DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: 010815207-1207-01]
RIN 0651-AB41
Requirements for Claiming the Benefit of
Prior-Filed Applications Under Eighteen-Month Publication
of
Patent Applications
AGENCY: United States Patent and Trademark Office,
Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: In implementing the provisions of the
American Inventors Protection Act of 1999 related to the eighteen-month
publication of patent applications, the United States Patent and
Trademark Office (Office) revised the rules of practice related to
requirements for claiming the benefit of a prior-filed application. The
Office is now proposing to revise the time period for claiming the
benefit of a prior-filed application in an application filed under the
Patent Cooperation Treaty (PCT), revise the time period for filing an
English language translation of a non-English language provisional
application, and make other technical corrections to the rules of
practice related to eighteen-month publication. The Office is also
proposing to make permanent a temporary rule that amends the rules of
practice to include the current statutory provisions that define when
national stage commencement occurs in an application filed under the PCT.
DATES: To be ensured of consideration, written
comments must be received on or before October 5, 2001. No public
hearing will be held.
ADDRESSES: Comments should be sent by electronic mail
message over the Internet addressed to AB41comments@uspto.gov.
Comments may also be submitted by mail addressed to: Box
Comments - Patents, Commissioner for Patents, Washington, DC 20231, or
by facsimile to (703) 872-9399, marked to the attention of Robert A.
Clarke. 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 prefers 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 Office of
the Commissioner for Patents, located in Crystal Park 2, Suite 910,
2121 Crystal Drive, Arlington, Virginia, and will be available through
anonymous file transfer protocol (ftp) via the Internet (address:
http://www.uspto.gov). Since comments 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: Robert A. Clarke or
Joni Y. Chang, Legal Advisors, Office of Patent Legal Administration,
by telephone at (703) 308-6906, or by mail addressed to: Box
Comments - Patents, Commissioner for Patents, Washington, DC 20231, or
by facsimile to (703) 872-9399, marked to the attention of Robert A.
Clarke.
SUPPLEMENTARY INFORMATION: The American Inventors
Protection Act of 1999 was enacted into law on November 29, 1999.
See Public Law 106-113, 113 Stat. 1501, 1501A-552 through
1501A-591 (1999). The American Inventors Protection Act of 1999
contained a number of changes to title 35, United States Code,
including provisions for the publication of pending applications for
patent, with certain exceptions, 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"). The Office implemented the eighteen-month publication
provisions of the American Inventors Protection Act of 1999 in a final
rule published in September of 2000. See Changes to Implement
Eighteen-Month Publication of Patent Applications, 65 FR 57023
(Sept. 20, 2000), 1239 Off. Gaz. Pat. Office 63 (Oct. 10,
2000) (final rule).
Section 4503(b) of the American Inventors Protection Act of 1999
amended 35 U.S.C. 119(e) and 120 to provide that no application shall
be entitled to the benefit of a prior-filed application unless an
amendment containing the specific reference to the prior-filed
application is submitted at such time during the pendency of the
application as required by the Office. Section 4503(b) of the American
Inventors Protection Act of 1999 also amended 35 U.S.C. 119(e) and 120
to permit the Office to establish procedures for accepting an
unintentionally delayed claim for the benefit of a prior-filed
application. This notice proposes to amend 37 CFR 1.78 to: (1) Clarify
the requirements for claiming the benefit of a prior-filed application
in an application filed under the PCT; and (2) revise the time period
and requirements for filing an English language translation of a
non-English language provisional application.
35 U.S.C. 371(b) currently sets forth the time period for commencement
of the national stage in an application filed under the PCT. Due to a
possible statutory revision of 35 U.S.C. 371(b) to provide that the
time period for commencement of the national stage will be set forth in
the regulations, the Office is amending 1.491 such that the
regulations set forth the current language of 35 U.S.C. 371(b) (as
amended by Pub. L. 99-616, section 7(b), 100 Stat. 3485, 3485 (1986))
that defines when national stage commencement occurs. Certain U.S.
statutes and regulations provide for requirements that are tied to the
date of national stage "commencement" (e.g., the date of
national stage commencement is relevant to the due date for the
national fee, an oath or declaration, and any required translation of
the international application or amendments under PCT Article 19 (35
U.S.C. 371(d)), and in determining whether patentees are entitled to a
patent term adjustment pursuant to 35 U.S.C. 154(b)(1)(B) (37 CFR
1.702(b))). Therefore, it is important that the regulations provide for
a date of commencement of the national stage as to the United States in
advance of any statutory revision to 35 U.S.C. 371(b).
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is
proposed to be amended as follows:
Section 1.78
Section 1.78(a)(1) is proposed to be amended to make its
provisions applicable to international applications designating the
United States of America. The phrase "nonprovisional application"
as used in the rules of practice means either an application filed
under 35 U.S.C. 111(a) or an international application filed under 35
U.S.C. 363 that entered the national stage after compliance with 35
U.S.C. 371. See 1.9(a)(3). Thus, provisions which apply
only to a nonprovisional application (e.g., the requirement
in 1.78(a)(2)(iii) for a specific reference in an application data
sheet ( 1.76) or the specification) do not apply to any international
application that does not enter national stage processing under 35
U.S.C. 371. The specific reference requirements of 35 U.S.C. 119(e) and
120 are met in such an international application by a specific
reference to the prior-filed application in the international
application papers (e.g., in the Request (PCT Rule 4.10 and
1.434(d)(2)), or a correction or addition in accordance with PCT
Rule 26bis).
Section 1.78(a)(2) is proposed to be amended to place its provisions in
separate paragraphs (a)(2)(i) through (a)(2)(iv) for clarity. Sections
1.78(a)(2) is also proposed to be amended to also make its provisions
applicable to international applications designating the United States
of America, and to set forth the time period for making a claim
(providing the specific reference required by 1.78(a)(2)(i)) for
both an application filed under 35 U.S.C. 111(a) and an international
application designating the United States of America which entered the
national stage after compliance with 35 U.S.C. 371.
Specifically, if the later-filed application is an application filed
under 35 U.S.C. 111(a), the specific reference required by
1.78(a)(2)(i) must be submitted within the later of four months from
the actual filing date of the later-filed application or sixteen months
from the filing date of the prior application. If, however, the
later-filed application is a nonprovisional application which entered
the national stage from an international application after compliance
with 35 U.S.C. 371, the specific reference required by 1.78(a)(2)(i)
must be submitted within the later of four months from the date on
which the national stage commenced under 35 U.S.C. 371(b) or (f) or
sixteen months from the filing date of the prior application. This
reference must, in any event, be submitted during the pendency of the
later-filed application. The provisions relating to an application
filed under 35 U.S.C. 111(a) do not change the time period for
submitting a specific reference in such applications. The provisions
relating to an international application designating the United States
of America which entered the national stage after compliance with 35
U.S.C. 371, however, do change the time period for submitting a
specific reference in such applications in that the four-month period
is measured from the date on which the national stage commenced under
35 U.S.C. 371(b) or (f) rather than the actual filing date of the
international application under 35 U.S.C. 363.
Section 1.78(a)(2) is also amended to eliminate the requirement 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. The Office is eliminating this requirement because:
(1) The Office will not delay publication of the application if this
requirement is not met; and (2) this information can be obtained from
other sources (e.g., the language of publication can usually
be determined by the country of origin of the international
application).
Section 1.78(a)(2) is also amended to change the sentence "(t)he
identification of an application by application number under this
section is the specific reference required by 35 U.S.C. 120 to every
application assigned that application number" to "(t)he
identification of an application by application number under this
section is the identification of every application assigned that
application number necessary for a specific reference required by 35
U.S.C. 120 to every such application assigned that application
number." This change clarifies that the other provisions of
1.78(a)(2) (e.g., that the claim be in the application data
sheet or the first sentence of the specification) remain applicable
when an application under 1.53(b) claims the benefit under 35 U.S.C.
120 of a continued prosecution application filed under 1.53(d).
See Changes to Patent Practice and Procedure, 62 FR 53131,
53144 (Oct. 10, 1997), 1203 Off. Gaz. Pat. Office 63, 73
(Oct. 21, 1997) (final rule).
Section 1.78(a)(3) is proposed to be amended to change
"nonprovisional application" to "application," and change
"paragraph (a)(2)" to paragraph "(a)(2)(ii)" for consistency
with the changes to 1.78(a)(2).
Section 1.78(a)(3) provides that if the reference required by 35
U.S.C. 120 and 1.78(a)(2) of this section is presented in an application
after the time period provided by 1.78(a)(2)(ii), 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 applicant files a petition to
accept the delayed claim that is accompanied by: (1) The surcharge set
forth in 1.17(t); and (2) a statement that the entire delay between
the date the claim was due under 1.78(a)(2)(ii) and the date the
claim was filed was unintentional.
If an applicant includes a claim to the benefit of a prior-filed
nonprovisional application or international application designating the
United States elsewhere in the application but not in the manner
specified in 1.78(a)(2)(i) (e.g., if the claim is
included in an unexecuted oath or declaration or the application
transmittal letter) within the time period set forth in
1.78(a)(2)(ii), the Office will not require a petition (and the
surcharge under 1.17(t)) to correct the claim if the information
concerning the claim contained elsewhere in the application was
recognized by the Office as shown by its inclusion on a filing receipt.
This is because the application will have been scheduled for
publication on the basis of the information concerning the claim
contained elsewhere in the application within the time period set forth
in 1.78(a)(2)(ii). If, however, an applicant includes such a claim
elsewhere in the application and not in the manner specified in
1.78(a)(2)(i), and the claim is not recognized by the Office as shown
by its absence on a filing receipt (e.g., if the claim is in
a part of the application where priority or continuity claims are not
conventionally located, such as the body of the specification), the
Office will require a petition (and the surcharge under 1.17(t)) to
correct such claim. This is because the application will not have been
scheduled for publication on the basis of the information concerning
the claim contained elsewhere in the application.
Section 1.78(a)(4) is proposed to be amended to make its provisions
applicable to international applications designating the United States
of America.
Section 1.78(a)(5) is proposed to be amended to place its provisions in
separate paragraphs (a)(5)(i) through (a)(5)(iv) for clarity. Section
1.78(a)(5) is also proposed to be amended to: (1) Make its provisions
applicable to international applications designating the United States
of America; (2) set forth the time period for making a claim (providing
the specific reference required by 1.78(a)(5)) for both an
application filed under 35 U.S.C. 111(a) and an international
application designating the United States of America which entered the
national stage after compliance with 35 U.S.C. 371; and (3) change the
time period and requirements for filing an English language translation
of a non-English language provisional application.
Specifically, if the later-filed application is an application filed
under 35 U.S.C. 111(a), the specific reference required by
1.78(a)(5)(i) must be submitted within the later of four months from
the actual filing date of the later-filed application or sixteen months
from the filing date of the prior application. If, however, the
later-filed application is a nonprovisional application which entered
the national stage from an international application after compliance
with 35 U.S.C. 371, the specific reference required by 1.78(a)(5)(i)
must be submitted within the later of four months from the date on
which the national stage commenced under 35 U.S.C. 371(b) or (f) or
sixteen months from the filing date of the prior application. This
reference must, in any event, be submitted during the pendency of the
later-filed application. The provisions relating to an application
filed under 35 U.S.C. 111(a) do not change the time period for
submitting a specific reference in such applications. The provisions
relating to an international application designating the United States
of America which entered the national stage after compliance with 35
U.S.C. 371, however, do change the time period for submitting a
specific reference in such applications in that the four-month period
is measured from the date on which the national stage commenced under
35 U.S.C. 371(b) or (f) rather than the actual filing date of the
international application under 35 U.S.C. 363.
Section 1.78(a)(5) is also proposed to be amended to provide that if a
provisional application was filed in a language other than English and
an English-language translation of the provisional application and a
statement that the translation is accurate were not previously filed in
the provisional application or the nonprovisional application,
applicant will be notified and given a period of time within which to
file an English-language translation of the non-English-language
provisional application and a statement that the translation is
accurate to avoid abandonment of the nonprovisional application. Thus,
1.78(a)(5) will no longer provide that if a provisional application
was filed in a language other than English, a claim to the benefit of
such provisional application is waived if an English language
translation of a non-English language provisional application is not
submitted 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. In the event that the Office
schedules for publication an application that claims the benefit of a
provisional application filed in a language other than English without
issuing a notice requiring the applicant to file English-language
translation of the non-English-language provisional application, the
applicant should file the English-language translation of the
non-English-language provisional application and a statement that the
translation is accurate before the scheduled publication date. This
change to 1.78(a)(5) will also allow applicant to file an
English-language translation of a non-English language provisional
application either in the provisional application or in each
nonprovisional application that claims the benefit of the provisional
application.
Section 1.78(a)(5) is also proposed to be amended to delete the term
"copending," as 35 U.S.C. 119(e) no longer requires copendency
between a nonprovisional application and a provisional application for
the nonprovisional application to claim the benefit of the filing date
of the provisional application under 35 U.S.C. 119(e). 35 U.S.C.
119(e)(1) continues to require that any nonprovisional application
claiming the benefit of a provisional application be filed within
twelve months after the filing date of the provisional application (or
the next succeeding business day if the date that is twelve months
after the filing date of the provisional application falls on a
Saturday, Sunday, or Federal holiday). See Request for Continued
Examination Practice and Changes to Provisional Application Practice,
65 FR 50092, 50098 (Aug. 16, 2000), 1238 Off. Gaz. Pat.
Office 13, 18-19 (Sept. 5, 2000) (final rule) (comment 2 and
response).
Section 1.78(a)(6) provides that if the reference required by 35 U.S.C.
119(e) and paragraph (a)(5) of this section is presented in an
application after the time period provided by 1.78(a)(5)(ii), the
claim under 35 U.S.C. 119(e) for the benefit of a prior-filed
provisional application may be accepted if the applicant files a
petition to accept the delayed claim that is accompanied by: (1) The
surcharge set forth in 1.17(t); and (2) a statement that the entire
delay between the date the claim was due under 1.78(a)(5)(ii) and
the date the claim was filed was unintentional.
If an applicant includes a claim to the benefit of a prior-filed
provisional application elsewhere in the application but not in the
manner specified in 1.78(a)(5)(i) (e.g., if the claim is
included in an unexecuted oath or declaration or the application
transmittal letter) within the time period set forth in
1.78(a)(5)(ii), the Office will not require a petition (and the
surcharge under 1.17(t)) to correct the claim if the information
concerning the claim contained elsewhere in the application was
recognized by the Office as shown by its inclusion on a filing receipt.
This is because the application will have been scheduled for
publication on the basis of the information concerning the claim
contained elsewhere in the application within the time period set forth
in 1.78(a)(5)(ii). If, however, an applicant includes such a claim
elsewhere in the application and not in the manner specified in
1.78(a)(5)(i), and the claim is not recognized by the Office as shown
by its absence on a filing receipt (e.g., if the claim is in
a part of the application where priority or continuity claims are not
conventionally located, such as the body of the specification), the
Office will require a petition (and the surcharge under 1.17(t)) to
correct such claim. This is because the application will not have been
scheduled for publication on the basis of the information concerning
the claim contained elsewhere in the application.
Section 1.311
Section 1.311(a) is proposed to be amended to correct the
parenthetical reference to "( 1.211(f))" to "( 1.211(e))."
Section 1.434
Section 1.434(d)(2) is proposed to be amended by deleting the
term "copending," as the prior national application may be a
provisional application and 35 U.S.C. 119(e) no longer requires
copendency for a nonprovisional application to claim the benefit of the
filing date of a provisional application under 35 U.S.C. 119(e).
Section 1.491
Section 1.491 is proposed to be amended to define both
commencement of the national stage and entry into the national stage.
Because these two events (commencement of the national stage and entry
into the national stage) may not take place at the same time, the
Office is amending 1.491 to clarify when each of these two events
takes place. Section 1.491(a) specifically indicates that, subject to
35 U.S.C. 371(f), the national stage shall commence with the expiration
of the applicable time limit under PCT Article 22(1) or (2), or under
PCT Article 39(1)(a). Thus, 1.491(a) merely incorporates the
statutory language contained in 35 U.S.C. 371(b) (as amended by Pub. L.
99-616, 7(b), 100 Stat. 3485, 3485 (1986)). Section 1.491(b)
contains the provisions of former 1.491, and provides that an
international application enters the national stage when the applicant
has filed the documents and fees required by 35 U.S.C. 371(c) within
the period set in 1.494 or 1.495.
On August 30, 2001, the Office published a temporary rule that amends
1.491 to define both commencement of the national stage and entry
into the national stage in the manner discussed above. This notice
proposes to make the amendment to 1.491 in that temporary rule
permanent.
Classification
Administrative Procedure Act
The changes proposed in this notice concern only the procedures
for filing claims for the benefit of a prior-filed application under 35
U.S.C. 119(e) or 120, the procedures for filing an English language
translation of a non-English language provisional application, and
technical corrections to the provisions of 1.78, 1.311, 1.434, and
1.491. Because all of the changes relate to Office practices and
procedures, prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b)(A) (or any other law). However,
because the Office desires the benefit of public comment on this topic,
the Office is voluntarily accepting comments.
Regulatory Flexibility Act
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 (or any other law), an initial
regulatory flexibility analysis under the Regulatory Flexibility Act (5
U.S.C. 601 et seq.) is not required. See 5 U.S.C. 603.
Executive Order 13132
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This notice involves information collection requirements that
are subject to review by the Office of Management and Budget (OMB)
under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The
collections of information involved in this notice have been reviewed
and previously approved by OMB under the following control numbers:
0651-0021, 0651-0031, 0651-0032, and 0651-0033. The Office is not
resubmitting information collection packages to OMB for its review and
approval because the changes in this notice do not affect the
information collection requirements associated with the information
collections under these OMB control numbers.
The title, description and respondent description of each of the
information collections are shown below with an estimate of each of the
annual reporting burdens. Included in each estimate is the time for
reviewing instructions, gathering and maintaining the data needed, and
completing and reviewing the collection of information.
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: Regular submission (approved through
December of 2003).
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: 331,288.
Estimated Time Per Response: Between 15 minutes and 4 hours.
Estimated Total Annual Burden Hours: 401,083.
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: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08/21-27/30/31/35/36/42/43/61/62/63/64/67/68/
91/92/96/97.
Type of Review: Regular submission (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: 2,247,389.
Estimated Time Per Response: 0.45 hours.
Estimated Total Annual Burden Hours: 1,021,941 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 United States Patent and Trademark Office
concerning the examination of a specific application. The specific
information required or which may be submitted includes: Information
Disclosure Statements; Terminal Disclaimers; Petitions to Revive;
Express Abandonments; Appeal Notices; Petitions for Access; Powers to
Inspect; Certificates of Mailing or Transmission; Statements under
3.73(b); Amendments; Petitions and their Transmittal Letters; and
Deposit Account Order Forms.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07/13PCT/17-19/29/101-110.
Type of Review: Regular submission (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: 319,350.
Estimated Time Per Response: 9.35 hours.
Estimated Total Annual Burden Hours: 2,984,360 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 the 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: Regular submission (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.
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, Office of Patent Legal
Administration, United States Patent and Trademark Office, Washington,
DC 20231, or to the Office of Information and Regulatory Affairs of
OMB, New Executive Office Building, 725 17th Street, NW., Room 10235,
Washington, DC 20503, Attention: Desk Officer for the United States
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 in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and record keeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is proposed to
be amended as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR part 1 continues to read
as follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.78 is amended by revising paragraph (a) to read as
follows:
1.78 Claiming benefit of earlier filing date and cross
references to other applications.
(a)(1) A nonprovisional application or international
application designating the United States of America may claim an
invention disclosed in one or more prior-filed copending nonprovisional
applications or copending international applications designating the
United States of America. In order for an application to claim the
benefit of a prior-filed copending nonprovisional application or
copending international application designating the United States of
America, each prior application must name as an inventor at least one
inventor named in the later-filed application and disclose the named
inventor's invention claimed in at least one claim of the later-filed
application in the manner provided by the first paragraph of 35 U.S.C.
112. In addition, each prior application must be:
(i) An international application entitled to a filing date in
accordance with PCT Article 11 and designating the United States of
America; or
(ii) Complete as set forth in 1.51(b); or
(iii) Entitled to a filing date as set forth in 1.53(b) or
1.53(d) and include the basic filing fee set forth in 1.16; or
(iv) Entitled to a filing date as set forth in 1.53(b) and have
paid therein the processing and retention fee set forth in 1.21(l)
within the time period set forth in 1.53(f).
(2)(i) Except for a continued prosecution application filed under
1.53(d), any nonprovisional application or international application
designating the United States of America claiming the benefit of one or
more prior-filed copending nonprovisional applications or international
applications designating the United States of America must contain or
be amended to contain 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. Cross
references to other related applications may be made when appropriate
(see 1.14).
(ii) This reference must be submitted during the pendency of the
later-filed application. If the later-filed application is an
application filed under 35 U.S.C. 111(a), this reference must also be
submitted during the pendency of the later-filed application and within
the later of four months from the actual filing date of the later-filed
application or sixteen months from the filing date of the prior
application. If the later-filed application is a nonprovisional
application which entered the national stage from an international
application after compliance with 35 U.S.C. 371, this reference must
also be submitted during the pendency of the later-filed application
and within the later of four months from the date on which the national
stage commenced under 35 U.S.C. 371(b) or (f) or sixteen months from
the filing date of the prior application. These time periods are not
extendable. 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
paragraph (a)(2)(i) of this section is considered a waiver of any
benefit under 35 U.S.C. 120, 121, or 365(c) to such prior application.
The time periods set forth in this paragraph do not apply to an
application for a design patent.
(iii) If the later-filed application is a nonprovisional application,
the reference required by this paragraph must be included in an
application data sheet ( 1.76) or the specification must contain or
be amended to contain such reference in the first sentence following
the title.
(iv) The request for a continued prosecution application under
1.53(d) is the specific reference required by 35 U.S.C. 120 to the
prior application. The identification of an application by application
number under this section is the identification of every application
assigned that application number necessary for a specific reference
required by 35 U.S.C. 120 to every such application assigned that
application number.
(3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2) of
this section is presented in an application after the time period
provided by paragraph (a)(2)(ii) 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 1.17(t); and
(ii) A statement that the entire delay between the date the claim was
due under paragraph (a)(2)(ii) of this section and the date the claim
was filed was unintentional. The Commissioner may require additional
information where there is a question whether the delay was
unintentional.
(4) A nonprovisional application other than for a design patent or an
international application designating the United States of America may
claim an invention disclosed in one or more prior-filed provisional
applications. In order for an 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 application and disclose the named inventor's invention
claimed in at least one claim of the later-filed 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 1.53(c), and the basic filing fee set forth in
1.16(k) must be paid within the time period set forth in 1.53(g).
(5)(i) Any nonprovisional application or international application
designating the United States of America claiming the benefit of one or
more prior-filed provisional applications must contain or be amended to
contain a reference to each such prior provisional application,
identifying it by the provisional application number (consisting of
series code and serial number).
(ii) This reference must be submitted during the pendency of the
later-filed application. If the later-filed application is an
application filed under 35 U.S.C. 111(a), this reference must also be
submitted within the later of four months from the actual filing date
of the later-filed application or sixteen months from the filing date
of the prior provisional application. If the later-filed application is
a nonprovisional application which entered the national stage from an
international application after compliance with 35 U.S.C. 371, this
reference must also be submitted and within the later of four months
from the date on which the national stage commenced under 35 U.S.C.
371(b) or (f) or sixteen months from the filing date of the prior
provisional application. These time periods are not extendable. Except
as provided in paragraph (a)(6) of this section, the failure to timely
submit the reference is considered a waiver of any benefit under 35
U.S.C. 119(e) to such prior provisional application.
(iii) If the later-filed application is a nonprovisional application,
the reference required by this paragraph must be included in an
application data sheet ( 1.76) or the specification must contain or
be amended to contain such reference in the first sentence following
the title.
(iv) If the provisional application was filed in a language other than
English and an English-language translation of the provisional
application and a statement that the translation is accurate were not
previously filed in the provisional application or the nonprovisional
application, applicant will be notified and given a period of time
within which to file an English-language translation of the non-
English-language provisional application and a statement that the
translation is accurate to avoid abandonment of the nonprovisional
application.
(6) If the reference required by 35 U.S.C. 119(e) and paragraph (a)(5)
of this section is presented in an application after the time period
provided by paragraph (a)(5)(ii) 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 later-filed application if
the reference identifying the prior application by provisional
application number was 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 1.17(t); and
(ii) A statement that the entire delay between the date the claim was
due under paragraph (a)(5)(ii) of this section and the date the claim
was filed was unintentional. The Commissioner may require additional
information where there is a question whether the delay was
unintentional.
* * * * *
3. Section 1.311 is amended by revising paragraph (a) to read
as follows:
1.311 Notice of allowance.
(a) If, on examination, it appears 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 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 ( 1.211(e)) 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.
* * * * *
4. Section 1.434 is amended by revising paragraph (d)(2) to
read as follows:
1.434 The request.
* * * * *
(d) * * *
(2) A reference to any prior-filed national application or
international application designating the United States of America, if
the benefit of the filing date for the prior-filed application is to be
claimed.
5. Section 1.491 is revised to read as follows:
1.491 National stage commencement and entry.
(a) Subject to 35 U.S.C. 371(f), the national stage shall
commence with the expiration of the applicable time limit under PCT
Article 22(1) or (2), or under PCT Article 39(1)(a).
(b) An international application enters the national stage when the
applicant has filed the documents and fees required by 35 U.S.C. 371(c)
within the period set in 1.494 or 1.495.
August 29, 2001 NICHOLAS P. GODICI
Acting Under Secretary of Commerce for
Intellectual Property and Acting Director of the
United States Patent and Trademark Office