DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 5
[Docket No.: 000308065-0065-01]
RIN 0651-AB05
Changes To Implement Eighteen-Month Publication of
Patent Applications
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office) is
proposing changes to the rules of practice in patent cases to implement
certain provisions of the ``American Inventors Protection Act of 1999.''
These provisions of the ``American Inventors Protection Act of 1999''
provide, with certain exceptions, for the publication of pending patent
applications (other than for a design patent) at eighteen months from
the earliest claimed priority date.
DATES: Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before May 22, 2000. No public hearing
will be held.
ADDRESSES: Comments should be sent by electronic mail message via
the Internet addressed to pregrantpub.comments@uspto.gov. Comments
may also be submitted by mail addressed to: Box Comments--Patents,
Assistant Commissioner for Patents, Washington, D.C. 20231, or by
facsimile to (703) 872-9411, marked to the attention of Robert W. Bahr.
Although comments may be submitted by mail or facsimile, the Office
prefers to receive comments via the Internet. If comments are submitted
by mail, the Office would prefer that the comments be submitted on a DOS
formatted 3 1/2 inch disk accompanied by a paper copy.
The comments will be available for public inspection at the Special
Program Law Office, Office of the Deputy Assistant Commissioner for
Patent Policy and Projects, located at Room 3-C23 of Crystal Plaza 4,
2201 South Clark Place, Arlington, Virginia, and will be available
through anonymous file transfer protocol (ftp) via the Internet
(address: http://www.uspto.gov). Since comments will be made available
for public inspection, information that is not desired to be made
public, such as an address or phone number, should not be included in
the comments.
FOR FURTHER INFORMATION CONTACT: Concerning this notice of proposed
rulemaking: Robert W. Bahr, Karin L. Tyson, or Robert A. Clarke by
telephone at (703) 308-6906, or by mail addressed to: Box Comments--
Patents, Assistant Commissioner for Patents, Washington, D.C. 20231, or
by facsimile to (703) 872-9411, marked to the attention of Robert W.
Bahr.
Concerning the electronic filing system (EFS): Jay Lucas or Michael
Lewis by electronic mail message via the Internet addressed to
jay.lucas@uspto.gov.
SUPPLEMENTARY INFORMATION: The ``American Inventors Protection Act of
1999'' (Title IV of the ``Intellectual Property and Communications
Omnibus Reform Act of 1999'' (S. 1948) as introduced in the 106th
Congress on November 17, 1999) was incorporated and enacted into law on
November 29, 1999, by Sec. 1000(a)(9), Division B, of Public Law 106-
113, 113 Stat. 1501 (1999). The ``American Inventors Protection Act of
1999'' contains a number of changes to title 35, United States Code.
This notice proposes changes to the rules of practice to implement the
provisions of Secs. 4501 through 4508 (Subtitle E, Domestic Publication
of Patent Applications Published Abroad) of the ``American Inventors
Protection Act of 1999.'' These provisions of the ``American Inventors
Protection Act of 1999'' provide that, with certain exceptions,
applications for patent shall be published promptly after the expiration
of a period of eighteen months from the earliest filing date for which a
benefit is sought under title 35, United States Code (``eighteen-month
publication'').
Section 4502 of the ``American Inventors Protection Act of 1999''
amends 35 U.S.C. 122 (35 U.S.C. 122(b)) to provide that applications for
patent shall be published promptly after the expiration of a period of
eighteen months from the earliest filing date for which a benefit is
sought under title 35, United States Code, and that an application may
be published earlier than the end of such eighteen-month period at the
request of the applicant. Section 4502 of the ``American Inventors
Protection Act of 1999'' (35 U.S.C. 122(b)) also contains a number of
exceptions to eighteen-month publication of patent applications.
First: An application shall not be published if it is: (1) no longer
pending; (2) subject to a secrecy order under 35 U.S.C. 181 or an
application for which publication or disclosure would be detrimental to
national security; (3) a provisional application under 35 U.S.C. 111(b);
or (4) an application for a design patent under 35 U.S.C. chapter 16.
See 35 U.S.C. 122(b)(2)(A) and (d).
Second: An application shall not be published if an applicant makes a
request upon filing, certifying that the invention disclosed in the
application has not and will not be the subject of an application filed
in another country, or under a multilateral international agreement,
that requires eighteen-month publication. An applicant may rescind such
a request at any time. In addition, an applicant who has made such a
request but who subsequently files an application directed to the
invention disclosed in the application filed in the Office in a foreign
country, or under a multilateral international agreement, that requires
eighteen-month publication, must notify the Office of such filing within
forty-five days after the date of the filing of such foreign or
international application. An applicant's failure to timely provide such
a notice to the Office will result in abandonment of the application
(subject to revival if it is shown that the delay in submitting the
notice was unintentional). If an applicant rescinds such a request or
notifies the Office that an application was filed in a foreign country
or under a multilateral international agreement that requires
eighteen-month publication, the application is subject to eighteen-month
publication. See 35 U.S.C. 122(b)(2)(B)(i)-(iv).
Third: If an applicant has filed applications in one or more foreign
countries, directly or through a multilateral international agreement,
and such foreign-filed applications or the description of the invention
in such foreign-filed applications is less extensive than the
application or description of the invention in the application filed in
the Office, the applicant may submit a redacted copy of the application
filed in the Office eliminating any part or description of the invention
in such application that is not also contained in any of the
corresponding applications filed in a foreign country. The Office may
only publish the redacted copy of the application unless the redacted
copy of the application is not received within sixteen months after the
earliest filing date for which a benefit is sought under title 35,
United States Code. See 35 U.S.C. 122(b)(2)(B)(v).
Section 4503(a) of the ``American Inventors Protection Act of 1999''
amends 35 U.S.C. 119(b) to provide that no application for patent shall
be entitled to a right of priority under 35 U.S.C. 119(a)- (d) unless a
claim is filed in the Office, identifying the foreign application by
specifying the application number of that foreign application, the
intellectual property authority or country in or for which the
application was filed, and the date of filing the application, at such
time during the pendency of the application as required by the Director.
Section 4503(a) of the ``American Inventors Protection Act of 1999''
also amends 35 U.S.C. 119(b) to provide that the Director may consider
the failure of the applicant to file a timely claim for priority as a
waiver of any such claim, and may establish procedures, including the
payment of a surcharge, to accept an unintentionally delayed claim under
35 U.S.C. 119(b)-(d). Section 4503(a) of the ``American Inventors
Protection Act of 1999'' also amends 35 U.S.C. 119(b) to authorize the
Director to determine whether to require a certified copy of the
original foreign application.
Section 4503(b)(1) of the ``American Inventors Protection Act of
1999'' amends 35 U.S.C. 120 to provide that no application shall be
entitled to the benefit of an earlier filed application under 35 U.S.C.
120 unless an amendment containing the specific reference to the earlier
filed application is submitted at such time during the pendency of the
application as required by the Director. Section 4503(b)(1) of the
``American Inventors Protection Act of 1999'' also amends 35 U.S.C. 120
to provide that the Director may consider the failure to submit such an
amendment within that time period as a waiver of any benefit under 35
U.S.C. 120, and may establish procedures, including the payment of a
surcharge, to accept an unintentionally delayed submission of an
amendment under 35 U.S.C. 120.
Section 4503(b)(2) of the ``American Inventors Protection Act of
1999'' amends 35 U.S.C. 119(e) to provide that no application shall be
entitled to the benefit of an earlier filed provisional application
under 35 U.S.C. 119(e) unless an amendment containing the specific
reference to the earlier filed provisional application is submitted at
such time during the pendency of the application as required by the
Director. Section 4503(b)(2) of the ``American Inventors Protection Act
of 1999'' also amends 35 U.S.C. 119(e) to provide that the Director may
consider the failure to submit such an amendment within that time period
as a waiver of any benefit under 35 U.S.C. 119(e), and the Director may
establish procedures, including the payment of a surcharge, to accept an
unintentionally delayed submission of an amendment under 35 U.S.C.
119(e) during the pendency of the application.
Case law has indicated that, in certain instances, priority claims
may be perfected after issuance. The U.S. Court of Appeals for the
District of Columbia has held that the equitable or remedial provisions
of 35 U.S.C. 251 authorize patentees to correct or perfect a claim for
priority under 35 U.S.C. 119 in an issued patent by reissue. See Brenner
v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968). The
U.S. District Court for the District of Columbia applied this rationale
to permit a patentee to amend an intermediate abandoned application in a
chain of applications for which a benefit was claimed under 35 U.S.C.
120 to include the specific reference required by 35 U.S.C. 120. See
Sampson v. Commissioner, 195 USPQ 136 (D.D.C. 1976). In appropriate
circumstances, the Office has permitted patentees to state claims under
35 U.S.C. 119, 120 or 121 in an issued patent by certificate of
correction under 35 U.S.C. 255 and Sec. 1.323. See In re Schuurs, 218
USPQ 443 (Comm'r Pat. 1983); In re Lambrech, 202 USPQ 620 (Comm'r Pat.
1976); In re Van Esdonk, 187 USPQ 671 (Comm'r Pat. 1975).
The amendments to 35 U.S.C. 119 and 120 provide that the Director
may consider the failure of the applicant to file a timely claim under
35 U.S.C. 119 or 120 as a waiver of any such claim. Sections 1.55 and
1.78 as proposed implement these amendments to 35 U.S.C. 119 and 120 by
specifying time periods during the pendency of the application within
which claims under 35 U.S.C. 119(a)-(d), 119(e), and 120 must be stated
(or are considered waived). 35 U.S.C. 119(b), 119(e), and 120 each
provide that the Director may establish procedures to accept an
unintentionally delayed submission of a claim under 35 U.S.C. 119(b),
119(e), or 120 (respectively); however, 35 U.S.C. 119(e) requires that
such unintentionally delayed claim (amendment) be submitted during the
pendency of the application. Thus, a claim under 35 U.S.C. 119(a)-(d) or
120 for the benefit of a prior application may be added (or corrected)
in an issued patent by reissue or certificate of correction (assuming
the conditions for reissue or certificate of correction are otherwise
met) by submitting such untimely claim under the procedures established
in Sec. 1.55 or Sec. 1.78 (including payment of any applicable
surcharge). A claim under 35 U.S.C. 119(e) for the benefit of a prior
provisional application, however, must be added or corrected during the
pendency of the application.
Section 4504 of the ``American Inventors Protection Act of 1999''
amends 35 U.S.C. 154 to provide that, subject to a number of conditions,
a patent includes the right to obtain a reasonable royalty during the
period beginning on the date of publication of the application for such
patent under 35 U.S.C. 122(b) (or the date of publication under Patent
Cooperation Treaty (PCT) Article 21(2) of an international application
designating the United States) and ending on the date the patent is
issued (``provisional rights'').
Section 4505 of the ``American Inventors Protection Act of 1999''
amends 35 U.S.C. 102(e) to, inter alia, set forth the conditions under
which an application published under 35 U.S.C. 122(b) or under PCT
Article 21(2) is prior art as of its filing date.
Section 4506 of the ``American Inventors Protection Act of 1999''
provides that the Office shall recover the cost of early publication
required by 35 U.S.C. 122(b) by charging a separate publication fee
after a notice of allowance is given under 35 U.S.C. 151.
Section 4508 of the ``American Inventors Protection Act of 1999''
provides that its eighteen-month publication provisions take effect on
November 29, 2000, and apply to applications (other than for a design
patent) filed under 35 U.S.C. 111(a) on or after November 29, 2000, and
to applications in compliance with 35 U.S.C. 371 that resulted from
international applications filed under 35 U.S.C. 363 on or after
November 29, 2000.
In August of 1995, the Office published a notice of proposed
rulemaking to implement legislation pending before the 104th Congress
that (if enacted) would have provided for the eighteen-month publication
of pending patent applications. See Changes to Implement 18-Month
Publication of Patent Applications, Notice of Proposed Rulemaking, 60 FR
42352 (August 15, 1995), 1177 Off. Gaz. Pat. Office 61 (August 15,
1995). The Office is now publishing a notice of proposed rulemaking,
rather than simply adopting changes based upon the notice of proposed
rulemaking published in 1995, because: (1) The eighteen- month
publication provisions of the ``American Inventors Protection Act of
1999'' are different from those pending before the 104th Congress; and
(2) the Office's planning approach to implementing eighteen-month
publication is different from its 1995 planning approach. The Office's
current planning approach to eighteen-month publication includes: (1)
Disseminating a publication document (patent application publication)
for each published application; and (2) providing (under conditions set
forth below) any member of the public with access to the file wrapper
and contents of each published application (which may be limited to a
copy of the file wrapper and contents of the application).
Patent application publication: The patent application publication
will include a front page containing information similar to that
contained on the front page of a patent, and the drawings (if any) and
specification (including claims) of the published application. To create
the patent application publication, the Office plans to use its Patent
Application Capture and Review (PACR) system to create an electronic
database (PACR database) containing: (1) The application papers and
drawings deposited on the filing date of the application; and (2) any
subsequently filed application papers and drawings needed to create the
patent application publication. The application information contained in
the Office's PACR database will be used to create the patent application
publication, unless the applicant provides a copy of the application via
the Office's electronic filing system (EFS) to be used to create the
patent application publication (discussed below).
The Office currently uses the PACR database as the Office's record
of the application papers submitted on the filing date of the
application (i.e., the original disclosure of the invention). The
application papers submitted on the filing date of the application,
however, may not include the content needed (e.g., an abstract), and the
application papers or drawings may not be of sufficient quality (e.g.,
papers not having sufficient contrast to permit electronic capture by
digital imaging and conversion to text by optical character recognition
or drawings not having sufficient quality) to be used, to create a
patent application publication. Since the patent application publication
will be a prior art document (and, in most cases, the prior art document
having the earliest effective date under 35 U.S.C. 102(a), (b), and
(e)), the Office must consider the usability of the patent application
publication as a prior art document when determining what drawing
quality is needed to create the patent application publication.
If the application papers submitted on the filing date of the
application do not include the content needed, or the application papers
or drawings are not of sufficient quality to be used, to create a patent
application publication, the Office of Initial Patent Examination (OIPE)
will issue a notice requiring that the applicant submit the needed
application content, or application papers or drawings of sufficient
quality, for use in creating a patent application publication. The
applicant's reply to that notice (application papers and drawings needed
to create the patent application publication) will then be added to the
PACR database. The Office must separate the application papers and
drawings deposited on the filing date of the application and the
subsequently filed application papers and drawings in its PACR database
because the PACR database is also used to create any requested certified
copy of the application (which may only include the application papers
and drawings deposited on the filing date of the application).
Initially, an application filed under 35 U.S.C. 111(a)
(nonprovisional) must be entitled to a filing date (i.e., contains a
written description of the invention, a drawing (if necessary for an
understanding of the invention), and at least one claim) for the
application to be in condition for publication. In addition, if an
application filed under 35 U.S.C. 111(a) otherwise entitled to a filing
date appears to omit a portion of the description or a drawing figure,
the omitted portion of the description or drawing figure(s) must be
supplied, or the period for supplying such portion of the description or
drawing figure(s) must have expired, for the application to be in
condition for publication. The requirements for an application filed
under 35 U.S.C. 111(a) to be entitled to a filing date and the treatment
of an application filed under 35 U.S.C. 111(a) that appears to omit a
portion of the description or a drawing figure is set forth in sections
601.01(d) through 601.01(g) of the Manual of Patent Examining Procedure
(7th ed. 1998) (MPEP).
In addition, an application filed under 35 U.S.C. 111(a) must
include an executed oath or declaration (Sec. 1.63), an abstract (Sec.
1.72(b)), and an English translation (if filed in a language other than
English), for the application to have the content necessary to create
the patent application publication. For eighteen-month publication
purposes, the oath or declaration must at a minimum: (1) Name each
inventor at least by a family and given name; and (2) be signed by each
inventor or a party qualified to sign under Secs. 1.42, 1.43, or 1.47 in
compliance with Sec. 1.64. Finally, an application filed under 35 U.S.C.
111(a) will not be published until the basic filing fee (Sec. 1.16(a) or
(g)) is paid.
A PCT international application must satisfy the requirements of 35
U.S.C. 371 to be subject to eighteen-month publication under 35 U.S.C.
122(b) (and to have the content necessary to create the patent
application publication).
Even if an application has the content necessary to create the
patent application publication, the application papers and drawings must
also be reviewed to determine whether they are of sufficient quality to
be used in creating the patent application publication. To be of
sufficient quality to create the patent application publication, the
specification must be on sheets of paper that: (1) Are flexible, strong,
smooth, non-shiny, durable, and white; (2) are either A4 (21 cm x 29.7
cm) or 8 1/2" x 11" with each sheet having a left margin of at least
2.5 cm (1") and top, bottom and right margins of at least 2.0 cm
(3/4"); (3) are written on one side only in portrait orientation; (4)
are plainly and legibly written either by a typewriter or machine
printer in permanent dark ink or its equivalent; (5) have lines that are
either 1 1/2 or double-spaced; and (6) have sufficient clarity and
contrast between the paper and the writing on the paper to permit direct
reproduction and electronic capture by digital imaging and optical
character recognition. These quality standards and requirements are
currently set forth in Sec. 1.52(a) and (b). In addition, the title must
meet the character type and length requirements of Sec. 1.72(a); the
abstract must commence on a separate sheet and meet the word-length
requirement of Sec. 1.72(b); the claims must commence on a separate
sheet; and the sequence listing (if applicable) must comply with Secs.
1.821 through 1.825.
As discussed above, the Office must consider not only whether
drawings are of sufficient quality to create a publication (the patent
application publication), but whether they are sufficient for the
publication to be routinely used as a prior art document. Thus, the
drawing sheets (if drawings are included) must comply with the following
requirements of Sec. 1.84. Drawings must be done in dark ink (not
pencil), except where color drawings or photographs are permitted.
Photographs (or photomicrographs) are not permitted unless they are
reproducible and the invention cannot be clearly illustrated in an ink
drawing. See Interim Waiver of 37 C.F.R. Sec. 1.84(b)(1) for Petitions
to Accept Black and White Photographs and Advance Notice of Change to
M.P.E.P. Sec. 608.02, Notice, 1213 Off. Gaz. Pat. Office 108 (August 4,
1998). Drawing sheets must be reasonably free from erasures and must be
free from alterations, overwritings, interlineations, folds, and copy
marks. Drawing sheets must be either 21.0 cm by 29.7 cm (DIN size A4) or
21.6 cm by 27.9 cm (8 1/2 by 11 inches). Each drawing 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). Lines, numbers, and
letters must be clean, dark (not of poor line quality), uniformly thick,
and well defined. 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). Numbers,
letters, and reference characters must measure at least 0.32 cm (1/8
inch) in height. Lead lines are required for each reference character
(except for those which indicate the surface or cross section on which
they are placed, in which case the reference character must be
underlined to make it clear that a lead line has not been left out by
mistake). Finally, drawing views must be numbered in consecutive Arabic
numerals, starting with 1.
In September of 1996, the Office revised the standard and format
requirements for the specification (including the abstract and claims),
drawings, and other application papers set forth in Sec. 1.52 and Sec.
1.84 for the purpose of obtaining initial application papers in
condition for eighteen-month publication. See Miscellaneous Changes in
Patent Practice, Final Rule Notice, 61 FR 42790 (August 19, 1996), 1190
Off. Gaz. Pat. Office 67 (September 17, 1996). Applicants are advised
that the Office will: (1) Begin more rigorous enforcement of the
provisions of Sec. 1.52(a) and (b) and Sec. 1.84; and (2) no longer
permit applicants to request that objections under Sec. 1.84 be held in
abeyance pending allowance of the application.
As discussed below, if applicant timely provides the Office with a
copy of the application via the Patent and Trademark Office electronic
filing system, the Office will use the electronic copy provided by the
applicant (rather than the PACR database records) to create the patent
application publication. Applicants may use this procedure to obtain
inclusion of amendments submitted during prosecution in the patent
application publication. Applicants must use this procedure when
requesting: (1) Voluntary publication of an application; (2)
republication of a previously published application; or (3) publication
of only a redacted copy of an application.
The electronic filing system (EFS) is an electronic system for the
submission of patent applications to the Office. The EFS encompasses the
preparation of the application parts in a special manner on the
applicant's computer (authoring), the assembling of the pieces of the
application so authored, and the secure communication of that
application to the Office.
The EFS is currently in place as a pilot program for use by a
limited number of applicants, who on a voluntary basis, file
applications under the EFS program. The same EFS software must be used
by applicants who wish to submit a copy of the application for the
patent application publication.
The steps for submission of an electronic version of a patent
application are as follows: (1) Obtaining a digital certificate; (2)
obtaining the authoring and the submission software packages from the
Office; (3) authoring the patent application; and (4) assembling the
parts of the application, and validating, digitally signing, and
submitting the application.
To file a copy of an application using the EFS, an applicant (or
representative) must submit a request and receive an Office digital
certificate to enable secure communication between the applicant and the
Office. A digital certificate will allow the authorized person to
conduct electronic filing, as well as have access to the Office's Patent
Application Information Retrieval (PAIR) software to display patent
application status information.
The digital certificate is given to individuals and firms that
obtain a customer number, and also request the digital certificate.
Instructions on how to obtain the necessary digital certificate are
located at the Office's Electronic Business Center on the Office's
Internet Web site (http://www.uspto.gov) (under the section Electronic
Business Center, select New User for the PAIR system).
The Office makes its branded version of the security software
product called Entrust Direct software available to authorized persons.
The software operates in conjunction with an Office Public Key
Infrastructure (PKI) that is secure and enables communication only
between authorized persons who are registered with the Office and the
Office.
A person signing up for EFS application filing receives a package
with his or her digital certificate including: (1) The software that
will attach a digital signature to a document or set of documents; (2)
an authoring tool that will allow the applicant to convert a standard
patent application into a specialized format; and (3) the electronic
Packaging and Validation Engine (ePave) program that will assemble the
parts of the application, validate that the parts are complete, encrypt
and digitally sign them, and then send them to the Office.
The applicant is responsible for correctly authoring the electronic
application, which is defined as reformatting the application into a
form that complies with the requirements of XML (the standard eXtensible
Markup Language of Internet authoring). The XML requires that all the
pieces of information in the application (e.g., the inventor's name,
title of the invention, the claims) are tagged with standard XML named
tags before and after each piece of information. For example, XML could
require that the title be tagged:
MAKING A WIDGIT
The tagged information, in turn, is ordered and positioned on the
submitted document according to the formula for that document in the
document type definition (DTD). The DTD contains a list of all the
tagged data elements (pieces of information) that should be on that
document, and the relative positioning of the elements. When combined
with the document's style sheet (which contains formatting information),
the DTD will completely define what the document should contain and,
when printed or viewed, what it will look like.
The applicant does the authoring using the software authoring tool
given to him or her by the Office and operating on the applicant's
computer. The authoring tool displays on the left of the applicant's
computer screen a list of all of the data elements that should be in a
patent application (according to the Office's DTD). The applicant clicks
each element in the list, and when a window opens, types the information
requested into the window. For example, the applicant clicks the data
element ``TITLE'' and types ``MAKING A WIDGIT'' when the window opens.
The authoring tool will add the tags, paragraph numbers, and other
elements that are required by XML. The applicant can continue through
this whole process adding the required information to each of the data
elements until the application is fully authored.
The applicant can also use the authoring tool to ``cut and paste'' a
fully written application into the proper format. In this mode, the
applicant will open up that written application, and also open up the
authoring tool to reveal all of the data elements. When the applicant
clicks the data element to reveal the data entry window, the applicant
will copy the relevant section from the previously written application
and paste that section into the window (for tagging by the authoring
tool).
Paper copies of the oath or declaration (Sec. 1.63), drawings, and
certain other documents are scanned on the applicant's digital scanner
and stored in tagged image file format (TIFF). The TIFF is not tagged by
the authoring tool, but is similar to an electronic photograph.
Using either mode, the applicant will produce a copy of the
application in compliance with the Office EFS, including a specification
and claims (in XML), an oath or declaration (in TIFF), and drawings
(also in TIFF).
Once the various parts of the application are prepared, the
applicant will use the software tool ePave to assemble those parts and
submit the application to the Office. The ePave software interacts with
the applicant to fill out an electronic transmittal and fee information
letter. This document is developed in the tagged XML format. The
applicant then uses the ePave software to associate these documents with
the previously produced application.
This association of the related files to be submitted is called
bundling. The bundle of files that will be sent to the Office will be
compressed using Zip technology to reduce their size. Then ePave will
apply the digital signature to the compressed bundle, to both indicate
who is sending the package to the Office and to check the file's
integrity. The digital signature process also encrypts the bundle, for
safety during transmission.
Obviously, fees submitted via EFS must be by an authorization to
charge the fee to a credit card or Office deposit account. Therefore,
any publication fee or processing fee required for a copy of an
application submitted via EFS for use in the patent application
publication must be by an authorization to charge the fee to a credit
card or Office deposit account.
The authoring tool and ePave software on the applicant's computer
perform all of this activity almost invisibly. The applicant must enter
a password to apply the digital signature, and the software will finish
processing the application for submission to the Office. During the
processing of a copy of an application for submission to the Office for
use in a patent application publication, the applicant will be advised
that the application of a digital signature constitutes a statement that
the EFS copy of the application contains no new matter, and, except for
a redacted copy of an application (which requires the concurrent
submission of other certifications on paper), that the EFS copy of the
application corresponds to the application as amended by any amendment
filed in the application. When processing is finished, the software will
ask the applicant if the list of displayed files should be sent to the
Office. The applicant will click or otherwise express his or her
concurrence, and the EFS application files are electronically
transmitted to the Office.
On receipt of the bundle of files comprising the application, the
Office stores the bundle and takes it apart. The bundle is decrypted,
the digital signature is checked, and the integrity of the package is
confirmed. In the course of events, the Office sends an acknowledgment
back to the applicant's computer listing the date and time of
submission, the names and sizes of the files received, and other
information to confirm the submission.
If a copy of an application being submitted to the Office for
eighteen-month publication purposes contains a sequence listing, and the
sequence listing is identical to a sequence listing previously submitted
to the Office (e.g., the sequence listing is not amended or redacted) in
compliance with Secs. 1.821 through 1.825, the EFS copy of the
application may contain a reference to the previously filed sequence
listing in lieu of a copy of the previously filed sequence listing.
Finally, EFS is currently a pilot program. The Office anticipates
that EFS will be capable of receiving copies of applications for
eighteen-month publication purposes on a routine basis by November 29,
2000. In the event that EFS is not capable of receiving copies of
applications for eighteen-month publication purposes on a routine basis
by November 29, 2000, the Office will provide for submission by paper of
copies of applications for applicants requesting: (1) A patent
application publication reflecting amendments to the application; (2)
voluntary publication of an application; (3) republication of a
previously published application; or (4) publication of only a redacted
copy of an application.
Publication process: The current planning approach involves a
fourteen-week publication cycle that results in the publication of
patent application publications on Thursday of each week. Ideally, the
publication date of an application will be the first Thursday after the
date that is eighteen months after the filing date of the application,
or if the application claims the benefit of an earlier filing date, the
first Thursday after the date that is eighteen months after the earliest
filing date for which a benefit is sought. An application, however, may
not be published the first Thursday after the date that is eighteen
months after the earliest filing date for which a benefit is sought if
the application is not in condition for publication approximately
fourteen months after the earliest filing date for which a benefit is
sought (eighteen months less the fourteen-week publication cycle).
Obviously, there are events that will delay publication of some
applications until a later date: e.g., (1) the application claims the
benefit under 35 U.S.C. 120 of an application filed more than eighteen
months before the actual filing date of the application; (2) the basic
filing fee or oath (or declaration) is not provided within eighteen
months after the earliest filing date for which a benefit is sought; or
(3) the application does not contain papers or drawings of publication
quality within eighteen months after the earliest filing date for which
a benefit is sought. In such situations, the publication date of an
application will be the first Thursday after the date that is fourteen
weeks after the application is in condition for publication. Applicants
who attempt to delay publication by intentionally delaying the
submission of the application content necessary for publication,
however, will encounter a reduction (under regulations established
pursuant to 35 U.S.C. 154(b)(2)(C)(iii)) in any patent term adjustment
under 35 U.S.C. 154(b).
The Office plans to indicate a projected publication date on the
filing receipt or indicate ``to be determined'' if the application is
not in condition for publication. If events change the projected
publication date by more than two weeks (e.g., claim for priority under
35 U.S.C. 119(e) presented after mailing of the filing receipt) or the
application content necessary for publication is provided, the Office
will issue a change notification indicating the revised projected
publication date.
The publication process involves producing weekly volumes of patent
application publications on a variety of media: e.g., the Office's
Examiner Automated Search Tool (EAST) and Web-based Examiner Search Tool
(WEST) search systems, optical disk products for sale to the public, and
exchange with the Office's Intellectual Property exchange partners.
Patent application publications will be available for viewing by the
public in the Public Search Room via an on-line search system. The
Office does not plan to provide paper copies of the patent application
publications for placement in either the Public Search Room or the
examiners' search rooms. The Office, however, will provide paper copies
of the patent application publications to any member of the public on
request (for a fee) in the manner that paper copies of patents are
currently provided.
The publication process provides for: (1) Assembly of application
bibliographic information for the patent application publication at
fourteen weeks prior to the projected publication date; (2) assembly of
the technical content (specification, including claims and abstract, and
drawings) of the application for the patent application publication at
nine weeks prior to the projected publication date; and (3) placing the
application information as assembled into the patent application
publication on publication media (e.g., optical disks, magnetic tape) at
four weeks prior to the projected publication date.
Any applicant seeking to abandon the application for the purpose of
avoiding publication must take appropriate action (see Sec. 1.138
discussed below) well prior to the projected publication date. If the
application is not expressly abandoned at least four weeks prior to the
projected publication date, the Office will probably not be able to
avoid publication of the application or at least some application
information because the Office will place the application (along with
the thousands of other applications being published each week) on
publication media (e.g., optical disks, magnetic tape) four weeks prior
to the projected date. This does not imply that a request to expressly
abandon an application to avoid publication (Sec. 1.138) filed prior to
this ``four-week'' time frame will ensure that the Office will be able
to remove an application from publication. The Office simply cannot
ensure that it can remove an application from publication or avoid
publication of application information any time after the publication
process for the application is initiated.
Access to the file wrapper and contents of a published application:
The Office plans to permit: (1) Any member of the public to obtain (for
a fee) a copy of the complete file wrapper and contents of, or a copy of
a specific paper in, any published application, provided that no
redacted copy was timely submitted for publication; (2) any member of
the public to obtain (for a fee) an appropriately redacted copy of the
file wrapper and contents of, or a copy of a specific paper in, any
published application for which a redacted copy was timely submitted for
publication; and (3) any member of the public to physically inspect
(under the conditions that inspection of patented files is permitted)
the file of any abandoned published application, provided that no
redacted copy was timely submitted for publication.
Any member of the public may obtain status information concerning
any published application via the Office's PAIR system. Permitting
physical inspection of pending published applications, however, would
interfere with the Office's ability to act on the applications within
the time frames set forth in 35 U.S.C. 154(b)(1)(A) and (B). Thus, the
Office must limit public access to the file wrapper of pending published
applications to obtaining a copy produced by the Office (for a fee) to
avoid conferring patent term adjustment on the applicant due to actions
by members of the public.
Section 4805 of the ``American Inventors Protection Act of 1999''
provides that the Comptroller General (in consultation with the Office)
shall conduct a study and submit a report to Congress on the potential
risks to the United States biotechnology industry relating to biological
deposits in support of biotechnology patents, and that the Office shall
consider the recommendations of such study in drafting regulations
affecting biological deposits (including any modification of Sec. 1.801
et seq.). Therefore, this notice does not contain any proposed amendment
to Sec. 1.801 et seq. concerning the treatment of biological deposits in
applications subject to eighteen-month publication.
The term ``Commissioner'' wherever it is present in the rules of
practice affected by this notice is proposed to be changed to
``Director'' for consistency with Sec. 4732 of the ``American Inventors
Protection Act of 1999.'' The provisions of the rules of practice not
involved in this notice will be revised for consistency with Sec. 4732
of the ``American Inventors Protection Act of 1999'' in due course.
Finally, the Office proposed a number of changes to the rules of
practice in a rulemaking to support the Patent Business Goals. See
Changes to Implement the Patent Business Goals, Notice of Proposed
Rulemaking, 64 FR 53772 (October 4, 1999), 1228 Off. Gaz. Pat. Office 15
(November 2, 1999). The Office indicated in the Patent Business Goals
Notice of Proposed Rulemaking that it would have to reconsider its
business processes and make such further changes to the rules of
practice as are necessary in the event of enactment of patent
legislation. See Id. Sections 1.9, 1.14, 1.17, 1.55, 1.72, 1.78, 1.89,
1.131, 1.132, 1.137, 1.138, 1.311, and 5.1 as proposed to be amended in
this notice also reflect changes proposed in the Patent Business Goals
Notice of Proposed Rulemaking.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Parts 1 and 5, are proposed
to be amended as follows:
Section 1.9: Section 1.9(c) is proposed to be amended to define a
published application as used in 37 CFR chapter I to mean an application
for patent which has been published under 35 U.S.C. 122(b).
Section 1.9 as proposed also reflects changes proposed in the Patent
Business Goals Notice of Proposed Rulemaking.
Section 1.11: Section 1.11(a) is proposed to be amended to include
the file of an abandoned published application (except if a redacted
copy of the application was used for the patent application publication)
among the files that are open to inspection by the public.
Section 1.12: Section 1.12(a)(1) is proposed to be amended to
include the assignment records of a published patent application among
the patent assignment records that are available to the public. Section
1.12(b) is proposed to be amended to provide the patent assignment
records, digests, and indexes that are available to the public unless
they relate to pending or abandoned patent applications that have not
been published under 35 U.S.C. 122(b).
Section 1.13: Section 1.13 is proposed to be amended to include
patent application publications among the records of the United States
Patent and Trademark Office that are open to the public, and of which a
copy (certified or uncertified) will be furnished (upon payment of the
fee therefor).
Section 1.14: Section 1.14(a) is proposed to be amended to generally
maintain the confidentiality of applications that have not been
published as a U.S. patent application publication (see 35 U.S.C.
122(b)) pursuant to 35 U.S.C. 122(a). Status information is defined to
include identification of whether the application has been published
under 35 U.S.C. 122(b), as well as whether the application is pending,
abandoned, or patented, and the application numerical identifier.
Section 1.14(b) is proposed to be amended to provide that status
information may also be supplied when the application is referred to by
its numerical identifier in a U.S. patent application publication as
well as a U.S. patent or a published international application. Section
1.14(b) is also proposed to be amended to provide that status
information may be supplied for an application which claims the benefit
of the filing date of an application for which status information may be
supplied. As a result, the public will be able to obtain continuity data
for applications that have been published as a U.S. patent application
publication or as a U.S. patent.
Section 1.14(c)(1) as proposed provides that a copy of an
application-as-filed or a file wrapper and contents may be supplied
where the appropriate fee is paid, and: (1) the application is
incorporated by reference in a U.S. patent application publication or
U.S. patent; or (2) the application is relied upon for priority under 35
U.S.C. 119(e) or 120 in a U.S. patent application publication or U.S.
patent.
Section 1.14(c)(2) as proposed provides that copies of the file
wrapper and contents of an application are available to the public when
the application has been published as a U.S. patent application
publication.
Section 1.14(e) is proposed to be amended to provide public access
to an abandoned application that is referenced in a U.S. patent
application publication as well as a U.S. patent, or another application
that is open to public inspection.
Section 1.14(i) is proposed to provide for greater access to
international application files kept by the Office. Specifically, 35
U.S.C. 374 equates the publication under the PCT of an international
application designating the U.S. to the publication of a U.S.
application under 35 U.S.C. 122(b). As a result of the publication under
35 U.S.C. 122(b) of applications having an international filing date on
or after November 29, 2000, the Office will make available copies of the
application files and also allow for access to those files in accordance
with Sec. 1.14(c) and (e), respectively. Therefore, after publication of
an international application having an international filing date on or
after November 29, 2000, and designating the U.S. under PCT Article 21,
the Office will make available copies of, and allow access to, those
international application files which are kept in the Office (the Home,
Search, and Examination Copies) to the extent permitted under the PCT.
Additionally, Sec. 1.14(i)(2) provides that copies of English language
translations of international applications, which were published in a
non-English language and which designated the U.S., and which have been
submitted to the Office pursuant to 35 U.S.C. 154(d)(4), will also be
available to the public. Requests for copies of, or access to, an
application file under Sec. 1.14(i) must be in the form of a written
request and must include a showing that the international application
has been published and that the U.S. was designated. Such a showing
should preferably be in the form of the submission of a copy of the
front page of the published international application. Additionally,
requests for copies of international application files must also be
accompanied by the appropriate fee.
Section 1.14(j) is proposed to be amended to provide that this
section not only applies when the Office provides access to or copies of
the application, but also when the Office provides access to or copies
of part of an application.
Section 1.14 as proposed also reflects changes proposed in the
Patent Business Goals Notice of Proposed Rulemaking.
Section 1.17: Section 1.17(h) is proposed to be amended to include a
petition under Sec. 1.138 to expressly abandon an application to avoid
publication among the petitions requiring the fee ($130) set forth in
Sec. 1.17(h).
Section 1.17(i) is proposed to be amended to include processing a
redacted copy of a paper submitted in the file of an application in
which a redacted copy was submitted for the patent application
publication (Sec. 1.217), a request for voluntary publication or
republication of an application (Sec. 1.221), and for processing a
belated submission under Sec. 1.99 (Sec. 1.99(e)) to the processing
services requiring the processing fee ($130) set forth in Sec. 1.17(i).
Sections 1.17(l) and 1.17(m) (and the heading of Sec. 1.17) are
proposed to be amended to set forth the fees for filing a petition under
Sec. 1.137 for revival of a terminated reexamination proceeding (on the
basis of unavoidable and unintentional delay), and are discussed in a
separate rulemaking (to implement the optional inter partes
reexamination provisions of the ``American Inventors Protection Act of
1999'').
Section 1.17(p) is proposed to be amended to make its fee ($240)
applicable to a third party submission under Sec. 1.99, as well as an
information disclosure statement under Sec. 1.97(c) or (d).
Section 1.17(u) is proposed to be added to set forth the surcharge
($1,210) for accepting an unintentionally delayed claim for priority
under 35 U.S.C. 119, 120, 121, or 365 (Secs. 1.55 and 1.78).
Section 1.17 as proposed also reflects changes proposed in the
Patent Business Goals Notice of Proposed Rulemaking.
Section 1.18: Section 1.18(d) is proposed to be added to specify the
publication fee ($300). In view of this proposed addition to Sec. 1.18,
the heading of Sec. 1.18 is also proposed to be amended to refer to
``post-allowance (including issue) fees'' (instead of only ``issue
fees'').
Section 1.24: Section 1.24 is proposed to be removed and reserved.
The practice of using coupons to purchase patents, statutory invention
registrations, trademark registrations, etc., is inefficient as compared
to alternatives such as payment by credit card (especially for orders
placed via the Internet). Coupons sold by the Office (before coupon
practice is abolished) may still be used but cannot be redeemed.
Section 1.52: Section 1.52(d) is proposed to be amended to provide
for nonprovisional applications and provisional applications filed in a
language other than English. The treatment of nonprovisional
applications filed in a language other than English are revised for
clarity, but otherwise remain unchanged (Sec. 1.52(d)(1)).
Section 1.52(d)(2) as proposed provides that if a provisional
application is filed in a language other than English, an English
translation will not be required in the provisional application. Section
1.52(d)(2) as proposed also contains a reference to Sec. 1.78(a)
concerning the requirements for claiming the benefit of the filing date
of such a provisional application in a later filed nonprovisional
application.
Section 1.55: Section 1.55 is proposed to be amended to implement
the provisions of 35 U.S.C. 119(b) as amended by Sec. 4503(a) of the
``American Inventors Protection Act of 1999,'' by providing: (1) a time
period within which a claim for the benefit of a prior foreign
application must be stated or waived; and (2) provisions for the
acceptance of an unintentionally delayed submission of a claim to the
benefit of a prior foreign application.
Section 1.55(a) is proposed to be amended to provide that: (1) in an
original application filed under 35 U.S.C. 111(a) (other than a design
application), the claim for priority must be presented during the
pendency of the application, and within the later of four months from
the actual filing date of the application or sixteen months from the
filing date of the prior foreign application; (2) 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
during the pendency of the application and within the time limit set
forth in the PCT and the Regulations under the PCT; and (3) the claim
for priority and the certified copy of the foreign application specified
in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before
the patent is granted.
Section 1.55(c) is proposed to provide that any claim for priority
under 35 U.S.C. 119(a)-(d), or 365(a) or (b) not presented within the
time period provided by Sec. 1.55(a) is considered to have been waived.
Section 1.55(c) as proposed also provides that if a claim to priority
under 35 U.S.C. 119(a)-(d) or 365(a) or (b) is presented after the time
period provided by Sec. 1.55(a), the claim may be accepted if the claim
identifying the prior foreign application by specifying its application
number, country, and the day, month and year of its filing was
unintentionally delayed. Section 1.55(c) as proposed also provides that
a petition to accept a delayed claim for priority under 35 U.S.C.
119(a)-(d) or 365(a) or (b) must be accompanied by: (1) The surcharge
set forth in Sec. 1.17(u); and (2) a statement that the entire delay
between the date the claim was due under Sec. 1.55(a)(1) and the date
the claim was filed was unintentional, and that the Director may require
additional information where there is a question whether the delay was
unintentional.
Section 1.55 as proposed also reflects changes proposed in the
Patent Business Goals Notice of Proposed Rulemaking.
Section 1.72: Section 1.72(a) is proposed to be amended to provide
that the title of the invention may include only characters capable of
being created by a keyboard and may not exceed 500 characters in length.
The title character type and number limitations are necessary to ensure
that the title can be completely and accurately captured in the Office's
Patent Application Locating and Monitoring (PALM) system. Section 1.72
as proposed also reflects changes proposed in the Patent Business Goals
Notice of Proposed Rulemaking.
Section 1.78: Section 1.78(a) is proposed to be amended to implement
the provisions of 35 U.S.C. 119(e) and 120 as amended by Sec. 4503(b) of
the ``American Inventors Protection Act of 1999,'' by providing: (1) A
time period within which a claim to the benefit of a prior
nonprovisional or provisional application must be stated or waived; and
(2) provisions for the acceptance of the unintentionally delayed
submission of a claim to the benefit of a prior nonprovisional or
provisional application.
Section 1.78(a)(2) is proposed to be amended to provide that (except
for a continued prosecution application filed under Sec. 1.53(d)) any
claim to the benefit of a nonprovisional application or international
application must be made during the pendency of the application and
within the later of four months from the actual filing date of the
application or sixteen months from the filing date of the prior
application. Section 1.78(a)(2) as proposed also provides that the
failure to timely submit the reference required by 35 U.S.C. 120 and
Sec. 1.78(a)(2) is considered a waiver of any benefit under 35 U.S.C.
120, 121, or 365(c) to such prior application, but that the time period
set forth in Sec. 1.78(a)(2) does not apply to an application for a
design patent.
Section 1.78(a)(2) also provides that if the application claims the
benefit of an international application, the first sentence of the
specification must include an indication of whether the international
application was published under PCT Article 21(2) in English (regardless
of whether benefit to such application is claimed in the application
data sheet).
Sections 1.78(a)(3) and 1.78(a)(4) are proposed to be redesignated
as Secs. 1.78(a)(4) and 1.78(a)(5), respectively.
Section 1.78(a)(3) as proposed provides that if the reference
required by 35 U.S.C. 120 and paragraph (a)(2) of this section is
presented in a nonprovisional application after the time period provided
by Sec. 1.78(a)(2), the claim under 35 U.S.C. 120, 121, or 365(c) for
the benefit of a prior filed copending nonprovisional application or
international application designating the United States may be accepted
if the claim identifying the prior application by application number or
international application number and international filing date was
unintentionally delayed. Section 1.78(a)(3) as proposed also provides
that a petition to accept an unintentionally delayed claim under 35
U.S.C. 120, 121, or 365(c) for the benefit of a prior filed copending
application must be accompanied by: (1) The surcharge set forth in Sec.
1.17(u); and (2) a statement that the entire delay between the date the
claim was due under Sec. 1.78(a)(2) and the date the claim was filed was
unintentional, but the Director may require additional information where
there is a question whether the delay was unintentional.
Section 1.78(a)(4) is proposed to be amended to provide that, for a
nonprovisional application to claim the benefit of a provisional
application, the provisional application must be entitled to a filing
date as set forth in Sec. 1.53(c), and the basic filing fee set forth in
Sec. 1.16(k) must be paid within the time period set forth in Sec.
1.53(g).
Section 1.78(a)(5) as proposed provides that any nonprovisional
application claiming the benefit of a provisional application filed in a
language other than English must (in addition to the reference required
by 35 U.S.C. 119(e) and proposed Sec. 1.78(a)(5)) contain an English
language translation of the non-English language provisional application
and a statement that the translation is accurate. Section 1.78(a)(5) as
proposed also provides any claim for the benefit of a provisional
application and English language translation of a non- English language
provisional application must be submitted during the pendency of the
nonprovisional application, and within the later of four months from the
actual filing date of the nonprovisional application or sixteen months
from the filing date of the prior provisional application. Section
1.78(a)(5) as proposed also provides that the failure to timely submit
the reference and English language translation of a non-English language
provisional application required by 35 U.S.C. 119(e) and Sec. 1.78(a)(5)
is considered a waiver of any benefit under 35 U.S.C. 119(e) to such
prior provisional application.
Section 1.78(a)(6) as proposed provides that if the reference or
English language translation of a non-English language provisional
application required by 35 U.S.C. 119(e) and Sec. 1.78(a)(5) is
presented in a nonprovisional application after the time period provided
by Sec. 1.78(a)(5), the claim under 35 U.S.C. 119(e) for the benefit of
a prior filed provisional application may be accepted during the
pendency of the nonprovisional application if the claim identifying the
prior application by provisional application number and any English
language translation of a non-English language provisional application
were unintentionally delayed. Section 1.78(a)(6) as proposed also
provides that a petition to accept an unintentionally delayed claim
under 35 U.S.C. 119(e) for the benefit of a prior filed provisional
application must be accompanied by: (1) The surcharge set forth in Sec.
1.17(u); and (2) a statement that the entire delay between the date the
claim was due under Sec. 1.78(a)(5) and the date the claim was filed was
unintentional, but that the Director may require additional information
where there is a question whether the delay was unintentional.
Section 1.78 as proposed also reflects changes proposed in the
Patent Business Goals Notice of Proposed Rulemaking.
Section 1.84: Section 1.84(a)(2) as proposed is amended to provide
that color drawings are not permitted in an application, or copy
thereof, submitted under the Office electronic filing system. Section
1.84(a)(2) as proposed is also amended to provide that any petition to
accept color drawings must include a black and white photocopy that
accurately depicts, to the extent possible, the subject matter shown in
the color drawing. Since Sec. 1.84(b) provides that color photographs
will be accepted in utility patent applications if the conditions for
accepting color drawings have been satisfied, the provisions and
restrictions in amended Sec. 1.84(a)(2) would also apply to color
photographs.
Section 1.84(e) is proposed to be amended to provide that
photographs must be developed on paper meeting the sheet-size
requirements of Sec. 1.84(f) and the margin requirements of Sec. 1.84(g).
Section 1.84(j) is proposed to be amended to refer to the view
suitable for the front page, rather than the view suitable for the
Official Gazette, since the front page of the patent (and patent
application publication) includes the information that is (or would be)
included in the Official Gazette, and the Office does not plan on
creating an Official Gazette for patent application publications.
Section 1.84(j) is also proposed to be amended to provide that: (1) One
of the views should be suitable for inclusion on the front page of the
patent application publication and patent as the illustration of the
invention; and (2) applicant may suggest a single view (by figure
number) for inclusion on the front page of the patent application
publication and patent. Applicants should indicate in the application
transmittal letter the figure number of the view suggested for inclusion
on the front page of the patent application publication and patent. The
Office, however, is not bound by applicant's suggestion.
Section 1.85: Section 1.85(a) is proposed to be amended to provide
that a utility or plant application will not be placed on the files for
examination until objections to the drawings have been corrected. As
discussed above, these objections will concern deficiencies that must be
corrected for the drawings to be of sufficient quality for use in
creating a patent application publication. Since the Office plans to use
the copy of the application (including the drawings) from its PACR
database to create the patent application publication, the Office must
require that new or corrected drawings correcting the objections to the
drawings be filed before the application is released from OIPE and
placed on the files for examination.
Even if an applicant files the application with a request that the
application not be published pursuant to 35 U.S.C. 122(b), the applicant
may rescind that request at any time. See 35 U.S.C. 122(b)(2)(B)(ii). In
addition, at the time the Office is recording a copy of the application
in its PACR database, the Office is not in a position to know whether
the applicant will file an electronic filing system copy of the
application for use creating the patent application publication.
Therefore, the Office must be prepared to create a patent application
publication from its PACR database for each application and insist that
objections to the drawings be corrected in all utility and plant
applications before the application can be released from OIPE.
Section 1.85(a) is also proposed to be amended to provide that
(except as provided in Sec. 1.215(c)), any patent application
publication will not include drawings filed after the application has
been placed on the files for examination. Thus, corrected drawings
submitted after the application has been released from OIPE will not be
added to the PACR database or used to create the patent application
publication.
Section 1.85(a) is also proposed to be amended to provide that,
unless applicant is otherwise notified in an Office action, objections
to the drawings in a utility or plant application will not be held in
abeyance, and a request to hold objections to the drawings in abeyance
will not be considered a bona fide attempt to advance the application to
final action (Sec. 1.135(c)). That is, if an Office action or notice
contains an objection to the drawings (and does not expressly permit
such objection to be held in abeyance) and the applicant's reply does
not correct the objection, the applicant will be advised that the reply
is non-responsive and given the remainder of the period set in the
original Office action or notice (and not a new period under Sec.
1.135(c)) within which to correct the objection.
Since design applications are not subject to the eighteen-month
publication provisions of 35 U.S.C. 122(b), drawings in a design
application will continue to be admitted for examination if the drawings
meet the requirements of Sec. 1.84(e), (f), and (g) and are suitable for
reproduction.
Section 1.98: Section 1.98(a)(2)(i) is proposed to be amended to
also refer to U.S. patent application publications. Section 1.98(b) is
proposed to be amended to provide that each U.S. patent application
publication listed in an information disclosure statement shall be
identified by applicant, patent application publication number, and
publication date. The proposed changes to Sec. 1.98 also reflect changes
proposed in the Patent Business Goals Notice of Proposed Rulemaking.
Section 1.99: Section 1.99(a) as proposed provides that a submission
by a member of the public of patents or publications relevant to a
pending published application will be entered in the application file if
the submission complies with the requirements of Sec. 1.99 and the
application is still pending when the submission and application file
are brought before the examiner. The entry of such a submission does not
mean that the patents or printed publications contained in the
submission will be necessarily considered and cited by the examiner. If
the examiner considers a patent or printed publication contained in the
submission to be pertinent in determining patentability, the examiner
will initial that patent or printed publication on the listing of the
patents or publications submitted for consideration by the Office.
Section 1.99(b) as proposed provides that a submission under Sec.
1.99 must identify the application to which it is directed by
application number and include: (1) The fee set forth in Sec. 1.17(p);
(2) a listing of the patents or publications submitted for consideration
by the Office; (3) a copy of each listed patent or publication in
written form or at least the pertinent portions thereof; and (4) an
English language translation of all the necessary and pertinent parts of
any non-English language patent or publication in written form relied
upon.
Section 1.99(c) as proposed provides that a submission under Sec.
1.99 must be served upon the applicant in accordance with Sec. 1.248.
Section 1.99(d) as proposed provides that a submission under Sec.
1.99 may not include any explanation of the patents, publications, or
any other information, and is limited to twenty total patents or
publications.
Section 1.99(e) as proposed also provides that a submission under
Sec. 1.99 must be filed within two months of the date of publication of
the application (Sec. 1.215(a)), or prior to the mailing of a notice of
allowance (Sec. 1.311), whichever is earlier, and that any submission
under Sec. 1.99 not filed within this period is permitted only when the
patents or publications could not have been submitted to the Office
earlier, and must also be accompanied by the processing fee set forth in
Sec. 1.17(i). Section 1.99(e) as proposed also provides that a
submission by a member of the public to a pending published application
that does not comply with the requirements of Sec. 1.99 will be returned
or disregarded.
Section 1.99(f) as proposed provides that the involvement of a
member of the public in filing a submission under Sec. 1.99 ends with
the filing of the submission.
Section 1.104: Section 1.104(d) is proposed to be amended to provide
that if domestic (U.S.) patent application publications are cited by the
examiner, their publication number, publication date, and the names of
the applicants will be stated.
Section 1.130: Section 1.130(a) is proposed to be amended to refer
to published applications (as well as patents). Specifically, Sec. 1.130
is proposed to also be applicable to a rejection of a claim in an
application or patent under reexamination based upon a patent
application publication in the situation in which the application or
patent under reexamination and the published application are currently
owned by the same party.
Section 1.131: Section 1.131(a) is proposed to be amended to provide
that: (1) The effective date of a U.S. patent, U.S. patent application
publication, or international application publication under PCT Article
21(2) is the date that it is effective as a reference under 35 U.S.C.
102(e); and (2) prior invention may not be established under Sec. 1.131
if the rejection is based upon either a U.S. patent or a U.S. patent
application publication of a pending or patented application to another
or others which claims the same patentable invention as defined in Sec.
1.601(n).
Section 1.131 as proposed also reflects changes proposed in the
Patent Business Goals Notice of Proposed Rulemaking.
Section 1.132: Section 1.132 is proposed to be amended to provide
that an oath or declaration may not be submitted under Sec. 1.132 to
traverse a rejection if the rejection is based upon a U.S. patent or a
U.S. patent application publication of a pending or patented application
to another or others which claims the same patentable invention as
defined in Sec. 1.601(n).
Section 1.132 as proposed also reflects changes proposed in the
Patent Business Goals Notice of Proposed Rulemaking.
Section 1.137: Section 1.137 is proposed to be amended to: (1) Make
its provisions applicable to the revival of a terminated reexamination
proceeding; (2) provide for the revival of an application abandoned
pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the
Office of the filing of an application in a foreign country or under a
multinational treaty; and (3) reorganize certain provisions for clarity.
The provisions for revival of a terminated reexamination proceeding
(on the basis of unavoidable and unintentional delay) are discussed in a
separate rulemaking (to implement the optional inter partes
reexamination provisions of the ``American Inventors Protection Act of
1999'').
As discussed above, if an applicant makes a request (nonpublication
request) upon filing with the appropriate certifications, the
application will not be published under 35 U.S.C. 122(b)(1). See 35
U.S.C. 122(b)(2)(B)(i). An applicant who has made a nonpublication
request but who subsequently files an application directed to the
invention disclosed in the application filed in the Office in a foreign
country, or under a multilateral international agreement, that requires
eighteen-month publication, must notify the Office of such filing within
forty-five days after the date of such filing, with the failure to
timely provide such a notice to the Office resulting in abandonment of
the application. See 35 U.S.C. 122(b)(2)(B)(iii). 35 U.S.C.
122(b)(2)(B)(iii), however, also provides that an application abandoned
as a result of the failure to timely provide such a notice to the Office
is subject to revival if the ``delay in submitting the notice was
unintentional.'' See id.
Section 1.137(f) as proposed provides for the revival of an
application abandoned for failure to timely notify the Office of a
foreign filing. 35 U.S.C. 122(b)(2)(B)(iii) provides for revival only on
the basis of unintentional delay, and not on the basis of unavoidable
delay. Compare 35 U.S.C. 122(b)(2)(B)(iii)(``delay * * * was
unintentional'') with 35 U.S.C. 111(a)(4) (``delay * * * was unavoidable
or unintentional''). Therefore, Sec. 1.137(f) as proposed provides that
a nonprovisional application abandoned pursuant to 35 U.S.C.
122(b)(2)(B)(iii) for failure to timely notify the Office of the filing
of an application in a foreign country or under a multinational treaty
that requires eighteen-month publication may be revived only pursuant to
Sec. 1.137(b). Section 1.137(f) as proposed also provides that the reply
requirement of Sec. 1.137(c) is met by the notification of such filing
in a foreign country or under a multinational treaty, but the filing of
a petition under Sec. 1.137 will not operate to stay any period for
reply that may be running against the application. Since the Office
cannot ascertain whether an application is abandoned under 35 U.S.C.
122(b)(2)(B)(iii), the Office may continue to process and examine the
application until the applicant notifies the Office that the application
is abandoned. Therefore, Sec. 1.137(f) provides that the filing of a
petition under Sec. 1.137 to revive such an application will not operate
to stay any period for reply that may be running against the application.
Section 1.137 is also proposed to be amended to locate the ``reply
requirement'' provisions in Sec. 1.137(c), rather than include
duplicative provisions concerning the reply requirement in each of Sec.
1.137(a) and (b). Thus, the terminal disclaimer provisions of Sec.
1.137(c), reconsideration provisions of Sec. 1.137(d), and provisional
application provisions of Sec. 1.137(e) are proposed to be moved to Sec.
1.137(d), Sec. 1.137(e), and Sec. 1.137(g), respectively. In addition,
Sec. 1.137(c) also provides that in an application abandoned for failure
to pay the publication fee, the required reply must include payment of
the publication fee. Thus, even if an application abandoned for failure
to pay the publication fee is being revived solely for purposes of
continuity with a continuing application, the petition to revive under
Sec. 1.137 must include payment of the publication fee (unless
previously submitted).
Section 1.137 is also proposed to be amended to take into account the
provisions of 35 U.S.C. 119(e)(3), which extend the pendency of a
provisional application to the next succeeding secular or business day
if the day that is twelve months after the filing date of the
provisional application falls on a Saturday, Sunday, or Federal holiday
within the District of Columbia.
Section 1.137 as proposed also reflects changes proposed in the
Patent Business Goals Notice of Proposed Rulemaking.
Section 1.138: Section 1.138(a) is proposed to be amended to add ``or
publication'' to clarify that a letter of express abandonment may not be
recognized by the Office unless it is actually received by appropriate
officials in time to act thereon before the date of publication.
Section 1.138(c) is proposed to be added to provide for a petition
for express abandonment to avoid publication. Section 1.138(c) as
proposed provides that an applicant seeking to abandon an application to
avoid publication of the application (see Sec. 1.211(a)(1)) must submit
a declaration of express abandonment by way of a petition including the
fee set forth in Sec. 1.17(h) in sufficient time to permit the
appropriate officials to recognize the abandonment and remove the
application from the publication process. The petition will be granted
when it is recognized in sufficient time to avoid publication of
application information and will be denied when it is not recognized in
sufficient time to avoid publication of application information. This
will avert the situation in which an applicant files a letter of express
abandonment to avoid publication, the letter of express abandonment is
not recognized in sufficient time to avoid publication, upon publication
the applicant wishes to rescind the letter of express abandonment, and
the Office cannot revive the application (once the letter of express
abandonment is recognized) because the application was expressly and
intentionally abandoned by the applicant.
As discussed above, the publication process is a fourteen-week
process, and applicant should expect that the petition will not be
granted and application will be published in regular course unless such
declaration of express abandonment and petition are received by the
appropriate officials more than four weeks prior to the projected date
of publication.
Section 1.138 as proposed (Sec. 1.138(b)) also reflects changes
proposed in the Patent Business Goals Notice of Proposed Rulemaking.
Section 1.165: Section 1.165 is proposed to be amended to provide
that if plant application drawings include a color drawing or
photograph, a black and white photocopy that accurately depicts, to the
extent possible, the subject matter shown in the color drawing or
photograph must be submitted.
Section 1.211: Sections 1.211, 1.213, 1.215, 1.217, 1.219, and 1.221
are proposed to be added to provide for the pre-grant publication of
applications under 35 U.S.C. 122(b).
Section 1.211(a) as proposed provides that (with certain exceptions)
each U.S. national application for patent filed in the Office under 35
U.S.C. 111(a) and each international application in compliance with 35
U.S.C. 371 will be published promptly after the expiration of a period
of eighteen months from the earliest filing date for which a benefit is
sought under title 35, United States Code.
Section 1.211(a)(1) as proposed provides that the Office will not
publish applications that are recognized as no longer pending. The
phrase ``that are recognized by the Office as no longer pending'' is
meant to cover the situation in which the period for reply (either the
shortened statutory period or the maximum extendable period for reply)
to an Office action has expired, but the Office has not yet entered the
change of status (to abandoned) of the application in the PALM system
and mailed a notice of abandonment. An application will remain in the
publication process until the PALM system indicates that the application
is abandoned. Obviously, once the PALM system indicates that an
application is abandoned, the Office will attempt to remove the
application from the publication process and avoid dissemination of
application information. How much dissemination of application
information can be avoided depends upon how close it is to the
publication date when the Office recognizes the application as
abandoned. Unless an applicant has received a notice of abandonment, an
applicant who wants to abandon the application to avoid publication must
file a petition under Sec. 1.138(c) to expressly abandon the application
and avoid publication. An applicant permitting an application to become
abandoned (for failure to reply to an Office action) to avoid
publication by passively waiting for the Office to recognize that the
application has become abandoned must bear the risk that the Office will
not recognize that the application has become abandoned and change the
status of the application in the PALM system in sufficient time to avoid
publication.
Section 1.211(a)(2) as proposed provides that the Office will not
publish applications that are national security classified (see Sec.
5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under
national security review.
Section 1.211(a)(3) as proposed provides that the Office will not
publish applications that have issued as a patent in sufficient time to
be removed from the publication process. If the pre-grant publication
process coincides with the patent issue process, the Office will
continue with the pre-grant publication process until a patent actually
issues. This is because there are many instances in which the Office
mails a notice of allowance (Sec. 1.311) in an application but the
application does not issue as a patent in regular course (abandonment
due to failure to pay the issue fee, or withdrawal from issue either sua
sponte by the Office or on petition of the applicant). Therefore, the
Office will not discontinue the pre-grant publication process until a
patent has actually issued. Since the Office cannot discontinue the
pre-grant publication process during the last two weeks of the
publication process, this will result in a few applications being issued
as a patent and subsequently being published as a patent application
publication. The Office will refund the publication fee (if paid) if the
application is not published as a patent application publication, but
will not refund the publication fee if the application is published as a
patent application publication, even if published after the patent
issues.
Section 1.211(a)(4) as proposed also provides that the Office will
not publish applications that were filed with a nonpublication request
in compliance with Sec. 1.213(a).
Section 1.211(b) as proposed provides that provisional applications
under 35 U.S.C. 111(b) shall not be published. Section 1.211(b) as
proposed also provides that design applications under 35 U.S.C. chapter
16 and reissue applications under 35 U.S.C. chapter 25 shall not be
published under Sec. 1.211. Provisional applications under 35 U.S.C.
111(b) and design applications under 35 U.S.C. chapter 16 are excluded
from the pre-grant publication provisions of 35 U.S.C. 122(b). See 35
U.S.C. 122(b)(2)(A)(iii) and (iv). Reissue applications under 35 U.S.C.
chapter 25 are not maintained in confidence under 35 U.S.C. 122(a). See
Sec. 1.11(b).
Section 1.211(c) as proposed provides that the Office will not
publish an application filed under 35 U.S.C. 111(a) until it includes
the basic filing fee, an English translation if in a language other than
English, and an executed oath or declaration. Section 1.211(c) as
proposed also provides that publishing may be delayed until the
application includes a specification on papers in compliance with Sec.
1.52 and having an abstract (Sec. 1.72(b)), drawings in compliance with
Sec. 1.84, and a sequence listing in compliance with Secs. 1.821 through
1.825 (if applicable), and until any petition under Sec. 1.47 is
granted. That is, if an application does not contain the application
content on papers or drawings of sufficient quality to create a patent
application publication by eighteen months from its earliest claimed
filing date, the Office will publish the application as soon as
practical after these deficiencies are corrected.
Section 1.211(d) as proposed provides that the Office may refuse to
publish an application, or to include a portion of an application in the
patent application publication (Sec. 1.215), if publication of the
application or portion thereof would violate Federal or state law, or if
the application or portion thereof contains offensive or disparaging
material. A similar provision exists in PCT practice, in that the
International Bureau may omit expressions or drawings in an
international application from its publications if the expressions or
drawings are contrary to morality or public order, or contain
disparaging statements. See PCT Article 21(6) and Rule 9.
Section 1.211(e) as proposed provides that the publication fee set
forth in Sec. 1.18(d) must be paid in each application published under
this section before the patent will be granted, but does not require
that the publication fee be paid prior to publication. If an application
is subject to publication under this section, the sum specified in the
notice of allowance under Sec. 1.311 will also include the publication
fee which must be paid within three months from the date of mailing of
the notice of allowance to avoid abandonment of the application. This
three-month period is not extendable. If the application is not
published under this section, the publication fee (if paid) will be
refunded.
Section 1.213: Section 1.213 implements the provisions of 35 U.S.C.
122(b)(2)(B)(i)-(iii). An applicant may request that the application not
be published under 35 U.S.C. 122(b) and Sec. 1.211 if the invention
disclosed in an application has not been and will not be the subject of
an application filed in another country, or under a multilateral
international agreement, that requires publication of applications
eighteen months after filing. Section 1.213(a) requires that a request
that an application not be published under 35 U.S.C. 122(b)
(nonpublication request) must: (1) Be submitted with the application
upon filing; (2) state in a conspicuous manner that the application is
not to be published under 35 U.S.C. 122(b); (3) contain a certification
that the invention disclosed in the application has not been and will
not be the subject of an application filed in another country, or under
a multilateral agreement, that requires publication at eighteen months
after filing; and (4) be signed in compliance with Sec. 1.33(b). The
requirement that a nonpublication request be submitted ``upon filing''
is a requirement of statute (35 U.S.C. 122(b)(2)(B)(i)), and, as such,
the Office must deny any petition requesting a waiver of this provision
of Sec. 1.213(a).
Section 1.213(b) as proposed provides that the applicant may rescind
a nonpublication request at any time. See 35 U.S.C. 122(b)(2)(B)(ii).
Section 1.213(b) as proposed also provides that a request to rescind a
nonpublication request under Sec. 1.213(a) must: (1) Identify the
application to which it is directed (Sec. 1.5); (2) state in a
conspicuous manner that the request that the application is not to be
published under 35 U.S.C. 122(b) is rescinded; and (3) be signed in
compliance with Sec. 1.33(b). Once a request under Sec. 1.213(b) to
rescind a nonpublication request is filed and processed by the Office,
the application will be scheduled for publication in accordance with
Sec. 1.211(a).
Section 1.213(c) reiterates the provisions of 35 U.S.C.
122(b)(2)(B)(iii). Section 1.213(c) specifically states that if an
applicant who has submitted a nonpublication request under Sec. 1.213(a)
subsequently files an application directed to the invention disclosed in
the application in which the nonpublication request was submitted in
another country, or under a multilateral international agreement, that
requires publication of applications eighteen months after filing, the
applicant must notify the Office of such filing within forty-five days
after the date of the filing of such foreign or international
application. The failure to timely notify the Office of the filing of
such foreign or international application shall result in abandonment of
the application in which the nonpublication request was submitted. See
35 U.S.C. 122(b)(2)(B)(iii).
Section 1.215: Section 1.215(a) as proposed indicates that the
publication of an application under 35 U.S.C. 122(b) shall include a
patent application publication. The Office will not mail a paper copy of
the patent application publication to the applicant, but will mail a
notice to the applicant indicating that the application has been
published.
Section 1.215(a) as proposed also provides that the date of
publication shall be indicated on the patent application publication.
Section 1.215(a) as proposed also provides that (except as discussed
below in Sec. 1.215(c)) the patent application publication will be based
upon the application papers deposited on the filing date of the
application, except for preliminary amendments, as well as the executed
oath or declaration submitted to complete the application, and any
application papers or drawings submitted in reply to a preexamination
notice requiring a title and abstract in compliance with Sec. 1.72,
application papers in compliance with Sec. 1.52, drawings in compliance
with Sec. 1.84, or a sequence listing in compliance with Secs. 1.821
through 1.825. That is, the patent application publication will not
reflect the application as it was amended during the examination
process, but will only reflect the application as recorded in the
Office's PACR database.
Section 1.215(b) as proposed provides a mechanism by which
applicants may have assignee information (the name and address of the
assignee of the entire right, title, and interest in an application)
included on the patent application publication. To have assignee
information included on the patent application publication, the
applicant must include a separate paper indicating that such information
is being provided for inclusion on the patent application publication.
The assignee information might not be included on the patent application
publication if such paper is not included with the application on
filing. Finally, Sec. 1.215(b) clarifies that providing assignee
information for inclusion on the patent application publication does not
substitute for an assignment submitted to the Office for recording under
37 CFR part 3.
Section 1.215(c) as proposed provides a mechanism by which
applicants may have the patent application publication reflect the
application as amended during the examination process (rather than the
application as recorded in the Office's PACR database). Section 1.215(c)
as proposed provides that the Office will use an applicant- supplied
copy of the application (specification, drawings, and oath or
declaration), provided that: (1) The copy is in compliance with the
Office electronic filing system (EFS) requirements; and (2) the EFS copy
is filed within one month of the actual filing date of the application
or fourteen months of the earliest filing date for which a benefit is
sought, whichever is later.
The fourteen-month period differs from the sixteen-month period
provided in Sec. 1.217 for submitting a redacted copy of an application
because the sixteen-month period provided in Sec. 1.217 is not based
upon the fourteen-week publication cycle but is provided for by statute
(35 U.S.C. 122(b)(2)(B)(v)).
Section 1.215(d) as proposed provides that if the copy of the
application does not comply with the Office EFS requirements, the Office
will publish the application based upon the application records in the
Office's PACR database (as provided in Sec. 1.215(a)). If, however, the
Office has not started the publication process, the Office may use an
untimely filed copy of the application supplied by the applicant under
Sec. 1.215(c) in creating the patent application publication.
Section 1.217: Section 1.217(a) as proposed implements the
provisions of 35 U.S.C. 122(b)(2)(B)(v), and provides that if an
applicant has filed applications in one or more foreign countries,
directly or through a multilateral international agreement, and such
foreign-filed applications or the description of the invention in such
foreign-filed applications is less extensive than the application or
description of the invention in the application filed in the Office, the
applicant may submit a redacted copy of the application filed in the
Office for publication, eliminating any part or description of the
invention that is not also contained in any of the corresponding
applications filed in a foreign country. Section 1.217(a) as proposed
also provides that the Office will publish the application as provided
in Sec. 1.215(a) unless the applicant files a redacted copy of the
application in compliance with Sec. 1.217 within sixteen months after
the earliest filing date for which a benefit is sought under title 35,
United States Code. This sixteen-month period is provided by statute (35
U.S.C. 122(b)(2)(B)(v)), and as such, requests for waiver of this
sixteen- month period will be denied.
As discussed above, this sixteen-month period provided in Sec. 1.217
differs from the fourteen-month period provided in Sec. 1.215(c) because
the sixteen-month period provided in Sec. 1.217 is not based upon the
fourteen-week publication cycle but is provided for by statute (35
U.S.C. 122(b)(2)(B)(v)). If a redacted copy of an application is
submitted in compliance with Sec. 1.217 but later than four months prior
to the projected publication date, the Office will be required to
reprocess the patent application publication (for which assembly will
have already started) using the redacted copy of the application
provided by applicant.
Section 1.217(b) as proposed provides that the redacted copy of the
application must be submitted in compliance with the Office EFS
requirements. Section 1.217(b) as proposed also provides that the title
of the invention in the redacted copy of the application must correspond
to the title of the application at the time the redacted copy of the
application is submitted to the Office. The Office uses the title of the
invention (among other information) as provided in an EFS copy of an
application to confirm the identity of the application for which the EFS
copy is submitted. Thus, if a portion of the title has been redacted
such that the title (as redacted) in the EFS copy of the application is
different from the title of the invention for the application as shown
in PALM, it will appear that the redacted EFS copy of the application
incorrectly identifies the application for which the redacted EFS copy
is submitted. If an applicant wants to redact a portion of the title,
the applicant must first submit an amendment to the title of the
invention such that it will correspond to the title as redacted. Section
1.217(b) as proposed also provides that if the redacted copy of the
application does not comply with the Office EFS requirements, the Office
will publish the application based upon the unredacted records in the
Office's PACR database.
Section 1.217(c) as proposed provides that the applicant must also
concurrently submit in paper (Sec. 1.52(a)) to be filed in the
application: (1) A certified copy of each foreign-filed application that
corresponds to the application for which a redacted copy is submitted;
(2) a translation of each such foreign-filed application that is in a
language other than English, and a statement that the translation is
accurate; (3) a marked-up copy of the application showing the redactions
in brackets; and (4) a certification that the redacted copy of the
application eliminates only a part or description of the invention that
is not contained in any application filed in a foreign country, directly
or through a multilateral international agreement, that corresponds to
the application filed in the Office. The provisions of Sec. 1.217(c) are
designed to ensure that any patent application publication based upon a
redacted copy of an application contains the parts and description of
the invention contained in any of the corresponding applications filed
in a foreign country.
Section 1.217(d) as proposed provides a mechanism for obtaining an
appropriately redacted copy of the application contents to provide to
members of the public requesting a copy of the file wrapper and contents
of the application. Section 1.217(d) as proposed provides that the
Office will provide a complete unredacted copy of the file wrapper and
contents of an application for which a redacted copy was submitted under
Sec. 1.217 (upon payment of a fee) unless the applicant complies with
the requirements of Sec. 1.217(d). Since the processing required to
provide redacted copies of the application content is the result of an
applicant choosing to submit a redacted copy under Sec. 1.217, it is
appropriate to require the applicant to timely provide appropriate
redacted copies of Office correspondence and applicant submissions, and
to pay a processing fee for the special handling required for these
papers, should the applicant wish to maintain the redacted portions of
the application in confidence prior to the grant of a patent.
Section 1.217(d)(1) as proposed provides that the applicant must
accompany the submission required by Sec. 1.217(c) with: (1) a copy of
any Office correspondence previously received by applicant including any
desired redactions, and a second copy of all Office correspondence
previously received by applicant showing the redacted material in
brackets; and (2) a copy of each submission previously filed by the
applicant including any desired redactions, and a second copy of each
submission previously filed by the applicant showing the redacted
material in brackets. Section 1.217(d)(2) as proposed provides that the
applicant must also: (1) Within one month of the date of mailing of any
correspondence from the Office, file a copy of such Office
correspondence including any desired redactions, and a second copy of
such Office correspondence showing the redacted material in brackets;
and (2) with each submission by the applicant, include a copy of such
submission including any desired redactions, and a second copy of such
submission showing the redacted material in brackets. Section
1.217(d)(3) as proposed provides that each submission under Sec.
1.217(d)(1) or Sec. 1.217(d)(2) must also be accompanied by the
processing fee set forth in Sec. 1.17(i) and a certification that the
redactions included therein are limited to the elimination of material
that is relevant only to the part or description of the invention that
is not contained in the redacted copy of the application submitted for
publication. If the applicant fails to comply with these requirements,
the Office will provide a complete unredacted copy of the file wrapper
and contents of the application to any member of the public (upon
payment of a fee).
Section 1.217(e) provides that the certificate of mailing or
transmission procedure set forth in provisions of Sec. 1.8 do not apply
to the time periods set forth in Sec. 1.217.
Section 1.219: Section 1.219 implements the provisions of 35 U.S.C.
122(b)(1) that authorize (but do not require) the Office to publish
earlier than at the eighteen-month period set forth in 35 U.S.C.
122(b)(1) at the request of the applicant. Section 1.219 as proposed
provides that any request for early publication must be accompanied by
the publication fee set forth in Sec. 1.18(d). Section 1.219 as proposed
provides that if the applicant does not submit a copy of the application
in compliance with the Office EFS requirements, the Office will publish
the application based upon the application records in the Office's PACR
database (as provided in Sec. 1.215(a)). Section 1.219 as proposed also
provides that no consideration will be given to requests for publication
on a certain date (which includes a request that certain applications be
published on the same date), and such requests will be treated as a
request for publication as soon as possible.
Section 1.221: Section 1.221 provides for voluntary publication of
applications filed before, but pending on, November 29, 2000, and for
requests for republication of applications previously published under
Sec. 1.211. Applicants may request republication of an application under
Sec. 1.221 to obtain a patent application publication that: (1) corrects
immaterial errors or errors not the result of Office mistake; or (2)
reflects the application as amended during prosecution of the
application.
Section 1.221(a) as proposed provides that a request for voluntary
publication or republication must include a copy of the application in
compliance with the Office EFS requirements and be accompanied by the
publication fee set forth in Sec. 1.18(d) and the processing fee set
forth in Sec. 1.17(i). Since voluntary publication or republication of
applications is not mandated by 35 U.S.C. 122(b)(1), if a request for
voluntary publication or republication does not comply with the
requirements of Sec. 1.221, or the copy of the application does not
comply with the Office EFS requirements, the Office will not publish the
application based upon the application records in the Office's PACR
database (as provided in Sec. 1.215(a)) but will simply not publish the
application and will refund the publication fee (but not the processing
fee).
Section 1.221(b) as proposed provides that the Office will grant a
request for a corrected or revised patent application publication other
than as provided in Sec. 1.221(a) only when the Office makes a material
mistake which is apparent from Office records. The phrase ``material
mistake'' means a mistake that affects the public's ability to
appreciate the technical disclosure of the patent application
publication or determine the scope of the provisional rights that an
applicant may seek to enforce upon issuance of a patent (e.g., error in
the claims, serious error in a portion of the written description or
drawings that is necessary to support the claims). The Office will
permit applicants to review the bibliographic information contained in
the Office's PALM database via its PAIR system. Therefore, applicants
are expected to review that information and bring errors to the Office's
attention at least fourteen weeks before the projected date of
publication. Section 1.221(b) as proposed also provides that any request
for a corrected or revised patent application publication other than as
provided in Sec. 1.221(a) must be filed within two months from the date
of the patent application publication, and that this period is not
extendable.
Section 1.291: Section 1.291(a)(1) implements the provisions of 35
U.S.C. 122(c), which specify that the Office shall establish appropriate
procedures to ensure that no protest or other form of pre- issuance
opposition to the grant of a patent may be initiated after publication
of the application without the applicant's express written consent.
Section 1.291 is proposed to be amended to provide that a protest must
be submitted prior to the date the application was published or the
mailing of a notice of allowance under Sec. 1.311, whichever occurs
first.
Section 1.292: Section 1.292(b)(3) is proposed to be amended to
require that any petition to institute a public use proceeding be
submitted prior to the date the application was published or mailing of
a notice of allowance under Sec. 1.311, whichever occurs first. Section
1.311: Section 1.311(a) is proposed to be amended to provide that the
sum specified in the notice of allowance may (in addition to the issue
fee) also include the publication fee, in which case the issue fee and
publication fee (Sec. 1.211(f)) must both be paid within three months
from the date of mailing of the notice of allowance to avoid abandonment
of the application. Section 1.311(a) is also amended to provide that
this three-month period is not extendable. Section 1.311(b) is proposed
to be amended to provide that an authorization to charge any of the
post-allowance fees set forth in Sec. 1.18 to a deposit account may be
filed in an individual application only after mailing of the notice of
allowance.
Section 1.311(b) as proposed also reflects changes proposed in the
Patent Business Goals Notice of Proposed Rulemaking.
Section 1.417: Section 1.417 is proposed to be added to provide for
the submission of international publications or English language
translations of international applications pursuant to 35 U.S.C.
154(d)(4). This section as proposed sets forth the requirements for the
filing of an English language international publication or translation
of an international application in order to ensure proper handling by
the Office. Section 1.417 as proposed provides that such a submission
must clearly identify the international application to which it pertains
under Sec. 1.5(a), and unless it is being submitted pursuant to Sec.
1.494 or Sec. 1.495, must be clearly identified as a submission pursuant
to 35 U.S.C. 154(d)(4). Failure to properly identify such submissions
will result in the English language international publication or
translation of the description and claims of the international
application being processed as the filing of a national application
under 35 U.S.C. 111(a). Additionally, failure to properly identify the
international publication or translation as a submission under 35 U.S.C.
154(d)(4) may cause the Office to be unable to properly track or
retrieve the international publication or translation in relation to its
international application number. Section 1.417 as proposed also
provides that such submissions should be marked ``Box PCT.''
The submission of an international publication or translation of an
international application for the purposes of national stage entry in
accordance with Sec. 1.494 or Sec. 1.495 may also be relied upon as the
submission for the purposes of 35 U.S.C. 154(d)(4). Likewise, an earlier
filed international publication or translation (submitted for the
purposes of 35 U.S.C. 154(d)(4) and properly identified as such) may
also be relied upon for the purpose of satisfying the requirement of 35
U.S.C. 371(c)(2). If applicant intends to rely on such an earlier filed
international publication or translation, the submission of documents
under Sec. 1.494(f) and Sec. 1.495(g) should include an indication that
the international publication or translation has been previously
submitted for the purposes of 35 U.S.C. 154(d)(4) to avoid the mailing
of either a Notice of Abandonment (PCT/DO/EO/909) indicating that a copy
of the international application was not timely filed, or a Notice of
Missing Requirements (PCT/DO/EO/905) indicating that a translation of
the international application is required. While (as discussed above)
applicants may rely on an earlier filed international publication or
translation for the purposes of national stage entry and processing, the
Office strongly recommends that a second copy of the international
publication or translation be included with the initial national stage
papers in order to ensure the integrity of the first submitted
international publication or translation. Otherwise, processing of the
national stage application may result in the alteration of the
originally filed international publication or translation through, e.g.,
the entry of amendments.
Section 1.494: Section 1.494(f) is amended to exempt a copy of the
international publication or translation of the international
application identified as provided in Sec. 1.417 from the documents that
must be clearly identified as a submission to enter the national stage
under 35 U.S.C. 371 to avoid being considered a submission under 35
U.S.C. 111(a).
Section 1.495: Section 1.495(g) is amended to exempt a copy of the
international publication or translation of the international
application identified as provided in Sec. 1.417 from the documents that
must be clearly identified as a submission to enter the national stage
under 35 U.S.C. 371 to avoid being considered a submission under 35
U.S.C. 111(a).
Part 5
Section 5.1: Section 5.1 is proposed to be amended to implement the
provisions of 35 U.S.C. 122(d), which specify that the application will
not be published under 35 U.S.C. 122(b)(1) if publication or disclosure
of the application would be detrimental to national security. Section
5.1 as proposed provides that an application under national security
review will not be published at least until six months from its filing
date or three months from the date the application was referred to a
defense agency, whichever is later. These are the current national
security review screening time frames for foreign filing license
purposes. Section 5.1 as proposed also provides that a national security
classified patent application will not be published under Sec. 1.211 of
this chapter or allowed under Sec. 1.311 of this chapter until the
application is declassified and any secrecy order under Sec. 5.2(a) has
been rescinded.
Section 5.1 as proposed also reflects changes proposed in the Patent
Business Goals Notice of Proposed Rulemaking.
Classification
Regulatory Flexibility Act
The Chief Counsel for Regulation of the Department of Commerce certified
to the Chief Counsel for Advocacy, Small Business Administration, that
the changes proposed in this notice, if adopted, would not have a
significant impact on a substantial number of small entities (Regulatory
Flexibility Act, 5 U.S.C. 605(b)). This rulemaking implements the
eighteen-month publication provisions of Secs. 4501 through 4508 of the
``American Inventors Protection Act of 1999.'' The changes proposed in
this notice (if adopted) would provide procedures for the eighteen-month
publication of patent applications.
An applicant may file a nonpublication request (opt-out of
eighteen-month publication) if the invention disclosed in the
application has not and will not be the subject of an application filed
in another country, or under a multilateral international agreement,
that requires eighteen-month publication. Since almost all small
entities file patent applications only in the United States, almost all
small entities can choose whether they want their applications to be
subject to eighteen-month publication. The Office receives roughly
60,000 applications each year from small entities. Based upon input from
small entity groups during the legislative process, the Office expects
that small entities will file a nonpublication request for roughly
30,000 applications (fifty percent) with the remaining 30,000
applications being subject to eighteen-month publication. Since the
current application allowance rate is roughly sixty-seven percent,
roughly 20,000 applications subject to eighteen-month publication will
be allowed, at which time a publication fee ($300.00) will be due. Since
the publication fee is less than one-third of the combined cost of the
application filing fee ($345.00) and patent issue fee ($605.00), there
will not be a significant economic impact on a substantial number of
small entities due to eighteen-month publication.
Executive Order 13132
This rulemaking does not contain policies with federalism implications
sufficient to warrant preparation of a Federalism Assessment under
Executive Order 13132 (August 4, 1999).
Executive Order 12866
This rulemaking has been determined to be not significant for purposes
of Executive Order 12866 (September 30, 1993).
Paperwork Reduction Act
This notice of proposed rulemaking involves information collection
requirements which are subject to review by thešxn Office of Management
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C.
3501 et seq.). The collections of information involved in this notice of
proposed rulemaking have been reviewed and previously approved by OMB
under OMB control numbers: 0651-0021, 0651-0027, 0651-0031, 0651- 0032,
0651-0033, and 0651-0034.
As required by the Paperwork Reduction Act of 1995 (44 U.S.C.
3507(d)), the Patent and Trademark Office has submitted an information
collection package to OMB for its review and approval of the proposed
information collections under OMB control number 0651-0031 and 0651-
0032. The Patent and Trademark Office is submitting these information
collections to OMB for its review and approval because this notice of
proposed rulemaking will add the nonpublication request, rescission of
the nonpublication request, electronic filing system copy of the
application (for publication purposes), copy of the application file
content showing redactions, and petition to accept a delayed priority
claim to these collections.
As discussed above, this notice of proposed rulemaking also involves
currently approved information collections under OMB control numbers:
0651-0021, 0651-0027, 0651-0033, and 0651-0034. The Patent and Trademark
Office is not resubmitting those information collection packages to OMB
for its review and approval because the changes in this notice of
proposed rulemaking do not affect the information collection
requirements associated with the information collections under those OMB
control numbers.
The title, description and respondent description of each of the
information collections are shown below with an estimate of each of the
annual reporting burdens. Included in each estimate is the time for
reviewing instructions, gathering and maintaining the data needed, and
completing and reviewing the collection of information.
OMB Number: 0651-0021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101,ANNEX/134/144, PTO-1382, PCT/IPEA/401,
PCT/IB/328.
Type of Review: Approved through May of 2000.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Federal Agencies or Employees, Not-for-Profit
Institutions, Small Businesses or Organizations.
Estimated Number of Respondents: 102,950.
Estimated Time Per Response: 0.9538 hour.
Estimated Total Annual Burden Hours: 98,195 hours.
Needs and Uses: The information collected is required by the Patent
Cooperation Treaty (PCT). The general purpose of the PCT is to simplify
the filing of patent applications on the same invention in different
countries. It provides for a centralized filing procedure and a
standardized application format.
OMB Number: 0651-0027.
Title: Changes in Patent and Trademark Assignment Practices.
Form Numbers: PTO-1618 and PTO-1619, PTO/SB/15/41.
Type of Review: Approved through May of 2002.
Affected Public: Individuals or Households and Businesses or Other
For-Profit Institutions.
Estimated Number of Respondents: 209,040.
Estimated Time Per Response: 0.5 hour.
Estimated Total Annual Burden Hours: 104,520 hours.
Needs and Uses: The Office records about 209,040 assignments or
documents related to ownership of patent and trademark cases each year.
The Office requires a cover sheet to expedite the processing of these
documents and to ensure that they are properly recorded.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08/21-27/31/42/43/61/62/63/64/67/68/91/92/96/
97.
Type of Review: Approved through October of 2002.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 2,040,630.
Estimated Time Per Response: 0.39 hours.
Estimated Total Annual Burden Hours: 788,421 hours.
Needs and Uses: During the processing of an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the Office concerning the examination of a
specific application. The specific information required or which may be
submitted includes: Information Disclosure Statements; Terminal
Disclaimers; Petitions to Revive; Express Abandonments; Appeal Notices;
Petitions for Access; Powers to Inspect; Certificates of Mailing or
Transmission; Statements under Sec. 3.73(b); Amendments, Petitions and
their Transmittal Letters; and Deposit Account Order Forms.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07/13PCT/17-19/29/101-110.
Type of Review: Approved through October of 2002.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 344,100.
Estimated Time Per Response: 8.7 hours.
Estimated Total Annual Burden Hours: 2,994,160 hours.
Needs and Uses: The purpose of this information collection is to
permit the Office to determine whether an application meets the criteria
set forth in the patent statute and regulations. The standard Fee
Transmittal form, New Utility Patent Application Transmittal form, New
Design Patent Application Transmittal form, New Plant Patent Application
Transmittal form, Declaration, and Plant Patent Application Declaration
will assist applicants in complying with the requirements of the patent
statute and regulations, and will further assist the Office in
processing and examination of the application.
OMB Number: 0651-0033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
Type of Review: Approved through September of 2000.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 135,250.
Estimated Time Per Response: 0.325 hour.
Estimated Total Annual Burden Hours: 43,893 hours.
Needs and Uses: This collection of information is required to
administer the patent laws pursuant to title 35, U.S.C., concerning the
issuance of patents and related actions including correcting errors in
printed patents, refiling of patent applications, requesting
reexamination of a patent, and requesting a reissue patent to correct an
error in a patent. The affected public includes any individual or
institution whose application for a patent has been allowed or who takes
action as covered by the applicable rules.
OMB Number: 0651-0034.
Title: Secrecy/License to Export.
Form Numbers: None.
Type of Review: Approved through January of 2001. Affected Public:
Individuals or Households, Business or Other For- Profit Institutions,
Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 2,187.
Estimated Time Per Response: 0.67 hour.
Estimated Total Annual Burden Hours: 1,476 hours.
Needs and Uses: In the interest of national security, patent laws
and regulations place certain limitations on the disclosure of
information contained in patents and patent applications and on the
filing of applications for patent in foreign countries.
The principal impact of the changes in this notice of proposed
rulemaking is to implement the changes to Office practice necessitated
by Secs. 4501 through 4508 of the ``American Inventors Protection Act of
1999'' (enacted into law by Sec. 1000(a)(9), Division B, of Public Law
106-113).
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to enhance
the quality, utility, and clarity of the information to be collected;
and (4) ways to minimize the burden of the collection of information to
respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this burden,
to Robert J. Spar, Director, Special Program Law Office, Patent and
Trademark Office, Washington, D.C. 20231, or to the Office of
Information and Regulatory Affairs of OMB, New Executive Office
Building, 725 17th Street, N.W., Room 10235, Washington, D.C. 20503,
Attention: Desk Officer for the Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of Information,
Inventions and patents, Reporting and recordkeeping requirements, Small
businesses.
37 CFR Part 5
Classified information, foreign relations, inventions and patents. For
the reasons set forth in the preamble, 37 CFR Parts 1 and 5 are proposed
to be amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 is revised to read as
follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
2. Section 1.9 is amended by revising paragraph (c) to read as follows:
Sec. 1.9 Definitions.
* * * * *
(c) A published application as used in this chapter means an
application for patent which has been published under 35 U.S.C. 122(b).
* * * * *
3. Section 1.11 is amended by revising paragraph (a) to read as
follows:
Sec. 1.11 Files open to the public.
(a) The specification, drawings, and all papers relating to the file of
an abandoned published application, except if a redacted copy of the
application was used for the patent application publication, a patent,
or a statutory invention registration are open to inspection by the
public, and copies may be obtained upon the payment of the fee set forth
in Sec. 1.19(b)(2). See Sec. 2.27 for trademark files.
* * * * *
4. Section 1.12 is amended by revising paragraphs (a)(1) and (b) to
read as follows:
Sec. 1.12 Assignment records open to public inspection.
(a)(1) Separate assignment records are maintained in the Patent and
Trademark Office for patents and trademarks. The assignment records,
relating to original or reissue patents, including digests and indexes,
for assignments recorded on or after May 1, 1957, published patent
applications, and assignment records relating to pending or abandoned
trademark applications and to trademark registrations, for assignments
recorded on or after January 1, 1955, are open to public inspection at
the Patent and Trademark Office, and copies of those assignment records
may be obtained upon request and payment of the fee set forth in Sec.
1.19 and Sec. 2.6 of this chapter.
* * * * *
(b) Assignment records, digests, and indexes relating to any pending
or abandoned patent application which has not been published under 35
U.S.C. 122(b) are not available to the public. Copies of any such
assignment records and information with respect thereto shall be
obtainable only upon written authority of the applicant or applicant's
assignee or attorney or agent or upon a showing that the person seeking
such information is a bona fide prospective or actual purchaser,
mortgagee, or licensee of such application, unless it shall be necessary
to the šbnproper conduct of business before the Office or as provided by
these rules.
* * * * *
5. Section 1.13 is revised to read as follows:
Sec. 1.13 Copies and certified copies.
(a) Non-certified copies of patents, patent application publications,
and trademark registrations and of any records, books, papers, or
drawings within the jurisdiction of the United States Patent and
Trademark Office and open to the public, will be furnished by the United
States Patent and Trademark Office to any person, and copies of other
records or papers will be furnished to persons entitled thereto, upon
payment of the fee therefor.
(b) Certified copies of patents, patent application publications, and
trademark registrations and of any records, books, papers, or drawings
within the jurisdiction of the United States Patent and Trademark Office
and open to the public or persons entitled thereto will be authenticated
by the seal of the United States Patent and Trademark Office and
certified by the Director, or in his or her name attested by an officer
of the United States Patent and Trademark Office authorized by the
Director, upon payment of the fee for the certified copy.
6. Section 1.14 is amended by revising paragraphs (a), (b), (c) and (e),
and adding paragraphs (h), (i) and (j) to read as follows:
Sec. 1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application information. Patent
applications that have not been published under 35 U.S.C. 122(b) are
generally preserved in confidence pursuant to 35 U.S.C. 122(a).
Information concerning the filing, pendency, or subject matter of an
application for patent, including status information, and access to the
application, will only be given to the public as set forth in Sec. 1.11
or in this section.
(1) Status information is:
(i) Whether the application is pending, abandoned, or patented; (ii)
Whether the application has been published under 35 U.S.C. 122(b); and
(iii) The application ``numerical identifier'' which may be:
(A) The eight digit application number (the two digit series code
plus the six digit serial number); or
(B) The six digit serial number plus any one of the filing date of
the national application, the international filing date, or date of
entry into the national stage.
(2) Access is defined as providing the application file for review
and copying of any material.
(b) When status information may be supplied. Status information of
an application may be supplied by the Office to the public if any of the
following apply:
(1) Access to the application is available pursuant to paragraph (e)
of this section;
(2) The application is referred to by its numerical identifier in a
published patent document (e.g., a U.S. patent, a U.S. patent
application publication, or an international application publication),
or in a U.S. application open to public inspection (Sec. 1.11(b), or
paragraph (e)(2)(i) or (e)(2)(ii) of this section); or
(3) The application is a published international application in
which the United States of America has been indicated as a designated
state.
(4) The application claims the benefit of the filing date of an
application for which status information may be provided pursuant to
paragraphs (b)(1) through (b)(3) of this section.
(c) When copies may be supplied. A copy of an application-as-filed
or a file wrapper and contents may, subject to paragraph (j) of this
section (addresses international applications), be supplied by the
Office to the public if any of the following apply:
(1) Application-as-filed. If a U.S. patent application publication
or patent incorporates by reference, or includes a specific reference
under 35 U.S.C. 119(e) or 120 to, a pending or abandoned application, a
copy of that application-as-filed may be provided to any person upon
written request, including the fee set forth in Sec. 1.19(b)(1).
(2) File wrapper and contents. A copy of the specification,
drawings, and all papers relating to the file of an abandoned or pending
published application may be provided to any person upon written
request, including the fee set forth in Sec. 1.19(b)(2). If a redacted
copy of the application was used for the patent application publication,
the copy of the specification, drawings, and papers may be limited to a
redacted copy.
* * * * *
(e) Public access to a pending or abandoned application may be
provided. Access to an application may, subject to paragraph (j) of this
section, be provided to any person if a written request for access is
submitted, the application file is available, and any of the following
apply:
(1) The application is open to public inspection pursuant to Sec.
1.11(b); or
(2) The application is abandoned, it is not within the file jacket
of a pending application under Sec. 1.53(d), and it is referred to:
(i) In a U.S. patent application publication or patent; or
(ii) In another U.S. application which is open to public inspection
either pursuant to Sec. 1.11(b) or paragraph (e)(2)(i) of this section.
* * * * *
(h) [Reserved]
(i) International applications. (1) Copies of international
application files for international applications filed on or after
November 29, 2000, and which designate the U.S. and which have been
published in accordance with PCT Article 21(2), or copies of a document
in such application files, will be furnished in accordance with Patent
Cooperation Treaty (PCT) Articles 30 and 38 and PCT Rules 94.2 and 94.3,
upon written request including a showing that the publication of the
application has occurred and that the U.S. was designated, and upon
payment of the appropriate fee (Sec. 1.19(b)(2) or Sec. 1.19(b)(3)), if:
(i) With respect to the Home Copy, the international application was
filed with the U.S. Receiving Office;
(ii) With respect to the Search Copy, the U.S. acted as the
International Searching Authority; or
(iii) With respect to the Examination Copy, the United States acted
as the International Preliminary Examining Authority, an International
Preliminary Examination Report has issued, and the United States was
elected.
(2) A copy of an English language translation of an international
application, which has been filed in the Patent and Trademark Office
pursuant to 35 U.S.C. 154(2)(d)(4) will be furnished upon written
request including a showing that the publication of the application in
accordance with PCT Article 21(2) has occurred and that the U.S. was
designated, and upon payment of the appropriate fee (Sec. 1.19(b)(2) or
Sec. 1.19(b)(3)).
(3) Access to international application files for international
applications filed on or after November 29, 2000, and which designate
the U.S. and which have been published in accordance with PCT Article
21(2), or copies of a document in such application files, will be
furnished in accordance with Patent Cooperation Treaty (PCT) Articles 30
and 38 and PCT Rules 94.2 and 94.3, upon written request including a
showing that the publication of the application has occurred and that
the U.S. was designated.
(4) In accordance with PCT Article 30, copies of an international
application-as-filed under paragraph (c)(1) of this section will not be
provided prior to the international publication of the application
pursuant to PCT Article 21(2).
(5) Access to international application files under paragraphs (e)
and (i)(3) of this section will not be permitted with respect to the
Examination Copy in accordance with PCT Article 38.
(j) Access or copies in other circumstances. The Office, either sua
sponte or on petition, may also provide access or copies of all or part
of an application if necessary to carry out an Act of Congress or if
warranted by other special circumstances. Any petition by a member of
the public seeking access to, or copies of, all or part of any pending
or abandoned application preserved in confidence pursuant to paragraph
(a) of this section, or any related papers, must include:
(1) The fee set forth in Sec. 1.17(h); and
(2) A showing that access to the application is necessary to carry
out an Act of Congress or that special circumstances exist which warrant
petitioner being granted access to all or part of the application.
7. Section 1.17 is amended by revising its heading and paragraphs
(h), (i), (l), (m) and (p) and adding paragraph (u) to read as follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(h) For filing a petition under one of the following sections which
refers to this paragraph: 130.00
Sec. 1.12--for access to an assignment record.
Sec. 1.14--for access to an application.
Sec. 1.47--for filing by other than all the inventors or a person not
the inventor.
Sec. 1.53(e)--to accord a filing date.
Sec. 1.59--for expungement and return of information.
Sec. 1.84--for accepting color drawings or photographs.
Sec. 1.91--for entry of a model or exhibit.
Sec. 1.102--to make an application special.
Sec. 1.103(a)--to suspend action in application.
Sec. 1.138(c)--to expressly abandon an application to avoid publication.
Sec. 1.182--for decision on a question not specifically provided for.
Sec. 1.183--to suspend the rules.
Sec. 1.295--for review of refusal to publish a statutory invention
registration.
Sec. 1.313--to withdraw an application from issue.
Sec. 1.314--to defer issuance of a patent.
Sec. 1.377--for review of decision refusing to accept and record payment
of a maintenance fee filed prior to expiration of a patent.
Sec. 1.378(e)--for reconsideration of decision on petition refusing to
accept delayed payment of maintenance fee in an expired patent.
Sec. 1.644(e)--for petition in an interference.
Sec. 1.644(f)--for request for reconsideration of a decision on petition
in an interference.
Sec. 1.666(b)--for access to an interference settlement agreement.
Sec. 1.666(c)--for late filing of interference settlement agreement.
Sec. 1.741(b)--to accord a filing date to an application for extension
of a patent term.
Sec. 5.12--for expedited handling of a foreign filing license.
Sec. 5.15--for changing the scope of a license.
Sec. 5.25--for retroactive license.
(i) Processing fee for taking action under one of the following sections
which refers to this paragraph: 130.00
Sec. 1.28(c)(3)--for processing a non-itemized fee deficiency based on
an error in small entity status.
Sec. 1.41--for supplying the name or names of the inventor or inventors
after the filing date without an oath or declaration as prescribed by
Sec. 1.63, except in provisional applications.
Sec. 1.48--for correcting inventorship, except in provisional
applications.
Sec. 1.52(d)--for processing a nonprovisional application filed with a
specification in a language other than English.
Sec. 1.55--for entry of late priority papers.
Sec. 1.99(e)--for processing a belated submission under Sec. 1.99.
Sec. 1.103(b)--for requesting limited suspension of action in
continued prosecution application.
Sec. 1.217--for processing a redacted copy of a paper submitted in the
file of an application in which a redacted copy was submitted for the
patent application publication.
Sec. 1.221--for requesting voluntary publication or republication of an
application.
Sec. 1.497(d)--for filing an oath or declaration pursuant to 35 U.S.C.
371(c)(4) naming an inventive entity different from the inventive entity
set forth in the international stage.
* * * * *
(l) For filing a petition for the revival of an unavoidably
abandoned application under 35 U.S.C. 111, 133, 364, or 371, for delayed
payment of the issue fee under 35 U.S.C. 151, or for the revival of an
unavoidably terminated reexamination proceeding under 35 U.S.C. 133
(Sec. 1.137(a)):
By a small entity (Sec. 1.9(f)): 55.00
By other than a small entity: 110.00
(m) For filing a petition for revival of an unintentionally abandoned
application, for the unintentionally delayed payment of the fee for
issuing a patent, or for the revival of an unintentionally terminated
reexamination proceeding under 35 U.S.C. 41(a)(7) (Sec. 1.137(b)):
By a small entity (Sec. 1.9(f)): 605.00
By other than a small entity: 1,210.00
* * * * *
(p) For an information disclosure statement under Sec. 1.97(c) or
(d) or a submission under Sec. 1.99: 240.00
* * * * *
(u) For the acceptance of an unintentionally delayed claim for
priority under 35 U.S.C. 119, 120, 121, or 365 (Secs. 1.55 and 1.78):
1,210.00
8. Section 1.18 is amended by revising its heading and adding paragraph
(d) to read as follows:
Sec. 1.18 Patent post-allowance (including issue) fees.
* * * * *
(d) Publication fee: 300.00
Sec. 1.24 [Removed and Reserved]
9. Section 1.24 is removed and reserved.
10. Section 1.52 is amended by revising paragraph (d) to read as
follows:
Sec. 1.52 Language, paper, writing, margins.
* * * * *
(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 Sec.
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. See Sec. 1.78(a) for the requirements for
claiming the benefit of such provisional application in a nonprovisional
application.
11. Section 1.55 is amended by revising paragraph (a) and adding
paragraph (c) to read as follows:
Sec. 1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the benefit
of the filing date of one or more prior foreign applications under the
conditions specified in 35 U.S.C. 119(a) through (d), 172, and 365(a)
and (b).
(1)(i) In an original application filed under 35 U.S.C. 111(a), the
claim for priority must be presented during the pendency of the
application, and within the later of four months from the actual filing
date of the application or sixteen months from the filing date of the
prior foreign application. This time period is not extendable. The claim
must identify the foreign application for which priority is claimed, as
well as any foreign application for the same subject matter and having a
filing date before that of the application for which priority is
claimed, by specifying the application number, country (or intellectual
property authority), day, month, and year of its filing. The time period
in this paragraph does not apply to an application for a design patent.
(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 during the pendency of the application and
within the time limit set forth in the PCT and the Regulations under the
PCT.
(2) The claim for priority and the certified copy of the foreign
application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any
event, be filed before the patent is granted. If the claim for priority
or the certified copy of the foreign application is filed after the date
the issue fee is paid, it must be accompanied by the processing fee set
forth in Sec. 1.17(i), but the patent will not include the priority
claim unless corrected by a certificate of correction under 35 U.S.C.
255 and Sec. 1.323 of this part.
(3) When the application becomes involved in an interference (Sec.
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 paragraphs (a)(1)
or (a)(2) of this section.
(4) An English-language translation of a non-English-language
foreign application is not required except when the application is
involved in an interference (Sec. 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.
* * * * *
(c) Unless such claim is accepted in accordance with the provisions
of this paragraph, any claim for priority under 35 U.S.C. 119(a)-(d), or
365(a) or (b) not presented within the time period provided by paragraph
(a) of this section is considered to have been waived. If a claim for
priority under 35 U.S.C. 119(a)-(d) or 365(a) or (b) is presented after
the time period provided by paragraph (a) of this section, the claim may
be accepted if the claim identifying the prior foreign application by
specifying its application number, country, and the day, month and year
of its filing was unintentionally delayed. A petition to accept a
delayed claim for priority under 35 U.S.C. 119(a)- (d) or 365(a) or (b)
must be accompanied by:
(1) The surcharge set forth in Sec. 1.17(u); and
(2) A statement that the entire delay between the date the claim was
due under paragraph (a)(1) of this section and the date the claim was
filed was unintentional. The Director may require additional information
where there is a question whether the delay was unintentional.
12. Section 1.72 is amended by revising paragraph (a) to read as
follows:
Sec. 1.72 Title and abstract.
(a) The title of the invention may include only characters capable of
being created by a keyboard and may not exceed 500 characters in length.
The title should be as short and specific as possible. Unless the title
is supplied in an application data sheet (Sec. 1.76), the title of the
invention should appear as a heading on the first page of the
specification.
* * * * *
13. Section 1.78 is amended by revising paragraphs (a)(2), (a)(3),
and (a)(4), and adding new paragraphs (a)(5) and (a)(6) to read as
follows:
Sec. 1.78 Claiming benefit of earlier filing date and cross references
to other applications.
(a)(1) * * *
(2) Except for a continued prosecution application filed under Sec.
1.53(d), any nonprovisional application claiming the benefit of one or
more prior filed copending nonprovisional applications or international
applications designating the United States of America must contain 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. This reference must be
submitted during the pendency of the application, and within the later
of four months from the actual filing date of the application or sixteen
months from the filing date of the prior application. This time period
is not extendable. Unless the reference required by this paragraph is
included in an application data sheet (Sec. 1.76), the specification
must contain or be amended to contain such reference in the first
sentence following the title. If the application claims the benefit of
an international application, the first sentence of the specification
must include an indication of whether the international application was
published under PCT Article 21(2) in English (regardless of whether
benefit for such application is claimed in the application data sheet).
The request for a continued prosecution application under Sec. 1.53(d)
is the specific reference required by 35 U.S.C. 120 to the prior
application. The identification of an application by application number
under this section is the specific reference required by 35 U.S.C. 120
to every application assigned that application number. Cross references
to other related applications may be made when appropriate (see Sec.
1.14). Except as provided in paragraph (a)(3) of this section, the
failure to timely submit the reference required by 35 U.S.C. 120 and
this paragraph is considered a waiver of any benefit under 35 U.S.C.
120, 121, or 365(c) to such prior application. The time period set forth
in this paragraph does not apply to an application for a design patent.
(3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2)
of this section is presented in a nonprovisional application after the
time period provided by paragraph (a)(2) of this section, the claim
under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior filed
copending nonprovisional application or international application
designating the United States of America may be accepted if the
reference identifying the prior application by application number or
international application number and international filing date was
unintentionally delayed. A petition to accept an unintentionally delayed
claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior
filed application must be accompanied by:
(i) The surcharge set forth in Sec. 1.17(u); and
(ii) A statement that the entire delay between the date the claim
was due under paragraph (a)(2) of this section and the date the claim
was filed was unintentional. The Director may require additional
information where there is a question whether the delay was
unintentional.
(4) A nonprovisional application other than for a design patent may
claim an invention disclosed in one or more prior filed provisional
applications. In order for a nonprovisional application to claim the
benefit of one or more prior filed provisional applications, each prior
provisional application must name as an inventor at least one inventor
named in the later filed nonprovisional application and disclose the
named inventor's invention claimed in at least one claim of the later
filed nonprovisional application in the manner provided by the first
paragraph of 35 U.S.C. 112. In addition, each prior provisional
application must be entitled to a filing date as set forth in Sec.
1.53(c), and the basic filing fee set forth in Sec. 1.16(k) must be paid
within the time period set forth in Sec. 1.53(g).
(5) 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), and, if the
provisional application is filed in a language other than English, an
English language translation of the non-English language provisional
application and a statement that the translation is accurate. This
reference and English language translation of a non-English language
provisional application must be submitted during the pendency of the
nonprovisional application, and within the later of four months from the
actual filing date of the nonprovisional application or sixteen months
from the filing date of the prior provisional application. This time
period is not extendable. Unless the reference required by this
paragraph is included in an application data sheet (Sec. 1.76), the
specification must contain or be amended to contain such reference in
the first sentence following the title. Except as provided in paragraph
(a)(6) of this section, the failure to timely submit the reference and
English language translation of a non-English language provisional
application required by 35 U.S.C. 119(e) and this paragraph is
considered a waiver of any benefit under 35 U.S.C. 119(e) to such prior
provisional application.
(6) If the reference or English language translation of a non-
English language provisional application required by 35 U.S.C. 119(e)
and paragraph (a)(5) of this section is presented in a nonprovisional
application after the time period provided by paragraph (a)(5) of this
section, the claim under 35 U.S.C. 119(e) for the benefit of a prior
filed provisional application may be accepted during the pendency of the
nonprovisional application if the claim identifying the prior
application by provisional application number and any English language
translation of a non-English language provisional application were
unintentionally delayed. A petition to accept an unintentionally delayed
claim under 35 U.S.C. 119(e) for the benefit of a prior filed
provisional application must be accompanied by:
(i) The surcharge set forth in Sec. 1.17(u); and
(ii) A statement that the entire delay between the date the claim
was due under paragraph (a)(5) of this section and the date the claim
was filed was unintentional. The Director may require additional
information where there is a question whether the delay was
unintentional.
* * * * *
14. Section 1.84 is amended by revising paragraphs (a)(2), (e), and
(j) to read as follows:
Sec. 1.84 Standards for drawings.
(a) * * *
(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 or design patent application or the subject
matter of a statutory invention registration. The color drawings must be
of sufficient quality such that all details in the drawings are
reproducible in black and white in the printed patent. Color drawings
are not permitted in international applications (see PCT Rule 11.13), or
in an application, or copy thereof, submitted under the Office
electronic filing system. The Office will accept color drawings in
utility or design patent applications and statutory invention
registrations only after granting a petition filed under this paragraph
explaining why the color drawings are necessary. Any such petition must
include the following:
(i) The fee set forth in Sec. 1.17(h);
(ii) Three (3) sets of color drawings;
(iii) A black and white photocopy that accurately depicts, to the
extent possible, the subject matter shown in the color drawing; and
(iv) An amendment to the specification to insert (unless the
specification contains or has been previously amended to contain) the
following language as the first paragraph of the brief description of
the drawings:
The patent or application file contains at least one drawing executed in
color. Copies of this patent or patent application publication with
color drawing(s) will be provided by the Patent and Trademark Office
upon request and payment of the necessary fee.
* * * * *
(e) 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 meeting the sheet-size requirements of paragraph (f) of this
section and the margin requirements of paragraph (g) of this section.
See paragraph (b) of this section for other requirements for photographs.
* * * * *
(j) Front page view. One of the views should be suitable for
inclusion on the front page of the patent application publication and
patent as the illustration of the invention. Applicant may suggest a
single view (by figure number) for inclusion on the front page of the
patent application publication and patent.
* * * * *
15. Section 1.85 is amended by revising paragraph (a) to read as
follows:
Sec. 1.85 Corrections to drawings.
(a) A utility or plant application will not be placed on the files for
examination until objections to the drawings have been corrected. Except
as provided in Sec. 1.215(c), any patent application publication will
not include drawings filed after the application has been placed on the
files for examination. Unless applicant is otherwise notified in an
Office action, objections to the drawings in a utility or plant
application will not be held in abeyance, and a request to hold
objections to the drawings in abeyance will not be considered a bona
fide attempt to advance the application to final action (Sec. 1.135(c)).
If a drawing in a design application meets the requirements of Sec.
1.84(e), (f), and (g) and is suitable for reproduction, but is not
otherwise in compliance with Sec. 1.84, the drawing may be admitted for
examination.
* * * * *
16. Section 1.98 is amended by revising paragraphs (a)(2) and (b) to
read as follows:
Sec. 1.98 Content of information disclosure statement.
(a) * * *
(2) A legible copy of:
(i) Each U.S. patent application publication and 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
* * * * *
(b) Each U.S. patent listed in an information disclosure statement
shall be identified by patentee, patent number, and issue date. Each
U.S. patent application publication listed in an information disclosure
statement shall be identified by applicant, patent application
publication number, and publication 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.
* * * * *
17. A new Sec. 1.99 is added to read as follows:
Sec. 1.99 Third party submission in published application.
(a) A submission by a member of the public of patents or publications
relevant to a pending published application will be entered in the
application file if the submission complies with the requirements of
this section and the application is still pending when the submission
and application file are brought before the examiner.
(b) A submission under this section must identify the application to
which it is directed by application number and include:
(1) The fee set forth in Sec. 1.17(p);
(2) A listing of the patents or publications submitted for
consideration by the Office;
(3) A copy of each listed patent or publication in written form or
at least the pertinent portions thereof; and
(4) An English language translation of all the necessary and
pertinent parts of any non-English language patent or publication in
written form relied upon.
(c) The submission under this section must be served upon the
applicant in accordance with Sec. 1.248.
(d) A submission under this section may not include any explanation
of the patents, publications, or any other information, and is limited
to twenty total patents or publications.
(e) A submission under this section must be filed within two months
of the date of publication of the application (Sec. 1.215(a)) or prior
to the mailing of a notice of allowance (Sec. 1.311), whichever is
earlier. Any submission under this section not filed within this period
is permitted only when the patents or publications could not have been
submitted to the Office earlier, and must also be accompanied by the
processing fee set forth in Sec. 1.17(i). A submission by a member of
the public to a pending published application that does not comply with
the requirements of this section will be returned or discarded.
(f) A member of the public may include a self-addressed postcard
with a submission to receive an acknowledgment by the Office that the
submission has been received. A member of the public filing a submission
under this section will not receive any communications from the Office
relating to the submission other than the return of a self- addressed
postcard. In the absence of a request by the Office, an applicant has no
duty to, and need not, reply to a submission under this section. The
limited involvement of the member of the public filing a submission
pursuant to this section ends with the filing of the submission, and no
further submission on behalf of the member of the public will be
considered, except for additional prior art, or unless such submission
raises new issues which could not have been earlier presented.
18. Section 1.104 is amended by revising paragraph (d)(1) to read as
follows:
Sec. 1.104 Nature of examination.
* * * * *
(d) Citation of references. (1) If domestic patents are cited by the
examiner, their numbers and dates, and the names of the patentees will
be stated. If domestic patent application publications are cited by the
examiner, their publication number, publication date, and the names of
the applicants will be stated. If foreign published applications or
patents are cited, their nationality or country, numbers and dates, and
the names of the patentees will be stated, and such other data will be
furnished as may be necessary to enable the applicant, or in the case of
a reexamination proceeding, the patent owner, to identify the published
applications or patents cited. In citing foreign published applications
or patents, in case only a part of the document is involved, the
particular pages and sheets containing the parts relied upon will be
identified. If printed publications are cited, the author (if any),
title, date, pages or plates, and place of publication, or place where a
copy can be found, will be given.
* * * * *
19. Section 1.130 is amended by revising its heading and paragraph
(a) to read as follows:
Sec. 1.130 Affidavit or declaration to disqualify commonly owned patent
or published application as prior art.
(a) When any claim of an application or a patent under reexamination is
rejected under 35 U.S.C. 103 on a U.S. patent or U.S. patent application
publication which is not prior art under 35 U.S.C. 102(b), and the
inventions defined by the claims in the application or patent under
reexamination and by the claims in the patent or published application
are not identical but are not patentably distinct, and the inventions
are owned by the same party, the applicant or owner of the patent under
reexamination may disqualify the patent or patent application
publication as prior art. The patent or patent application publication
can be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with Sec. 1.321(c); and
(2) An oath or declaration stating that the application or patent
under reexamination and patent or published application are currently
owned by the same party, and that the inventor named in the application
or patent under reexamination is the prior inventor under 35 U.S.C. 104.
* * * * *
20. Section 1.131 is amended by revising its heading and paragraph
(a) to read as follows:
Sec. 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
Secs. 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, U.S. patent
application publication, or international application publication under
PCT Article 21(2) is the date that it 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 or U.S. patent
application publication of a pending or patented application to another
or others which claims the same patentable invention as defined in Sec.
1.601(n); or
(2) The rejection is based upon a statutory bar.
* * * * *
21. Section 1.132 is revised to read as follows:
Sec. 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, 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 or a U.S. patent application publication of a
pending or patented application to another or others which claims the
same patentable invention as defined in Sec. 1.601(n).
22. Section 1.137 is revised to read as follows:
Sec. 1.137 Revival of abandoned application, terminated reexamination
proceeding, or lapsed patent.
(a) Unavoidable. Where the delay in reply by applicant or patent owner
was unavoidable, a petition may be filed to revive an abandoned
application, a terminated reexamination proceeding, or a lapsed patent
pursuant to this paragraph. A grantable petition pursuant to this
paragraph must be accompanied by:
(1) The reply required to the outstanding Office action or notice,
unless previously filed;
(2) The petition fee as set forth in Sec. 1.17(l);
(3) A showing to the satisfaction of the Director that the entire
delay in filing the required reply from the due date for the reply until
the filing of a grantable petition pursuant to this paragraph was
unavoidable; and
(4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d))
required pursuant to paragraph (d) of this section.
(b) Unintentional. Where the delay in reply by applicant or patent
owner was unintentional, a petition may be filed to revive an abandoned
application, a terminated reexamination proceeding, or a lapsed patent
pursuant to this paragraph. A grantable petition pursuant to this
paragraph must be accompanied by:
(1) The reply required to the outstanding Office action or notice,
unless previously filed;
(2) The petition fee as set forth in Sec. 1.17(m);
(3) A statement that the entire delay in filing the required reply
from the due date for the reply until the filing of a grantable petition
pursuant to this paragraph was unintentional. The Director may require
additional information where there is a question whether the delay was
unintentional; and
(4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d))
required pursuant to paragraph (d) of this section.
(c) Reply. In a nonprovisional application abandoned for failure to
prosecute, the required reply may be met by the filing of a continuing
application. In a nonprovisional utility or plant application filed
after June 8, 1995, and abandoned for failure to prosecute, the required
reply may also be met by the filing of a request for continued
examination in compliance with Sec. 1.114. In an application or patent,
abandoned or lapsed for failure to pay the issue fee or any portion
thereof, the required reply must include payment of the issue fee or any
outstanding balance thereof. In an application, abandoned for failure to
pay the publication fee, the required reply must include payment of the
publication fee.
(d) Terminal disclaimer. (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 Sec. 1.321 dedicating to the public a
terminal part of the term of any patent granted thereon equivalent to
the period of abandonment of the application. Any 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 Sec. 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 (d)(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 (d)(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, to lapsed patents, or to reexamination proceedings.
(e) Request for reconsideration. Any request for reconsideration or
review of a decision refusing to revive an abandoned application or
lapsed patent upon petition filed pursuant to this section, to be
considered timely, must be filed within two months of the decision
refusing to revive or within such time as set in the decision. Unless a
decision indicates otherwise, this time period may be extended under the
provisions of Sec. 1.136 for an abandoned application or lapsed patent;
under the provisions of Sec. 1.550(c) for a terminated ex parte
reexamination proceeding filed under Sec. 1.510; and under the
provisions of Sec. 1.956 for a terminated inter partes reexamination
proceeding filed under Sec. 1.913.
(f) Abandonment for failure to notify the Office of a foreign
filing. A nonprovisional application abandoned pursuant to 35 U.S.C.
122(b)(2)(B)(iii) for failure to timely notify the Office of the filing
of an application in a foreign country or under a multinational treaty
that requires publication of applications eighteen months after filing,
may be revived only pursuant to paragraph (b) of this section. The reply
requirement of paragraph (c) of this section is met by the notification
of such filing in a foreign country or under a multinational treaty, but
the filing of a petition under this section will not operate to stay any
period for reply that may be running against the application.
(g) Provisional applications. A provisional application, abandoned
for failure to timely respond to an Office requirement, may be revived
pursuant to this section. Subject to the provisions of 35 U.S.C.
119(e)(3) and Sec. 1.7(b), a provisional application will not be
regarded as pending after twelve months from its filing date under any
circumstances.
23. Section 1.138 is revised to read as follows:
Sec. 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 or publication.
(b) A written declaration of abandonment must be signed by a party
authorized under Sec. 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 Sec. 1.34(a) when filing a continuing
application may expressly abandon the prior application as of the filing
date granted to the continuing application.
(c) An applicant seeking to abandon an application to avoid
publication of the application (see Sec. 1.211(a)(1)) must submit a
declaration of express abandonment by way of a petition under this
section including the fee set forth in Sec. 1.17(h) in sufficient time
to permit the appropriate officials to recognize the abandonment and
remove the application from the publication process. Applicant should
expect that the petition will not be granted and the application will be
published in regular course unless such declaration of express
abandonment and petition are received by the appropriate officials more
than four weeks prior to the projected date of publication.
24. Section 1.165 is amended by revising paragraph (b) to read as
follows:
Sec. 1.165 Plant drawings.
* * * * *
(b) The drawings may be in color. The drawing must be in color if
color is a distinguishing characteristic of the new variety. Two copies
of color drawings or photographs and a black and white photocopy that
accurately depicts, to the extent possible, the subject matter shown in
the color drawing or photograph must be submitted.
25. A new, undesignated center heading and new sections 1.211,
1.213, 1.215, 1.217, 1.219, and 1.221 are added to Subpart B to read as
follows:
Publication of Applications
Sec. 1.211 Publication of applications.
(a) Each U.S. national application for patent filed in the Office under
35 U.S.C. 111(a) and each international application in compliance with
35 U.S.C. 371 will be published promptly after the expiration of a
period of eighteen months from the earliest filing date for which a
benefit is sought under title 35, United States Code, unless:
(1) The application is recognized by the Office as no longer pending;
(2) The application is national security classified (see Sec.
5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under
national security review;
(3) The application has issued as a patent in sufficient time to be
removed from the publication process; or
(4) The application was filed with a nonpublication request in
compliance with Sec. 1.213(a).
(b) Provisional applications under 35 U.S.C. 111(b) shall not be
published, and design applications under 35 U.S.C. chapter 16 and
reissue applications under 35 U.S.C. chapter 25 shall not be published
under this section.
(c) An application filed under 35 U.S.C. 111(a) will not be
published until it includes the basic filing fee (Sec. 1.16(a) or
1.16(g)), any English translation required by Sec. 1.52(d), and an
executed oath or declaration under Sec. 1.63. The Office may delay
publishing any application until it includes a specification on papers
in compliance with Sec. 1.52 and having an abstract (Sec. 1.72(b)),
drawings in compliance with Sec. 1.84, and a sequence listing in
compliance with Secs. 1.821 through 1.825 (if applicable), and until any
petition under Sec. 1.47 is granted.
(d) The Office may refuse to publish an application, or to include a
portion of an application in the patent application publication (Sec.
1.215), if publication of the application or portion thereof would
violate Federal or state law, or if the application or portion thereof
contains offensive or disparaging material.
(e) The publication fee set forth in Sec. 1.18(d) must be paid in
each application published under this section before the patent will be
granted. If an application is subject to publication under this section,
the sum specified in the notice of allowance under Sec. 1.311 will also
include the publication fee which must be paid within three months from
the date of mailing of the notice of allowance to avoid abandonment of
the application. This three-month period is not extendable. If the
application is not published under this section, the publication fee (if
paid) will be refunded.
Sec. 1.213 Nonpublication request.
(a) If the invention disclosed in an application has not been and will
not be the subject of an application filed in another country, or under
a multilateral international agreement, that requires publication of
applications eighteen months after filing, the application will not be
published under 35 U.S.C. 122(b) and Sec. 1.211 provided:
(1) A request (nonpublication request) is submitted with the
application upon filing;
(2) The request states in a conspicuous manner that the application
is not to be published under 35 U.S.C. 122(b);
(3) The request contains a certification that the invention
disclosed in the application has not been and will not be the subject of
an application filed in another country, or under a multilateral
agreement, that requires publication at eighteen months after filing; and
(4) The request is signed in compliance with Sec. 1.33(b).
(b) The applicant may rescind a nonpublication request at any time.
A request to rescind a nonpublication request under paragraph (a) of
this section must:
(1) Identify the application to which it is directed;
(2) State in a conspicuous manner that the request that the
application is not to be published under 35 U.S.C. 122(b) is rescinded;
and
(3) Be signed in compliance with Sec. 1.33(b).
(c) If an applicant who has submitted a nonpublication request under
paragraph (a) of this section subsequently files an application directed
to the invention disclosed in the application in which the
nonpublication request was submitted in another country, or under a
multilateral international agreement, that requires publication of
applications eighteen months after filing, the applicant must notify the
Office of such filing within forty-five days after the date of the
filing of such foreign or international application. The failure to
timely notify the Office of the filing of such foreign or international
application shall result in abandonment of the application in which the
nonpublication request was submitted (35 U.S.C. 122(b)(2)(B)(iii)).
Sec. 1.215 Patent application publication.
(a) The publication of an application under 35 U.S.C. 122(b) shall
include a patent application publication. The date of publication shall
be indicated on the patent application publication. The patent
application publication will be based upon the application papers
deposited on the filing date of the application, except for preliminary
amendments, as well as the executed oath or declaration submitted to
complete the application, and any application papers or drawings
submitted in reply to a preexamination notice requiring a title and
abstract in compliance with Sec. 1.72, application papers in compliance
with Sec. 1.52, drawings in compliance with Sec. 1.84, or a sequence
listing in compliance with Secs. 1.821 through 1.825, except as
otherwise provided in this section.
(b) If applicant wants the patent application publication to include
assignee information, the applicant must include a separate paper
indicating that such information is being provided for inclusion on the
patent application publication. Assignee information might not be
included on the patent application publication if such paper is not
included with the application on filing. Assignee information as used in
this paragraph means the name and address of the assignee of the entire
right, title, and interest in an application. Providing this information
does not substitute for compliance with any requirement of part 3 of
this chapter to have an assignment recorded by the Office.
(c) At applicant's option, the patent application publication will
be based upon the copy of the application (specification, drawings, and
oath or declaration) as amended during examination, provided that
applicant supplies such a copy in compliance with the Office electronic
filing system requirements within one month of the actual filing date of
the application or fourteen months of the earliest filing date for which
a benefit is sought under title 35, United States Code, whichever is
later.
(d) If the copy of the application submitted pursuant to paragraph
(c) of this section does not comply with the Office electronic filing
system requirements, the Office will publish the application as provided
in paragraph (a) of this section. If, however, the Office has not
started the publication process, the Office may use an untimely filed
copy of the application supplied by the applicant under paragraph (c) of
this section in creating the patent application publication.
Sec. 1.217 Publication of a redacted copy of an application.
(a) If an applicant has filed applications in one or more foreign
countries, directly or through a multilateral international agreement,
and such foreign-filed applications or the description of the invention
in such foreign-filed applications is less extensive than the
application or description of the invention in the application filed in
the Office, the applicant may submit a redacted copy of the application
filed in the Office for publication, eliminating any part or description
of the invention that is not also contained in any of the corresponding
applications filed in a foreign country. The Office will publish the
application as provided in Sec. 1.215(a) unless the applicant files a
redacted copy of the application in compliance with this section within
sixteen months after the earliest filing date for which a benefit is
sought under title 35, United States Code.
(b) The redacted copy of the application must be submitted in
compliance with the Office electronic filing system requirements. The
title of the invention in the redacted copy of the application must
correspond to the title of the application at the time the redacted copy
of the application is submitted to the Office. If the redacted copy of
the application does not comply with the Office electronic filing system
requirements, the Office will publish the application as provided in
Sec. 1.215(a).
(c) The applicant must also concurrently submit in paper (Sec.
1.52(a)) to be filed in the application:
(1) A certified copy of each foreign-filed application that
corresponds to the application for which a redacted copy is submitted;
(2) A translation of each such foreign-filed application that is in
a language other than English, and a statement that the translation is
accurate;
(3) A marked-up copy of the application showing the redactions in
brackets; and
(4) A certification that the redacted copy of the application
eliminates only the part or description of the invention that is not
contained in any application filed in a foreign country, directly or
through a multilateral international agreement, that corresponds to the
application filed in the Office.
(d) The Office will provide a copy of the complete file wrapper and
contents of an application for which a redacted copy was submitted under
this section to any person upon written request pursuant to Sec.
1.14(c)(2), unless applicant complies with the requirements of
paragraphs (d)(1), (d)(2), and (d)(3) of this section.
(1) Applicant must accompany the submission required by paragraph
(c) of this section with the following:
(i) A copy of any Office correspondence previously received by
applicant including any desired redactions, and second copy of all
Office correspondence previously received by applicant showing the
redacted material in brackets; and
(ii) A copy of each submission previously filed by the applicant
including any desired redactions, and a second copy of each submission
previously filed by the applicant showing the redacted material in
brackets.
(2) In addition to providing the submission required by paragraphs
(c) and (d)(1) of this section, applicant must:
(i) Within one month of the date of mailing of any correspondence
from the Office, file a copy of such Office correspondence including any
desired redactions, and a second copy of such Office correspondence
showing the redacted material in brackets; and
(ii) With each submission by the applicant, include a copy of such
submission including any desired redactions, and a second copy of such
submission showing the redacted material in brackets.
(3) Each submission under paragraph (d)(1) or (d)(2) of this
paragraph must also be accompanied by the processing fee set forth in
Sec. 1.17(i) and a certification that the redactions included therein
are limited to the elimination of material that is relevant only to the
part or description of the invention that were not contained in the
redacted copy of the application submitted for publication.
(e) The provisions of Sec. 1.8 do not apply to the time periods set
forth in this section.
Sec. 1.219 Early publication.
(a) Applications that will be published under Sec. 1.211 may be
published earlier than as set forth in Sec. 1.211(a) at the request of
the applicant. Any request for early publication must be accompanied by
the publication fee set forth in Sec. 1.18(d). If the applicant does not
submit a copy of the application in compliance with the Office
electronic filing system requirements, the Office will publish the
application as provided in Sec. 1.215(a). No consideration will be given
to requests for publication on a certain date, and such requests will be
treated as a request for publication as soon as possible.
Sec. 1.221 Voluntary publication or republication of patent application
publication.
(a) Any request for publication of an application filed before, but
pending on, November 29, 2000, and any request for republication of an
application previously published under Sec. 1.211, must include a copy
of the application in compliance with the Office electronic filing
system requirements and be accompanied by the publication fee set forth
in Sec. 1.18(d) and the processing fee set forth in Sec. 1.17(i). If the
request does not comply with the requirements of this paragraph or the
copy of the application does not comply with the Office electronic
filing system requirements, the Office will not publish the application
and will refund the publication fee.
(b) The Office will grant a request for a corrected or revised
patent application publication other than as provided in paragraph (a)
of this section only when the Office makes a material mistake which is
apparent from Office records. Any request for a corrected or revised
patent application publication other than as provided in paragraph (a)
of this section must be filed within two months from the date of the
patent application publication. This period is not extendable.
26. Section 1.291 is amended by revising paragraph (a)(1) to read as
follows:
Sec. 1.291 Protests by the public against pending applications.
(a) * * *
(1) The protest is submitted prior to the date the application was
published or the mailing of a notice of allowance under Sec. 1.311,
whichever occurs first; and
* * * * *
27. Section 1.292 is amended by revising paragraph (b)(3) to read as
follows:
Sec. 1.292 Public use proceedings.
* * * * *
(b) * * *
(3) The petition is submitted prior to the date the application was
published or the mailing of a notice of allowance under Sec. 1.311,
whichever occurs first.
* * * * *
28. Section 1.311 is revised to read as follows:
Sec. 1.311 Notice of allowance.
(a) If, on examination, it shall appear that the applicant is entitled
to a patent under the law, a notice of allowance will be sent to the
applicant at the correspondence address indicated in Sec. 1.33. The
notice of allowance shall specify a sum constituting the issue fee which
must be paid within three months from the date of mailing of the notice
of allowance to avoid abandonment of the application. The sum specified
in the notice of allowance may also include the publication fee, in
which case the issue fee and publication fee (Sec. 1.211(f)) must both
be paid within three months from the date of mailing of the notice of
allowance to avoid abandonment of the application. This three-month
period is not extendable.
(b) An authorization to charge the issue or other post-allowance
fees set forth in Sec. 1.18 to a deposit account may be filed in an
individual application only after mailing of the notice of allowance.
29. A new Sec. 1.417 is added to read as follows:
Sec. 1.417 Submission of translation of international application.
The submission of the international publication or an English language
translation of an international application pursuant to 35 U.S.C.
154(d)(4) must clearly identify the international application to which
it pertains (Sec. 1.5(a)) and, unless it is being submitted pursuant to
Sec. 1.494 or Sec. 1.495, be clearly identified as a submission pursuant
to 35 U.S.C. 154(d)(4). Otherwise, the submission will be treated as a
filing under 35 U.S.C. 111(a). Such submissions should be marked ``Box
PCT.''
30. Section 1.494 is amended by revising paragraph (f) to read as
follows:
Sec. 1.494 Entering the national stage in the United States of America
as a Designated Office.
* * * * *
(f) The documents and fees submitted under paragraphs (b) and (c) of
this section must, except for a copy of the international publication or
translation of the international application that is identified as
provided in Sec. 1.417, be clearly identified as a submission to enter
the national stage under 35 U.S.C. 371. Otherwise, the submission will
be considered as being made under 35 U.S.C. 111(a).
* * * * *
31. Section 1.495 is amended by revising paragraph (g) to read as
follows:
Sec. 1.495 Entering the national stage in the United States of America
as an Elected Office.
* * * * *
(g) The documents and fees submitted under paragraphs (b) and (c) of
this section must, except for a copy of the international publication or
translation of the international application that is identified as
provided in Sec. 1.417, be clearly identified as a submission to enter
the national stage under 35 U.S.C. 371. Otherwise, the submission will
be considered as being made under 35 U.S.C. 111(a).
* * * * *
PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE
APPLICATIONS IN FOREIGN COUNTRIES
32. The authority citation for 37 CFR Part 5 is revised to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 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 Director (15 CFR
370.10(j), 22 CFR 125.04, and 10 CFR 810.7).
33. Section 5.1 as proposed to be revised at 64 FR 53844 is amended by
revising paragraph (e) to read as follows:
Sec. 5.1 Applications and correspondence involving national security.
* * * * *
(e) An application will not be published under Sec. 1.211 of this
chapter or allowed under Sec. 1.311 of this chapter if publication or
disclosure of the application would be detrimental to national security.
An application under national security review will not be published at
least until six months from its filing date or three months from the
date the application was referred to a defense agency, whichever is
later. A national security classified patent application will not be
published under Sec. 1.211 of this chapter or allowed under Sec. 1.311
of this šbnchapter until the application is declassified and any secrecy
order under Sec. 5.2(a) has been rescinded.
* * * * *
March 24, 2000. Q. TODD DICKINSON
Assistant Secretary of Commerce
and Commissioner
of Patents and Trademarks
[FR Doc. 00-7939 Filed 4-4-00; 8:45 am]
BILLING CODE 3510-16-P