherwise made publicly available.
(2) Submission requirements-(i) A ``computer program listing appendix''
must be submitted on a CD-ROM or CD-R in accordance with the standards
set forth in 36 CFR 1228.188(c) and (d).
(ii) The computer program listing must be written in American Standard
Code for Information Interchange (ASCII) in the form of textual document
files on a disk that complies with 1.824(b). No other format shall be
allowed. The CD-ROM or CD-R must be accompanied by documentation on
paper in accordance with 1.52(a) that contains the machine format
(e.g., IBM-PC, Macintosh)), the operating system (e.g., MS-DOS,
Macintosh, Unix) and any other special information that is necessary to
identify, maintain, and interpret the ``computer program listing
appendix.''
(iii) Multiple computer program listings for a single application may be
placed on a single CD-ROM or CD-R. Multiple CD-ROMs or CD-Rs may be
submitted for a single application if necessary. A separate CD-ROM or
CD-R is required for each application containing a computer program
listing that must be submitted on a ``computer program listing
appendix.''
(iv) A CD-ROM or CD-R ``computer program listing appendix'' must be
labeled with the following information:
(A) The name of each inventor (if known);
(B) Title of the invention;
(C) The docket number used by the person filing the application to
identify the application (if applicable).
36. Section 1.97 is proposed to be amended by revising paragraphs(a)
through (e) to read as follows:
1.97 Filing of information disclosure statement.
(a) In order for an applicant for a patent or for a reissue of a
patent to have an information disclosure statement in compliance with
1.98 considered by the Office during the pendency of the application, it
must satisfy one of paragraphs (b), (c), or (d) of this section.
(b) An information disclosure statement shall be considered by the
Office if filed by the applicant within any one of the following time
periods:
(1) Within three months of the filing date of a national application
other than a continued prosecution application under 1.53(d);
(2) Within three months of the date of entry of the national stage as
set forth in 1.491 in an international application; or
(3) Before the mailing date of a first Office action on the merits.
(c) An information disclosure statement shall be considered by the
Office if filed after the period specified in paragraph (b) of this
section, provided that the information disclosure statement is filed
before the mailing date of any of a final action under 1.113, a
notice of allowance under 1.311, or an action that otherwise closes
prosecution in the application, and it is accompanied by one of:
(1) A statement as specified in paragraph (e) of this section; or
(2) The fee set forth in 1.17(p).
(d) An information disclosure statement shall be considered by the
Office if filed by the applicant after the period specified in paragraph
(c) of this section, provided that the information disclosure statement
is filed on or before payment of the issue fee and is accompanied by:
(1) A statement as specified in paragraph (e) of this section; and
(2) The fee set forth in 1.17(p).
(e) A statement under this section must state either:
(1) That each item of information contained in the information
disclosure statement was first cited in a communication from a foreign
patent office in a counterpart foreign application not more than three
months prior to the filing of the information disclosure statement; or
(2) That no item of information contained in the information disclosure
statement was cited in a communication from a foreign patent office in a
counterpart foreign application, and, to the knowledge of the person
signing the certification after making reasonable inquiry, no item of
information contained in the information disclosure statement was known
to any individual designated in 1.56(c) more than three months prior
to the filing of the information disclosure statement.
* * * * *
37. Section 1.98 is proposed to be revised to read as follows:
1.98 Content of information disclosure statement.
(a) Any information disclosure statement filed under 1.97 shall
include:
(1) A list of all patents, publications or other information submitted
for consideration by the Office;
(2) A legible copy of:
(i) Each U.S. and foreign patent;
(ii) Each publication or that portion which caused it to be listed;
(iii) For each cited pending U.S. application, the application
specification including the claims, and any drawing of the application,
or that portion of the application which caused it to be listed
including any claims directed to that portion; and
(iv) All other information or that portion which caused it to be listed;
and
(3) A concise explanation of the relevance, as it is presently
understood by the individual designated in 1.56(c) most knowledgeable
about the content of the information, of each patent, publication, or
other information listed that is not in the English language. The
concise explanation may be either separate from the specification or
incorporated therein. If a written English-language translation of a
non-English-language document, or portion thereof, is within the
possession, custody, or control of, or is readily available to any
individual designated in 1.56(c), a copy of the translation shall
accompany the information disclosure statement.
(b) Each U.S. patent listed in an information disclosure statement shall
be identified by patentee, patent number and issue date. Each listed
U.S. application shall be identified by the inventor, application number
and filing date. Each listed foreign patent or published foreign patent
application shall be identified by the country or patent office which
issued the patent or published the application, an appropriate document
number, and the publication date indicated on the patent or published
application. Each listed publication shall be identified by author (if
any), title, relevant pages of the publication, date, and place of
publication.
(c) When the disclosures of two or more patents or publications listed
in an information disclosure statement are substantively cumulative, a
copy of one of the patents or publications may be submitted without
copies of the other patents or publications provided that a statement is
made that these other patents or publications are cumulative.
(d) A copy of any patent, publication, application, or otherinformation
listed in an information disclosure statement is not required to be
provided if it was previously cited by or submitted to the Office in a
prior application, provided that:
(1) The prior application is properly identified in the statement and
relied on for an earlier filing date under 35 U.S.C. 120; and
(2) Where the listed information was not cited by the Office, the
information submission made in the prior application complied with
paragraphs (a) through (c) of this section, and except for an
application filed under 1.53(d) the submission made in the prior
application complied with 1.97.
38. Section 1.102 is proposed to be amended by revising paragraph(d) to
read as follows:
1.102 Advancement of examination.
* * * * *
(d) A petition to make an application special on grounds other than
those referred to in paragraph (c) of this section must be accompanied
by the fee set forth in 1.17(h).
39. Section 1.103 is proposed to be revised to read as follows:
1.103 Suspension of action by the Office.
(a) Suspension for cause. On request of the applicant, the Office may
grant a suspension of action under this paragraph for good and
sufficient cause. The Office will not suspend action if a reply by
applicant to an Office action is outstanding. Any petition for
suspension of action under this paragraph must specify a period of
suspension not exceeding six months. Any petition for suspension of
action under this paragraph must also include:
(1) A showing of good and sufficient cause for suspension of action; and
(2) The fee set forth in 1.17(h), unless such cause is the fault of
the Office.
(b) Limited suspension of action in a continued prosecution application
(CPA) under 1.53(d). On request of the applicant, the Office may
grant a suspension of action under this paragraph in a continued
prosecution application under 1.53(d) for a period not exceeding
three months. Any request for suspension of action under this paragraph
must be filed with the request for an application under 1.53(d),
specify the period of suspension, and include the processing fee set
forth in 1.17(i).
(c) Notice of suspension on initiative of the Office. The Office will
notify applicant if the Office suspends action by the Office on an
application on its own initiative.
(d) Suspension of action for public safety or defense. The Office may
suspend action by the Office by order of the Commissioner if the
following conditions are met:
(1) The application is owned by the United States;
(2) Publication of the invention may be detrimental to the public safety
or defense; and
(3) The appropriate department or agency requests such suspension.
(e) Statutory invention registration. The Office will suspend action for
the entire pendency of an application if the Office has accepted a
request to publish a statutory invention registration in the
application, except for purposes relating to patent
interferenceproceedings under subpart E of this part.
40. A new 1.105 is proposed to be added to read as follows:
1.105 Requirements for information.
(a)(1) In the course of examining or treating a matter in a pending
or abandoned application filed under 35 U.S.C. 111 or 371 (including a
reissue application), in a patent, or in a reexamination proceeding, the
examiner or other Office employee may require the submission of such
information as may be reasonably necessary to properly examine or treat
the matter.
(2) Any reply that states that the information required to be submitted
is unknown and/or is not available will be accepted as a complete reply.
(b) The requirement for information of paragraph (a)(1) of this section
may be included in an Office action, or sent separately.
(c) A reply, or a failure to reply, to a requirement for information
under this rule will be governed by 1.135 and 1.136.
41. Section 1.111 is proposed to be amended by revising the heading and
paragraphs (a) and (c) to read as follows:
1.111 Reply by applicant or patent owner to a non-final Office action.
(a) If the Office action after the first examination ( 1.104) is
adverse in any respect, the applicant or patent owner, if he or she
persists in his or her application for a patent or reexamination
proceeding, must reply thereto and request reconsideration or further
examination, with or without amendment. See 1.135 and 1.136 for
time for reply to avoid abandonment. A second or subsequent supplemental
reply will be entered unless disapproved by the Commissioner.
* * * * *
(c) In amending in reply to a rejection of claims in an application
or patent under reexamination, the applicant or patent owner must
clearly point out the patentable novelty which he or she thinks the
claims present in view of the state of the art disclosed by the
references cited or the objections made. The applicant or patent owner
must also show how the amendments avoid such references or objections.
42. Section 1.112 is proposed to be revised to read as follows:
1.112 Reconsideration before final action.
After reply by applicant or patent owner ( 1.111) to a non- final
action, the application or patent under reexamination will be
reconsidered and again examined. The applicant or patent owner will be
notified if claims are rejected, or objections or requirements made, in
the same manner as after the first examination ( 1.104). Applicant or
patent owner may reply to such Office action in the same manner provided
in 1.111, with or without amendment, unless such Office action
indicates that it is made final ( 1.113) or an appeal ( 1.191) has
been taken.
43. A new 1.115 is proposed to be added to read as follows:
1.115 Preliminary amendments.
(a) A preliminary amendment is an amendment that is received in the
Office ( 1.6) on or before the mail date of the first Office action
under 1.104.
(b) A preliminary amendment will be entered unless disapproved by the
Commissioner. A preliminary amendment will not be disapproved if it is
filed no later than:
(1) Three months from the filing date of an application under
1.53(b);
(2) The filing date of a continued prosecution application under
1.53(d); or
(3) Three months from the date the national stage is entered as set
forth in 1.491 in an international application.
(c) The time periods specified in paragraph (b) of this section are not
extendable.
44. Section 1.121 is proposed to be amended by revising paragraphs(a)
and (b) to read as follows:
1.121 Manner of making amendments.
(a) Amendments in applications, other than reissue applications.
Amendments in applications, excluding reissue applications, are made by
filing a paper, in compliance with 1.52, directing that specified
amendments be made.
(1) Specification other than the claims-(i) Amendment by instruction to
delete, replace or add a paragraph: If the paragraphs of the
specification are numbered as provided in 1.52(b)(6), amendments to
the specification, other than the claims, may be made by submitting an
instruction, referencing the paragraph number, to delete one or more
paragraphs of the specification, to replace a deleted paragraph with one
or more replacement paragraphs, or to add one or more paragraphs, along
with the replacement or added paragraph(s). The replacement or added
paragraph(s) must not include any markings to indicate the changes that
have been made. The amendment must be accompanied by a copy of any
replacement paragraph(s), on one or more pages separate from the
amendment, marked-up to show all the changes made by brackets (for
deleted matter) or underlining (for added matter), or by any equivalent
marking system. If a deleted paragraph is replaced by a single
paragraph, the replacement paragraph must retain the same number as the
deleted paragraph. If a deleted paragraph is replaced by more than one
paragraph, the numbering of the replacement paragraphs must begin with
the number of the deleted paragraph with following paragraphs beginning
with the number of the deleted paragraph followed by a single decimal
and sequential integers (e.g., paragraph 0071 is replaced by 0071,
0071.1, and 0071.2). Any paragraph(s) added between existing paragraphs
must have the same number as the paragraph immediately above the added
one, followed by a period and a new sequential number series (e.g.,
0071.1, 0071.2). When numbered paragraphs are added or deleted by
amendment, the numbering of any unaffected paragraphs must remain
unchanged. Subsequent amendments which may involve further replacement
paragraphs are added in the same manner using existing paragraph numbers
along with increasing numbers following a decimal. For clarity, a total
renumbering of all previously added paragraphs or the submission of a
substitute specification with totally renumbered paragraphs may be
required.
(ii) Amendment by replacement section. If the sections of the
specification contain section headings as provided in 1.77(b),
1.154(b), or 1.163(c), amendments to the specification, other than
the claims, may be made by referring to the section heading along with
an instruction to delete that section of the specification and to
replace such deleted section with a replacement section. The replacement
section must be in clean form and must not include any markings to
indicate the changes that have been made. The amendment must be
accompanied by a copy of the replacement section, on one or more pages
separate from the amendment, marked-up to show all changes made by
brackets (for deleted matter) or underlining (for added matter), or by
any equivalent marking system.
(iii) Amendment by substitute specification. The specification, other
than the claims, may also be amended by submission of a substitute
specification in compliance with 1.125. If the paragraphs of the
specification are not numbered as provided in 1.52(b)(6), and the
sections of the specification do not contain section headings as
provided in 1.77(b), 1.154(b), or 1.163(c), the specification,
other than the claims, may be amended only by submission of a substitute
specification in compliance with 1.125. The paragraphs of the
substitute specification, other than the claims, should be individually
numbered in Arabic numerals so that any further amendment to the
specification may be made by replacement paragraph(s) in accordance with
paragraph (a)(1)(i) of this section. The amendment must be accompanied
by a copy of the substitute specification marked-up to show all changes
made by brackets (for deleted matter), or underlining (for added
matter), or by any equivalent marking system.
(iv) Matter deleted by amendment pursuant to paragraph (a)(1) of this
section can be reinstated only by a subsequent amendment presenting the
previously deleted matter.
(2) Claims. Amendments to a claim must be made by rewriting such claim
with all changes (e.g., additions, deletions, modifications) included
therein, or by directions to cancel or delete such claim. The rewriting
of a claim (with the same or a new number) will be construed as
directing the deletion of the previous version of that claim. A
rewritten or newly added claim must be in clean form without markings as
to the changes from the previous version of the claim or a canceled
claim. If a claim is amended by rewriting such claim with the same
number, the amendment must be accompanied by a copy of the rewritten
claim, on one or more pages separate from the amendment, marked-up to
show all the changes made by brackets (for deleted matter) or
underlining (for added matter) or by any equivalent marking system,
relative to the previous version of that claim. A claim canceled by
amendment (deleted in its entirety) can be reinstated only by a
subsequent amendment presenting the claim as a new claim with a new
claim number.
(3) Drawings. Application drawings are amended in the following manner:
Any change to the patent drawings must be submitted as a sketch on a
separate paper showing the proposed changes in red for approval by the
examiner. Upon approval by the examiner, new drawings in compliance with
1.84 including the changes must be filed.
(4) Disclosure consistency. The disclosure must be amended, when
required by the Office, to correct inaccuracies of description and
definition, and to secure substantial correspondence between the claims,
the remainder of the specification, and the drawings.
(5) No new matter. No amendment may introduce new matter into the
disclosure of an application.
(b) Amendments in reissue applications. Any amendment to the description
and claims of a reissue application must be made in accordance with
1.173.
* * * * *
45. Section 1.125 is proposed to be amended by revising
paragraphs(b)(2) and (c) to read as follows:
1.125 Substitute specification.
* * * * *
(b) * * *
(2) A marked-up copy of the substitute specification showing all the
changes to (including the matter being added to and the matter being
deleted from) the specification of record. Numbering the paragraphs of
the specification of record is not considered a change that must be
shown pursuant to this paragraph.
(c) A substitute specification submitted under this section must be
submitted in clean form without markings as to amended material. The
paragraphs of any substitute specification, other than the claims,
should be individually numbered in Arabic numerals so that any amendment
to the specification may be made by replacement paragraph in accordance
with 1.121(a)(1)(i).
* * * * *
46. Section 1.131 is proposed to be amended by revising its heading
and paragraph (a) to read as follows:
1.131 Affidavit or declaration of prior invention.
(a) When any claim of an application or a patent under reexamination
is rejected, the inventor of the subject matter of the rejected claim,
the owner of the patent under reexamination, or the party qualified
under 1.42, 1.43, or 1.47, may submit an appropriate oath or
declaration to establish invention of the subject matter of the rejected
claim prior to the effective date of the reference or activity on which
the rejection is based. The effective date of a U.S. patent is the date
that such U.S. patent is effective as a reference under 35 U.S.C.
102(e). Prior invention may not be established under this section in any
country other than the United States, a NAFTA country, or a WTO member
country. Prior invention may not be established under this section
before December 8, 1993, in a NAFTA country other than the United
States, or before January 1, 1996, in a WTO member country other than a
NAFTA country. Prior invention may not be established under this section
if either:
(1) The rejection is based upon a U.S. patent to another or others which
claims the same patentable invention as defined in 1.601(n); or
(2) The rejection is based upon a statutory bar.
* * * * *
47. Section 1.132 is proposed to be revised to read as follows:
1.132 Affidavits or declarations traversing rejections or objections.
When any claim of an application or a patent under reexamination is
rejected or objected to, the inventor of the subject matter of the
rejected claim, an oath or declaration may be submitted to traverse the
rejection or objection. An oath or declaration may not be submitted
under this section to traverse a rejection if the rejection is based
upon a U.S. patent to another or others which claims the same patentable
invention as defined in 1.601(n).
48. Section 1.133 is proposed to be amended by revising paragraph(a) to
read as follows:
1.133 Interviews.
(a) Interviews with examiners concerning applications and other
matters pending before the Office must be conducted on Office premises
and within office hours, as the respective examiners may designate.
Interviews will not be permitted at any other time or place without the
authority of the Commissioner. Interviews for the discussion of the
patentability of pending applications will not occur before the first
Office action. The examiner may require that an interview be scheduled
in advance.
* * * * *
49. Section 1.136 is proposed to be amended by adding paragraph (c)
to read as follows:
1.136 Extensions of time.
* * * * *
(c) If an applicant is notified in a ``Notice of Allowability'' that
an application is otherwise in condition for allowance, the following
time periods are not extendable if set in the ``Notice of Allowability''
or in an Office action having a mail date on or after the mail date of
the ``Notice of Allowability'':
(1) The period for submitting an oath or declaration in compliance with
1.63;
(2) The period for submitting formal drawings set under 1.85(c); and
(3) The period for making a deposit set under 1.809(c).
50. Section 1.137 is proposed to be amended by revising paragraph(c) to
read as follows:
1.137 Revival of abandoned application or lapsed patent.
* * * * *
(c)(1) Any petition to revive pursuant to this section in a design
application must be accompanied by a terminal disclaimer and fee as set
forth in 1.321 dedicating to the public a terminal part of the term
of any patent granted thereon equivalent to the period of abandonment of
the application. Any petition to revive pursuant to this section in
either a utility or plant application filed before June 8, 1995, must be
accompanied by a terminal disclaimer and fee as set forth in 1.321
dedicating to the public a terminal part of the term of any patent
granted thereon equivalent to the lesser of:
(i) The period of abandonment of the application; or
(ii) The period extending beyond twenty years from the date on which the
application for the patent was filed in the United States or, if the
application contains a specific reference to an earlier filed
application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on
which the earliest such application was filed.
(2) Any terminal disclaimer pursuant to paragraph (c)(1) of this section
must also apply to any patent granted on a continuing utility or plant
application filed after June 8, 1995, or a continuing design
application, that contains a specific reference under 35 U.S.C. 120,
121, or 365(c) to the application for which revival is sought.
(3) The provisions of paragraph (c)(1) of this section do not apply to
applications for which revival is sought solely for purposes of
copendency with a utility or plant application filed on or after June 8,
1995, or to lapsed patents.
* * * * *
51. Section 1.138 is proposed to be revised to read as follows:
1.138 Express abandonment.
(a) An application may be expressly abandoned by filing in the Patent
and Trademark Office a written declaration of abandonment identifying
the application. Express abandonment of the application may not be
recognized by the Office unless it is actually received by appropriate
officials in time to act thereon before the date of issue.
(b) A written declaration of abandonment must be signed by a party
authorized under 1.33(b)(1), (b)(3) or (b)(4) to sign a paper in the
application, except as otherwise provided in this paragraph. A
registered attorney or agent not of record who acts in a representative
capacity under the provisions of 1.34(a) when filing a continuing
application may expressly abandon the prior application as of the filing
date granted to the continuing application.
52. Section 1.152 is proposed to be revised to read as follows:
1.152 Design drawings.
The design must be represented by a drawing that complies with the
requirements of 1.84, and must contain a sufficient number of views
to constitute a complete disclosure of the appearance of the design.
Appropriate and adequate surface shading should be used to show the
character or contour of the surfaces represented. Solid black surface
shading is not permitted except when used to represent the color black
as well as color contrast. Broken lines may be used to show visible
environmental structure, but may not be used to show hidden planes and
surfaces which cannot be seen through opaque materials. Alternate
positions of a design component, illustrated by full and broken lines in
the same view are not permitted in a design drawing. Photographs and ink
drawings are not permitted to be combined as formal drawings in one
application. Photographs submitted in lieu of ink drawings in design
patent applications must not disclose environmental structure but must
be limited to the design for the article claimed.
53. Section 1.154 is proposed to be revised to read as follows:
1.154 Arrangement of application elements.
(a) The elements of the design application, if applicable, should
appear in the following order:
(1) Design application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see 1.76).
(4) Specification.
(5) Drawings or photographs.
(6) Executed oath or declaration (see 1.153(b)).
(b) The specification should include the following sections in order:
(1) Preamble, stating name of the applicant, title of the design, and a
brief description of the nature and intended use of the article in which
the design is embodied.
(2) Cross-reference to related applications (unless included in the
application data sheet).
(3) Statement regarding federally sponsored research or development.
(4) Description of the figure or figures of the drawing.
(5) Feature description.
(6) A single claim.
(c) The text of the specification sections defined in paragraph (b) of
this section, if applicable, should be preceded by a section heading in
uppercase and without underlining or bold type.
54. Section 1.155 is proposed to be revised to read as follows:
1.155 Expedited examination of design patents.
(a) The applicant may request that the Office expedite the
examination of a design application. To qualify for expedited
examination:
(1) The application must include drawings in compliance with 1.84;
(2) The applicant must have conducted a preexamination search; and
(3) The applicant must file a request for expedited examination
including:
(i) The fee set forth in 1.17(t); and
(ii) A statement that a preexamination search was conducted. The
statement must also indicate the field of search and include an
information disclosure statement in compliance with 1.98.
(b) The Office will not examine an application that is not in condition
for examination (e.g., missing basic filing fee) even if the applicant
files a request for expedited examination under this section.
55. Section 1.163 is proposed to be revised to read as follows:
1.163 Specification and arrangement of application elements.
(a) The specification must contain as full and complete a disclosure
as possible of the plant and the characteristics thereof that
distinguish the same over related known varieties, and its antecedents,
and must particularly point out where and in what manner the variety of
plant has been asexually reproduced. For a newly found plant, the
specification must particularly point out the location and character of
the area where the plant was discovered.
(b) The elements of the plant application, if applicable, should appear
in the following order:
(1) Plant application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see 1.76).
(4) Specification.
(5) Drawings (in duplicate).
(6) Executed oath or declaration ( 1.162).
(c) The specification should include the following sections in order:
(1) Title of the invention, which may include an introductory portion
stating the name, citizenship, and residence of the applicant.
(2) Cross-reference to related applications (unless included in the
application data sheet).
(3) Statement regarding federally sponsored research or development.
(4) Latin name of the genus and species of the plant claimed.
(5) Variety denomination.
(6) Background of the invention.
(7) Brief summary of the invention.
(8) Brief description of the drawing.
(9) Detailed botanical description.
(10) A single claim.
(11) Abstract of the disclosure.
(d) The text of the specification or sections defined in paragraph (c)
of this section, if applicable, should be preceded by a section heading
in upper case, without underlining or bold type.
56. Section 1.173 is proposed to be revised to read as follows:
1.173 Reissue specification, drawings, and amendments.
(a) Contents of a reissue application. An application for reissue
must contain the entire specification, including the claims, and the
drawings of the patent. No new matter shall be introduced into
theapplication.
(1) Specification, including claims. The entire specification, including
the claims, of the patent for which reissue is requested mustbe
furnished in the form of a copy of the printed patent, but with only a
single column of the printed patent securely mounted, or otherwise
reproduced in permanent form, on a single page. If an amendment of the
reissue application is to be included, it must be made pursuant to
paragraph (b) of this section.
(2) Drawings. Applicant must submit a clean copy of each drawing sheet
of the printed patent at the time the reissue application is filed. If
such copy complies with 1.84, no further drawings will be required.
Where a drawing of the reissue application is to include any changes
relative to the patent being reissued, the changes to the drawing must
be made in accordance with paragraph (b)(3) of this section. The Office
will not transfer the drawings from the patent file to the reissue
application.
(b) Making amendments in a reissue application. An amendment in a
reissue application is made either upon filing, by incorporating the
changes physically within the specification, including the claims, using
markings pursuant to paragraph (d) of this section, or by filing an
amendment paper as a preliminary amendment or during prosecution
directing that specified changes be made to the application
specification, including the claims, or to the drawings.
(1) Specification other than the claims. Changes to the specification,
other than to the claims, must be made by submission of the entire text
of an added or rewritten paragraph, including markings pursuant to
paragraph (d) of this section, except that an entire paragraph may be
deleted by a statement deleting the paragraph without presentation of
the text of the paragraph. The precise point in the specification must
be identified where any added or rewritten paragraph is located.
(2) Claims. An amendment paper must include the entire text of each
claim being changed by such amendment paper and of each claim being
added by such amendment paper. For any claim changed by the amendment
paper, a parenthetical expression ``amended,'' ``twice amended,'' etc.,
should follow the claim number. Each changed patent claim and each
presented in each of the reissue applications as an amended, unamended,
or canceled (shown in brackets) claim, with each such claim bearing the
same number as in the patent being reissued. The same claim of the
patent being reissued may not be presented in its original unamended
form for examination in more than one of such multiple reissue
applications. The numbering of any added claims in any of the multiple
reissue applications must follow the number of the highest numbered
original patent claim.
(c) If any one of the several reissue applications by itself fails to
correct an error in the original patent as required by 35 U.S.C.251, but
is otherwise in condition for allowance, the Office may suspend action
in the allowable application until all issues are resolved as to at
least one of the remaining reissue applications. The Office may also
merge two or more of the multiple reissue applications into a single
reissue application. No reissue application containing only unamended
patent claims and not correcting an error in the original patent will be
passed to issue by itself.
60. Section 1.178 is proposed to be revised to read as follows:
1.178 Original patent.
The application for a reissue should be accompanied by an offer to
surrender the original patent. The application should also be
accompanied by the original patent, or if the original is lost or
inaccessible, by a statement to that effect. The application may be
accepted for examination in the absence of the original patent or the
statement, but one or the other must be supplied before the application
is allowed. If a reissue is refused, the original patent will be
returned to applicant upon request.
61. Section 1.193 is proposed to be amended by revising paragraph (b)(1)
to read as follows:
1.193 Examiner's answer and reply brief.
* * * * *
(b)(1) Appellant may file a reply brief to an examiner's answer or a
supplemental examiner's answer within two months from the date of such
examiner's answer or supplemental examiner's answer. See 1.136(b) for
extensions of time for filing a reply brief in a patent application and
1.550(c) for extensions of time for filing a reply brief in a
reexamination proceeding. The primary examiner must either acknowledge
receipt and entry of the reply brief or withdraw the final rejection and
reopen prosecution to respond to the reply brief. A supplemental
examiner's answer is not permitted, unless the application has been
remanded by the Board of Patent Appeals and Interferences for such
purpose.
* * * * *
62. Section 1.303 is proposed to be amended by revising paragraph(a)
to read as follows:
1.303 Civil action under 35 U.S.C. 145, 146, 306.
(a) Any applicant or any owner of a patent involved in a
reexamination proceeding dissatisfied with the decision of the Board of
Patent Appeals and Interferences, and any party to an interference
dissatisfied with the decision of the Board of Patent Appeals and
Interferences may, instead of appealing to the U.S. Court of Appeals for
the Federal Circuit ( 1.301), have remedy by civil action under 35
U.S.C. 145 or 146, as appropriate. Such civil action must be commenced
within the time specified in 1.304.
* * * * *
63. Section 1.311 is proposed to be amended by revising paragraph(b)
to read as follows:
1.311 Notice of allowance.
* * * * *
(b) 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.
64. Section 1.312 is proposed to be revised to read as follows:
1.312 Amendments after allowance.
(a) No amendment may be made as a matter of right in an application
after the mailing of the notice of allowance. Any amendment pursuant to
this paragraph filed before the payment of the issue fee may be entered
on the recommendation of the primary examiner, approved by the
Commissioner, without withdrawing the application from issue.
(b) Any amendment pursuant to paragraph (a) of this section filed after
the date the issue fee is paid must be accompanied by a petition under
1.313(c)(1) to withdraw the application from issue, 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.
65. Section 1.313 is proposed to be revised to read as follows:
1.313 Withdrawal from issue.
(a) Applications may be withdrawn from issue for further action at
the initiative of the Office or upon petition by the applicant. 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. If the Office withdraws the
application from issue, the Office will issue a new notice of allowance
if the Office again allows the application.
(b) 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.
(c) Once the issue 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 of more claims, which petition must be
accompanied by a statement of such unpatentability and an amendment in
compliance with 1.312(b); or
(2) Express abandonment of the application. Such express abandonment may
be in favor of a continuing application.
(d) A petition under this section 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. Withdrawal of an
application from issue after payment of the issue fee may not be
effective to avoid publication of application information.
66. Section 1.314 is proposed to be revised to read as follows:
1.314 Issuance of patent.
If applicant timely pays the issue fee, the Office will issue the
patent in regular course unless the application is withdrawn from issue
( 1.313), or the Office defers issuance of the patent. To request that
the Office defer issuance of a patent, applicant must file petition
under this section including the fee set forth in 1.17(h) and a
showing of good and sufficient reasons why it is necessary to defer
issuance of the patent.
67. Section 1.322 is proposed to be amended by revising paragraph(a) to
read as follows:
1.322 Certificate of correction of Office mistake.
(a) 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 on its own initiative. 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 Office will not issue such a certificate on its own
initiative without first notifying the patentee (including any assignee
of record) at the correspondence address of record as specified in
1.33(a) and affording the patentee an opportunity to be heard.
* * * * *
68. Section 1.323 is proposed to be revised to read as follows:
1.323 Certificate of correction of applicant's mistake.
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). 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.
69. Section 1.324 is proposed to be amended by revising its heading and
paragraph (b)(1) and adding paragraph (c) to read as follows:
1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256.
* * * * *
(b) * * *
(1) Where one or more persons are being added, a statement from each
person who is being added as an inventor that the inventorship error
occurred without any deceptive intention on his or her part;
* * * * *
(c) For correction of inventorship in an application see 1.48
and 1.497, and in an interference see 1.634.
70. Section 1.366 is proposed to be amended by revising paragraph(c) to
read as follows:
1.366 Submission of maintenance fees.
* * * * *
(c) In submitting maintenance fees and any necessary surcharges,
identification of the patents for which maintenance fees are being paid
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. If the payment includes identification of only the patent number
(i.e., does not identify the application number of the United States
application 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.
* * * * *
71. Section 1.446 is proposed to be amended by revising paragraphs
(a) and (b) to read as follows:
1.446 Refund of international application filing and processing fees.
(a) Money paid for international application fees, where paid by
actual mistake or in excess, such as a payment not required by law or
Treaty and it Regulations, may be refunded. A mere change of purpose
after the payment of a fee 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 the payor or party requesting a refund does not
provide the banking information necessary for making refunds by
electronic funds transfer, the Office may use the banking information
provided on the payment instrument to make any refund by electronic
funds transfer.
(b) Any request for refund under paragraph (a) must be filed within two
years from the date the fee was paid. If the Office charges a deposit
account by an amount other than an amount specifically indicated in an
authorization under 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.
* * * * *
72. Section 1.497 is proposed to be amended by revising paragraph
(b)(2) and adding paragraph (d) to read as follows:
1.497 Oath or declaration under 35 U.S.C. 371(c)(4).
* * * * *
(b) * * *
(2) If the person making the oath or declaration or any supplemental
oath or declaration is not the inventor ( 1.42, 1.43, or 1.47), the
oath or declaration shall state the relationship of the person to the
inventor, and, upon information and belief, the facts which the inventor
would have been required to state. If the person signing the oath or
declaration is the legal representative of a deceased inventor, the oath
or declaration shall also state that the person is a legal
representative and the citizenship, residence and mailing address of the
legal representative.
* * * * *
(d) If the oath or declaration filed pursuant to 35 U.S.C. 371(c)(4)
and this section names an inventive entity different from the inventive
entity set forth in the international stage, the 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)).
73. Section 1.510 is proposed to be amended by revising paragraph(b)(4)
to read as follows:
1.510 Request for reexamination.
* * * * *
(b) * * *
(4) The entire specification, including the claims, of the patent for
which reexamination is requested, in the form of a copy of the printed
patent, but with only a single column of the printed patent securely
mounted, or otherwise reproduced in permanent form, on a product under
the Virus-Serum-Toxin Act became effective;
(B) The date an application for a license was submitted under the
Virus-Serum-Toxin Act; and
(C) The date the license issued;
(iv) For a patent claiming a food or color additive:
(A) The date a major health or environmental effects test on the
additive was initiated and any available substantiation of that date;
(B) The date on which a petition for product approval under the Federal
Food, Drug and Cosmetic Act was initially submitted and the petition
number; and
(C) The date on which the FDA published a Federal Register notice
listing the additive for use;
(v) For a patent claiming a medical device:
(A) The effective date of the investigational device exemption (IDE) and
the IDE number, if applicable, or the date on which the applicant began
the first clinical investigation involving the device if no IDE was
submitted and any available substantiation of that date;
(B) The date on which the application for product approval or notice of
completion of a product development protocol under section 515 of the
Federal Food, Drug and Cosmetic Act was initially submitted and the
number of the application; and
(C) The date on which the application was approved or the protocol
declared to be completed;
* * * * *
(14) The prescribed fee for receiving and acting upon the application
for extension (see 1.20(j)); and
(15) The name, address, and telephone number of the person to whom
inquiries and correspondence relating to the application for patent term
extension are to be directed.
(b) The application under this section must be accompanied by two
additional copies of such application.
(c) If an application for extension of patent term is informal under
this section, the Office will so notify the applicant. The applicant has
two months from the mail date of the notice, or such time as is set in
the notice, within which to correct the informality. Unless the notice
indicates otherwise, this time period may be extended under the
provisions of 1.136.
80. Section 1.741 is proposed to be amended by revising its heading, the
introductory text of paragraph (a) and paragraphs (a)(5) and (b) to read
as follows:
1.741 Complete application given a filing date; petition procedure.
(a) The filing date of an application for extension of a patent term
is the date on which a complete application is received in the Office or
filed pursuant to the procedures set forth in 1.8 or 1.10. A
complete application must include:
* * * * *
(5) Sufficient information to enable the Commissioner to determine
under subsections (a) and (b) of 35 U.S.C. 156 the eligibility of a
patent for extension and the rights that will be derived from the
extension and information to enable the Commissioner and the Secretary
of Health and Human Services or the Secretary of Agriculture to
determine the length of the regulatory review period; and
* * * * *
(b) If an application for extension of patent term is incomplete
under this section, the Office will so notify the applicant. If
applicant requests review of a notice that an application is incomplete,
or review of the filing date accorded an application under this section,
applicant must file a petition pursuant to this paragraph accompanied by
the fee set forth in 1.17(h) within two months of the mail date of
the notice that the application is incomplete, or the notice according
the filing date complained of. Unless the notice indicates otherwise,
this time period may be extended under the provisions of 1.136.
81. Section 1.780 is proposed to be revised to read as follows:
1.780 Certificate or order of extension of patent term.
If a determination is made pursuant to 1.750 that a patent is
eligible for extension and that the term of the patent is to be
extended, a certificate of extension, under seal, or an order granting
interim extension under 35 U.S.C. 156(d)(5), will be issued to the
applicant for the extension of the patent term. Such certificate or
order will be recorded in the official file of the patent and will be
considered as part of the original patent. Notification of the issuance
of the certificate or order of extension will be published in the
Official Gazette of the Patent and Trademark Office. Notification ofthe
issuance of the order granting an interim extension under 35 U.S.C.
156(d)(5), including the identity of the product currently under
regulatory review, will be published in the Official Gazette of the
Patent and Trademark Office and in the Federal Register. No certificate
of, or order granting, an extension will be issued if the term of the
patent cannot be extended, even though the patent is otherwise
determined to be eligible for extension. In such situations, the final
determination made pursuant to 1.750 will indicate that no
certificate or order will issue.
82. Section 1.809 is proposed to be amended by revising paragraphs (b)
introductory text, (b)(1) and (c) to read as follows:
1.809 Examination procedures.
* * * * *
(b) The applicant for patent or patent owner shall reply to a
rejection under paragraph (a) of this section by-section.
(1) In the case of an applicant for patent, making an acceptable
original or replacement or supplemental deposit or assuring the Office
in writing that an acceptable deposit will be made, or, in the case of a
patent owner, requesting a certificate of correction of the patent which
meets the terms of paragraphs (b) and (c) of 1.805, or
* * * * *
(c) 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. This time period is not
extendable under 1.136(a) or (b) (see 1.136(c)).
* * * * *
83. Section 1.821 is proposed to be amended by revising paragraphs
(c), (e) and (f) to read as follows:
1.821 Nucleotide and/or amino acid sequence disclosures in patent
applications.
* * * * *
(c) Patent applications which contain disclosures of nucleotide
and/or amino acid sequences must contain such nucleotide and/or amino
acid sequences disclosure and associated information as a separate part
of the disclosure using the symbols and format in accordance with the
requirements of 1.822 and 1.823. This disclosure is hereinafter
referred to as the ``Sequence Listing.'' Each sequence disclosed must
appear separately in the ``Sequence Listing.'' Each sequence set forth
in the ``Sequence Listing'' shall be assigned a separate sequence
identifier. The sequence identifiers shall begin with 1 and increase
sequentially by integers. If no sequence is present for a sequence
identifier, the code ``000'' shall be used in place of the sequence. The
response for the numeric identifier & <160> (see 1.823(b)) shall
include the total number of SEQ ID NOs, whether followed by a sequence
or by the code ``000.'' The ``Sequence Listing'' must be submitted
either on:
(1) Paper in compliance with 1.823; or
(2) A Compact Disk-Read Only Memory (CD-ROM) or Compact Disk-Recordable
(CD-R) in compliance with 1.823. Applicant may submit a second copy
of such a CD-ROM or CD-R ``Sequence Listing'' to satisfy the requirement
for a ``Sequence Listing'' in a computer readable format pursuant to
paragraph (e) of this section, provided that the CD-ROM or CD-R
``Sequence Listing'' meets the requirements of 1.824(b) and (c)(4).
* * * * *
(e) In addition to the submission of the ``Sequence Listing''
referred to in paragraph (c) of this section, a copy of this ``Sequence
Listing'' must also be submitted in computer readable form in accordance
with the requirements of 1.824. The computer readable form submitted
pursuant to this paragraph must be a copy of the ``Sequence Listing''
submitted pursuant to paragraph (c) of this section and will not
necessarily be retained as a part of the patent application file. If the
computer readable form of a new application is to be identical with the
computer readable form of another application of the applicant on file
in the Patent and Trademark Office, reference may be made to the other
application and computer readable form in lieu of filing a duplicate
computer readable form in the new application if the computer readable
form in the other application was compliant with all of the requirements
of this subpart. The new application shall be accompanied by a letter
making such reference to the other application and computer readable
form, both of which shall be completely identified. In the new
application, applicant must also request the use of the compliant
computer readable form (CRF) ``Sequence Listing'' that is already on
file for the other application and must state that the paper or CD-ROM
or CD-R copy of the ``Sequence Listing'' in the new application is
identical to the computer readable (CRF) copy filed for the other
application.
(f) In addition to the paper or CD-ROM or CD-R copy required by
paragraph (c) of this section and the computer readable form required by
paragraph (e) of this section, a statement that the content of the
paper, CD-ROM, or CD-R submission under paragraph (c) of this section
and the computer readable (CRF) copy under paragraph (e) of this section
are the same must be submitted with the computer readable form (e.g., a
statement that ``the information recorded in computer readable form is
identical to the paper (or CD-ROM or CD-R) copy of the sequence listing
submitted under 1.821(c)'' submitted under 1.821(c)).
* * * * *
84. Section 1.823 is proposed to be amended by revising its heading
and paragraph (a) to read as follows:
1.823 Requirements for nucleotide and/or amino acid sequences as part
of the application.
(a)(1) If the ``Sequence Listing'' required by 1.821(c) is
submitted on paper: The ``Sequence Listing,'' setting forth the
nucleotide and/or amino acid sequence and associated information in
accordance with paragraph (b) of this section, must begin on a new page
and must be titled ``Sequence Listing.'' The ``Sequence Listing''
preferably should be numbered independently of the numbering of the
remainder of the application. Each page of the ``Sequence Listing''
should contain no more than 66 lines and each line should contain no
more than 72 characters. A fixed-width font should be used exclusively
throughout the ``Sequence Listing.''
(2) If the ``Sequence Listing'' required by 1.821(c) is submitted on
a CD-ROM or CD-R: The ``Sequence Listing'' must be submitted as 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) and (d). No other format shall be allowed. The CD-ROM or
CD-R ``Sequence Listing'' must also be accompanied by documentation on
paper that is adequate to identify, maintain, and interpret the
electronic ``Sequence Listing.'' A notation that a ``Sequence Listing''
is submitted on a CD-ROM or CD-R must be placed conspicuously in the
specification (see 1.77(b)(11)). The CD-ROM or CD-R ``Sequence
Listing'' also must be labeled with the following information:
(i) The name of each inventor (if known);
(ii) The title of the invention;
(iii) The sequence identifiers of the ``Sequence Listings'' on that
CD-ROM or CD-R; and
(iv) The docket number used by the person filing the application to
identify the application (if applicable).
* * * * *
84a. Section 1.824 is proposed to be amended by revising
paragraph(c)(4) to read as follows:
1.824 Form and format for nucleotide and/or amino acid sequence
submissions in computer readable form.
* * * * *
(c) * * *
(4) CD-ROM or CD-R: Format ISO 9660 or High Sierra Format.
* * * * *
85. Section 1.825 is proposed to be amended by revising paragraphs(a)
and (b) to read as follows:
1.825 Amendments to or replacement of sequence listing and computer
readable copy thereof.
(a) Any amendment to the paper copy of the ``Sequence Listing''
submitted pursuant to 1.821 must be made by submission of substitute
sheets. 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.''
Amendments must be accompanied by a statement that indicates support for
the amendment in the application-as-filed, and a statement that the
substitute sheets or new CD-ROM or CD-R includes no new matter.
(b) Any amendment to the paper, CD-ROM, or CD-R copy of the ``Sequence
Listing'' pursuant to paragraph (a) of this section 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
substitute paper or new CD-ROM or CD-R copy of the ``Sequence Listing.''
* * * * *
PART 3-ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
86. The authority citation for 37 CFR part 3 continues to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
87. Section 3.27 is proposed to be revised to read as follows:
3.27 Mailing address for submitting documents to be recorded.
Documents and cover sheets to be recorded should be addressed to the
Commissioner of Patents and Trademarks, Box Assignment, Washington, D.C.
20231, unless they are filed together with new applications.
88. Section 3.71 is proposed to be revised to read as follows:
3.71 Prosecution by assignee.
(a) Patents-Conducting of prosecution. One or more assignees as
defined in paragraph (b) of this section may, after becoming of record
pursuant to paragraph (c) of this section, conduct prosecution of a
national patent application or a reexamination proceeding to the
exclusion of either the inventive entity, or the assignee(s) previously
entitled to conduct prosecution.
(b) Patents-Assignee(s) who can prosecute. The assignee(s) who may
conduct either the prosecution of a national application for patent or a
reexamination proceeding are:
(1) A single assignee. An assignee of the entire right, title and
interest in the application or patent being reexamined who is ofrecord,
or
(2) Partial assignee(s) together or with inventor(s). All partial
assignees, or all partial assignees and inventors who have not assigned
their right, title and interest in the application or patent being
reexamined, who together own the entire right, title and interest in the
application or patent being reexamined. A partial assignee is any
assignee of record having less than the entire right, title and interest
in the application or patent being reexamined.
(c) Patents-Becoming of record. An assignee becomes of record either in
a national patent application or a reexamination proceeding by filing a
statement in compliance with 3.73(b).
(d) Trademarks. The assignee of a trademark application or registration
may prosecute a trademark application; submit documents to maintain a
trademark registration; or file papers against a third party in reliance
on the assignee's trademark application or registration, to the
exclusion of the original applicant or previous assignee. The assignee
must establish ownership in compliance with 3.73(b).
89. Section 3.73 is proposed to be revised to read as follows:
3.73 Establishing right of assignee to take action.
(a) The inventor is presumed to be the owner of a patent application,
and any patent that may issue therefrom, unless there is an assignment.
The original applicant is presumed to be the owner of a trademark
application or registration, unless there is an assignment.
(b)(1) In order to request or take action in a patent or trademark
matter, the assignee must establish its ownership of the patent or
trademark property to the satisfaction of the Commissioner. The
establishment of ownership by the assignee may be combined with the
paper that requests or takes the action. Ownership is established by
submitting to the Office a signed statement identifying the assignee,
accompanied by either:
(i) Documentary evidence of a chain of title from the original owner to
the assignee (e.g., copy of an executed assignment). The documents
submitted to establish ownership may be required to be recorded pursuant
to 3.11 in the assignment records of the Office as a condition to
permitting the assignee to take action in a matter pending before the
Office; or
(ii) A statement specifying where documentary evidence of a chain of
title is recorded in the assignment records of the Office (e.g., reel
and frame number).
(2) The submission establishing ownership must show that the party
signing the submission is a party authorized to act on behalf of the
assignee by:
(i) Including a statement that the party signing the submission is
authorized to act on behalf of the assignee; or
(ii) Being signed by a person having apparent authority to sign on
behalf of the assignee, e.g., an officer of the assignee.
(c) For patent matters only:
(1) Establishment of ownership by the assignee must be submitted prior
to, or at the same time as, the paper requesting or taking action is
submitted.
(2) If the submission under this section is by an assignee of less than
the entire right, title and interest, such assignee must indicate the
extent (by percentage) of its ownership interest or the Office may
refuse to accept the submission.
90. Section 3.81 is proposed to be revised to read as follows:
3.81 Issue of patent to assignee.
For a patent application, if an assignment of the entire right,
title, and interest is recorded before the issue fee is paid, the patent
may issue in the name of the assignee. If the assignee holds an
undivided part interest, the patent may issue jointly to the inventor
and the assignee. If the patent is to issue solely or jointly to that
assignee, the name of the assignee must be provided at the time the
issue fee is paid.
PART 5-SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE
APPLICATIONS IN FOREIGN COUNTRIES
91. The authority citation for 37 CFR part 5 would continue to read
as follows:
Authority: 35 U.S.C. 6, 41, 181-188, as amended by the Patent Law
Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102 Stat. 1567;
the Arms Export Control Act, as amended, 22 U.S.C. 2751 et seq.; the
Atomic Energy Act of 1954, as amended, 42 U.S.C. 2011 et seq.; and the
Nuclear Non-Proliferation Act of 1978, 22 U.S.C. 3201 et seq.; and the
delegations in the regulations under these Acts to the Commissioner (15
CFR 370.10(j), 22 CFR 125.04, and 10 CFR 810.7).
92. Section 5.1 is proposed to be revised to read as follows:
5.1 Applications and correspondence involving national security.
(a) All correspondence in connection with this part, including
petitions, should be addressed to ``Assistant Commissioner for Patents
(Attention Licensing and Review), Washington, D.C. 20231.''
(b) Application as used in this part includes provisional applications
filed under 35 U.S.C. 111(b) ( 1.9(a)(2) of this chapter),
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 the national stage of
processing ( 1.9(b)).
(c) Patent applications and documents relating thereto that are national
security classified (see 1.9(i) of this chapter) and contain
authorized national security markings (e.g., ``Confidential,''
``Secret'' or ``Top Secret'') are accepted by the Office. 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 paragraph (a) of this section.
(d) The applicant in a national security classified patent application
must obtain a secrecy order pursuant to 5.2(a). 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. 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.
(e) 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.
(f) Applications on inventions made outside 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.
93. Section 5.2 is proposed to be amended by adding a new paragraph(c)
to read as follows:
5.2 Secrecy order.
* * * * *
(c) An application disclosing any significant part of the subject
matter of an application under a secrecy order pursuant to paragraph (a)
of this section also falls within the scope of such secrecy order. 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 paragraph (a) of
this section. Any subsequently filed application containing any
significant part of the subject matter of an application under a secrecy
order pursuant to paragraph (a) of this section must either be
hand-carried to Licensing and Review or mailed to the Office in
compliance with 5.1(a).
94. Section 5.12 is amended by revising paragraph (b) to read as follows:
5.12 Petition for license.
* * * * *
(b) A petition for license must include the fee set forth in
1.17(h), the petitioner's address, and full instructions for delivery of
the requested license when it is to be delivered to other than the
petitioner. The petition should be presented in letter form.
PART 10-REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE
95. The authority citation for 37 CFR part 10 would continue to read
as follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32, 41.
96. Section 10.23 is proposed to be amended by revising paragraph
(c)(11) to read as follows:
10.23 Misconduct.
* * * * *
(c) * * *
(11) Except as permitted by 1.52(c) of this chapter, knowingly filing
or causing to be filed an application containing any material alteration
made in the application papers after the signing of the accompanying
oath or declaration without identifying the alteration at the time of
filing the application papers.
* * * * *
Sep. 17, 1999 Q. TODD DICKINSON
Acting Assistant Secretary of Commerce and
Acting Commissioner of Patents and Trademarks