United States Patent and Trademark Office OG Notices: 22 January 2002
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: 010815207-1285-03]
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: Final rule.
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 revising the time period for claiming the benefit of a
prior-filed application in an application filed under the Patent
Cooperation Treaty (PCT), revising the time period for filing an
English language translation of a non-English language provisional
application, and making other technical corrections to the rules of
practice related to eighteen-month publication.
EFFECTIVE DATE: December 28, 2001.
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
Pub. L. 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(a) of the American Inventors Protection Act of 1999
amended 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 identifying the foreign application is filed 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
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 of the American
Inventors Protection Act of 1999 also amended 35 U.S.C. 119 and 120 to
permit the Office to establish procedures for accepting an
unintentionally delayed claim for the benefit of a prior-filed
application. Section 4503 of the American Inventors Protection Act of
1999 applies to applications filed under 35 U.S.C. 111 on or after
November 29, 2000, and to applications entering the national stage
after compliance with 35 U.S.C. 371 that resulted from international
applications filed on or after November 29, 2000. See Pub. L. 106-113,
4508, 113 Stat. at 1501A-566 through 1501A-567. This final rule
amends 37 CFR 1.55 and 1.78 to: (1) Revise the requirements for
claiming the benefit of a prior-filed application in an application
filed under the PCT; (2) revise the time period and requirements for
filing an English language translation of a non-English language
provisional application; and (3) expressly indicate that the time
period requirements which implement the provisions of 4503 of the
American Inventors Protection Act of 1999 do not apply to applications
filed before November 29, 2000.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended
as follows:
Section 1.14: Section 1.14(i)(2) is amended to correct its
reference to "35 U.S.C. 154(d)(4) (formerly indicated as "35 U.S.C.
154(2)(d)(4)")."
Section 1.55: Section 1.55(a)(1)(i) is amended such that the
rules of practice expressly indicate that the time periods in
1.55(a)(1)(i) do not apply in an application under 35 U.S.C. 111(a) if
the application is: (1) an application for a design patent; or (2) an
application filed before November 29, 2000. The Office indicated that
the changes to 1.55 (and 1.78) to implement eighteen-month
publication applied only to applications filed on or after November 29,
2000. See Changes to Implement Eighteen-Month Publication of
Patent Applications, 65 FR at 57024, 1239 Off. Gaz. Pat.
Office at 63. The Office, however, has received enough inquiries
about whether the time periods set forth in 1.55(a)(1)(i) (and
1.78(a)(2) and 1.78(a)(5)) apply to particular applications that the
Office has decided to place this information in 1.55 (and 1.78)
itself.
Section 1.55(c) is amended to expressly indicate that a petition under
1.55(c) to accept the delayed claim must also be accompanied by the
claim (i.e., the claim required by 35 U.S.C. 119(a)-(d) and 1.55)
for priority to the prior foreign application, unless previously
submitted.
Section 1.78: Section 1.78(a)(1) is 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 amended to place its provisions in separate
paragraphs (a)(2)(i) through (a)(2)(iv) for clarity. Section 1.78(a)(2)
is also amended to 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-filed 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) in the
later-filed international application or sixteen months from the filing
date of the prior-filed 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 to any prior-filed
application for which a benefit is claimed in such international
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.
Section 1.78(a)(2) is also amended such that the rules of practice
expressly indicate that the time periods in 1.78(a)(2)(ii) do not
apply if the later-filed application is: (1) An application for a
design patent; (2) an application filed under 35 U.S.C. 111(a) before
November 29, 2000; or (3) a nonprovisional application which entered
the national stage after compliance with 35 U.S.C. 371 from an
international application filed under 35 U.S.C. 363 before November 29,
2000. The Office indicated that the changes to 1.78 to implement
eighteen-month publication applied only to applications filed on or
after November 29, 2000. See Changes to Implement Eighteen-Month
Publication of Patent Applications, 65 FR at 57024, 1239
Off. Gaz. Pat. Office at 63. The Office, however, has
received enough inquiries about whether the time periods set forth in
1.78 apply to particular applications that the Office has decided to
place this information in 1.78 itself.
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." That is, a continued prosecution application under
1.53(d) (CPA) does not require any additional identification of or
reference to the prior application (or any prior application assigned
the application number of such application under 1.53(d)) under 35
U.S.C. 120 and 1.78(a)(2) other than the identification of the prior
application in the request required by 1.53(d) for a CPA. 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). The change to this provision 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).
Section 1.78(a)(3) is amended to expressly indicate that a petition
under 1.78(a)(3) to accept the delayed claim must also be
accompanied by the claim (i.e., the reference required by 35 U.S.C. 120
and 1.78(a)(2)) to the benefit of the prior-filed application,
unless previously submitted. Section 1.78(a)(3) is also amended to
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 a nonprovisional
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 reference required by 35 U.S.C. 120 and
1.78(a)(2) to the prior-filed application (unless previously
submitted); (2) the surcharge set forth in 1.17(t); and (3) 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) and (iii) (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). Of course, the applicant
must still submit the claim in the manner specified in 1.78(a)(2)(i)
and (iii) (i.e., by an amendment in the first sentence of the
specification or in an application data sheet) to have a proper claim
under 35 U.S.C. 120 and 1.78 to the benefit of a prior-filed
application. 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 (iii), and the claim is not recognized by the Office as shown by
its absence on the 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 amended to make its provisions applicable to
international applications designating the United States of America.
Section 1.78(a)(5) is amended to place its provisions in separate
paragraphs (a)(5)(i) through (a)(5)(iv) for clarity. Section 1.78(a)(5)
is also 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-filed 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) in the
later-filed international application or sixteen months from the filing
date of the prior-filed 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 to any prior-filed
application for which a benefit is claimed in such international
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 amended such that the rules of practice
expressly indicate that the time periods in 1.78(a)(5)(ii) do not
apply if the later-filed application is: (1) an application filed under
35 U.S.C. 111(a) before November 29, 2000; or (2) a nonprovisional
application which entered the national stage after compliance with 35
U.S.C. 371 from an international application filed under 35 U.S.C. 363
before November 29, 2000.
Section 1.78(a)(5) is also 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. In a pending nonprovisional application, failure to timely
reply to such a notice will result in abandonment of the application.
Thus, 1.78(a)(5) no longer provides 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-filed provisional application. In the event
that the Office schedules an application that claims the benefit of a
provisional application filed in a language other than English for
publication 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) allows 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 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) is amended to expressly indicate that a petition
under 1.78(a)(6) to accept the delayed claim must also be
accompanied by the claim (i.e., the reference required by 35 U.S.C.
119(e) and 1.78(a)(5)) to the benefit of the prior-filed provisional
application, unless previously submitted. Section 1.78(a)(6) is also
amended to change "paragraph (a)(5)" to paragraph "(a)(5)(ii)"
for consistency with the changes to 1.78(a)(5).
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 a
nonprovisional 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 reference required by 35 U.S.C. 119(e) and 1.78(a)(5) to the
prior-filed provisional application (unless previously submitted); (2)
the surcharge set forth in 1.17(t); and (3) 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) and (iii) (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). Of course, the applicant must still submit the
claim in the manner specified in 1.78(a)(5)(i) and (iii) (i.e., by
an amendment in the first sentence of the specification or in an
application data sheet) to have a proper claim under 35 U.S.C. 119(e)
and 1.78 to the benefit of a prior-filed provisional application.
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
(iii), 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 amended to correct the
parenthetical reference to "( 1.211(f))" to "( 1.211(e))."
Section 1.434: Section 1.434(d)(2) is 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: The Office proposed amending 1.491 such
that the regulations set forth the current language of 35 U.S.C. 371(b)
that defines when national stage commencement occurs. The Office will
adopt that proposed change to 1.491 in a separate final rule that
implements an amendment to PCT Article 22.
Response to Comments
The Office published a notice proposing the above-mentioned
changes to the rules of practice. See Requirements for Claiming
the Benefit of Prior-Filed Applications Under Eighteen-Month
Publication of Patent Applications, 66 FR 46409 (Sept. 5, 2001),
1251 Off. Gaz. Pat. Office 16 (Oct. 2, 2001) (notice of
proposed rulemaking). The Office received seven written comments (from
intellectual property organizations, patent practitioners, and the
general public) in response to the notice of proposed rulemaking. The
comments are 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 are also posted on the Office's
Internet Web site (address: http://www.uspto.gov).
Most of the comments expressed support for the proposed changes. None
of the comments opposed the proposed changes, but several comments
included additional suggestions. Those comments and the Office's
responses follow (comments that generally support the proposed changes
are not discussed):
Comment 1: Several comments suggested that the
Office make clear that the time period requirements in
1.78(a)(2)(ii) and 1.78(a)(5)(ii) (and resulting waiver if these
time period requirements are not met) do not apply to applications
filed before November 29, 2000. Another comment suggested that the
change to 1.78 be made retroactive to all applications filed on or
after November 29, 2000.
Response: Sections 1.55 and 1.78 are now amended to
expressly state that the time period requirements of 1.55(a)(1)(i),
1.78(a)(2)(ii) and 1.78(a)(5)(ii) do not apply to applications
filed before November 29, 2000. Therefore, there is no waiver of a
benefit under 35 U.S.C. 119 or 120 for failure to comply with the time
period requirements of 1.55(a)(1)(i), 1.78(a)(2)(ii) or
1.78(a)(5)(ii) in an application filed before November 29, 2000.
Except where the terms of 1.55 and 1.78 indicate that a provision
of 1.55 or 1.78 applies only to applications filed on or after
November 29, 2000 (i.e., 1.55(a)(1)(i), 1.78(a)(2)(ii), and
1.78(a)(5)(2)(ii)), the provisions of 1.55 and 1.78 as now
amended are applicable to applications filed before, on, or after
November 29, 2000. For example, both the elimination of 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 ( 1.78(a)(2)), and the more liberal time
period and provisions for filing an English language translation of a
non-English language provisional application ( 1.78(a)(5)), apply to
applications filed before, on, or after November 29, 2000. Sections
1.55 and 1.78 as now amended, however, provide that the time period
requirements of 1.55(a)(1)(i), 1.78(a)(2)(ii) and
1.78(a)(5)(ii) do not apply to applications filed before November 29,
2000.
Comment 2: Several comments suggested that 1.78 be
amended to state that, if an applicant includes a claim under 1.78
to the benefit of a prior-filed application elsewhere in the
application, but not in the manner specified in 1.78(a)(2)(i) and
(iii) or 1.78(a)(5)(i) and (iii), within the time period set forth
in 1.78(a)(2)(ii) or 1.78(a)(5)(ii), respectively, 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 or in the patent application
publication.
Response: The Office has adopted the following practice: if
an applicant includes a claim under 1.78 to the benefit of a
prior-filed application elsewhere in the application, but not in the
manner specified in 1.78(a)(2)(i) and (iii) or 1.78(a)(5)(i) and
(iii), within the time period set forth in 1.78(a)(2)(ii) or
1.78(a)(5)(ii), respectively, 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 (not as shown by its inclusion in the patent application
publication). The reason for this practice is to avoid the situation in
which an applicant is required to file a petition (and pay the
surcharge under 1.17(t)) even though the application was scheduled
for publication on the basis of the information concerning the claim
contained elsewhere in the application, but not in the manner specified
in 1.78(a)(2)(i) and (iii) or 1.78(a)(5)(i) and (iii), within the
time period set forth in 1.78(a)(2)(ii). That is, whether an
applicant is required to file a petition (and pay the surcharge under
1.17(t)) to correct a claim that does not comply with
1.78(a)(2)(i) and (iii) or 1.78(a)(5)(i) and (iii) is based upon the
effect the informal claim has on the scheduling of the application for
publication, and not whether the informal claim is ultimately included
in the patent application publication.
The Office's goal is to encourage applicants to provide claims to the
benefit of any prior-filed application in the manner specified in
1.78(a)(2)(i) and (iii) or 1.78(a)(5)(i) and (iii) within the time
period set forth in 1.78(a)(2)(ii) or 1.78(a)(5)(ii). Amending
1.78 itself to expressly include the above-stated practice would give
tacit approval to providing claim to the benefit of a prior-filed
application in a manner that does not comply with 1.78(a)(2)(i) and
(iii) or 1.78(a)(5)(i) and (iii). The commentors' proposed amendment
to 1.78 would have an effect contrary to the Office's goal of
encouraging applicants to provide claims to the benefit of any
prior-filed application in the manner specified in 1.78(a)(2)(i) and
(iii) or 1.78(a)(5)(i) and (iii) within the time period set forth in
1.78(a)(2)(ii) or 1.78(a)(5)(ii).
Finally, if a claim under 1.78 does not comply with 1.78(a)(2)(i)
and (iii) or 1.78(a)(5)(i) and (iii) (but is stated elsewhere in the
application), such claim must eventually be presented in the manner
specified in 1.78(a)(2)(i) and (iii) or 1.78(a)(5)(i) and (iii)
(i.e., by an amendment in the first sentence of the specification or in
an application data sheet) to be a proper claim under 35 U.S.C. 119(e)
or 120 and 1.78 to the benefit of a prior-filed application.
Comment 3: Several comments suggested that the Office should
make it clear that if the requirements of 1.78(a)(2)(ii) have been
met, the applicant has not waived priority or continuity benefits even
if the priority or continuity claim is not included in the patent
application publication.
Response: If a claim under 1.78 to the benefit of a
prior-filed application is stated in the manner specified in
1.78(a)(2)(i) and (iii) or 1.78(a)(5)(i) and (iii) within the time
period set forth in 1.78(a)(2)(ii) or 1.78(a)(5)(ii), the
applicant has not waived the claim regardless of whether the Office
includes the claim in the patent application publication. Nothing in
1.78 suggests that the propriety of claim under 1.78 is dependent
upon its inclusion in the patent application publication.
Comment 4: Several comments suggested that the Office should
provide applicants with the greatest possible flexibility in satisfying
priority claim requirements, and should avoid adding technical
requirements that may result in a loss of patent rights. The comments
specifically suggested that since Office employees are familiar with
checking the declaration for priority claims, 1.78(a)(2)(iii) should
be further amended to allow the reference required by 1.78(a)(2)(i)
to be included in the declaration.
Response: The Office allows applicants to provide claims
under 1.78 to the benefit of any prior-filed application either in
the first line of the specification (where 1.78 formerly required
such a claim to be) or in an application data sheet ( 1.76).
Providing even this level of flexibility hinders the patent application
publication and patent printing process when the specification and
application data sheet ( 1.76) contain conflicting information.
Providing the oath or declaration under 1.63 as an additional
possible location for claims under 1.78 to the benefit of any
prior-filed application would result in confusion in situations in
which: (1) the applicant has submitted multiple oaths or declarations
under 1.63; or (2) information submitted in the oath or declaration
conflicts with information submitted in the specification or the
application data sheet ( 1.76). Providing the oath or declaration
under 1.63 as an additional possible location for claims to the
benefit of any prior-filed application would also cause problems in the
situation in which it is desirable to delete a claim to the benefit of
a prior-filed application (for patent term purposes), in that a
substitute oath or declaration not containing the claim would be
necessary to eliminate a claim if such claim is made by a statement in
the oath or declaration ( 1.63).
Comment 5: Several comments suggested that the Office should
take all steps necessary to ensure that all proper priority or benefit
claims are included in the first paragraph of the patent application
publication.
Response: The applicant and application information (i.e.,
inventor names, including order, title, priority/benefit, assignee
name) that is in the Office's Patent Application Locating and
Monitoring (PALM) system at the time the application content is
extracted from the Office's Patent Application Capture and Review
(PACR) database for publication will be reflected on the front page of
the patent application publication. Thus, if an application is filed
without any priority or benefit claim, but a priority or benefit claim
is subsequently submitted before the application content has been
extracted for publication, the priority or benefit claim will be
reflected on the front page of the patent application publication. The
application content is currently extracted for publication
approximately nine weeks before the projected publication date. The
time period in 1.55(a)(1), 1.78(a)(2)(ii), and 1.78(a)(5)(ii)
for submitting a priority or continuity claim is four months from the
actual filing date of the application or sixteen months from the filing
date of the prior-filed application, which does not appear to expire
until after the time at which application content is extracted for
publication. As a practical matter, however, this time period will
expire before the time at which application content is extracted for
publication (and, as such, any timely priority or continuity claim
should be entered into the Office's PALM system before the time at
which application content is extracted for publication) because the
failure to state a priority or continuity claim before a publication
date is originally calculated will result in projected publication date
that is later than the projected publication date would have been if
such priority or continuity claim were taken into account.
If an untimely claim under 1.78 to the benefit of a prior-filed
application is accepted under 1.78(a)(3) or 1.78(a)(6) after the
application content has been extracted for publication purposes, the
Office plans to correct its electronic records relating to the patent
application publication such that the claim under 1.78 will be
reflected on the Office's electronic records of the patent application
publication (the eighteen-month publication process does not involve
the creation of paper-based records).
Finally, while priority and continuity claims will be reflected on the
front page of the patent application publication, continuity claims
under 1.78 will not additionally be stated on the first line of the
specification unless the claim is included in the first line of the
specification as originally filed or as filed in a copy of the
application submitted by the Office electronic filing system under
1.215(c). Specifically, claims under 1.78 will not additionally be
stated on the first line of the specification if the claim is included
in a preliminary amendment to the specification (see 1.215(c) (the
patent application publication will not include any amendments,
including preliminary amendments, unless applicant supplies a copy of
the application containing the amendment pursuant to 1.215(c))) or
in an application data sheet (cf. Changes to Implement the Patent
Business Goals, 65 FR 78958, 78959 (Dec. 18, 2000), 1242
Off. Gaz. Pat. Office 65 (Jan. 9, 2001) (final rule and
correction) ("If continuity data is included in an application data
sheet, but not in the first sentence of the specification, the
continuity data to be set forth in the application data sheet will not
be printed in the first line of the specification in the patent")).
Comment 6: One comment questioned whether there is any
mechanism for correcting the absence of a priority claim in an
international application if an applicant files the international
application designating the United States of America, but subsequently
files a continuation application that claims the benefit of the
international application and the international application never
enters the national stage under 35 U.S.C. 371.
Response: The requirement that a claim to the benefit of a
prior-filed provisional application, a prior-filed nonprovisional
application, or a prior-filed international application designating the
United States 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) in the later-filed international application or sixteen months from
the filing date of the prior-filed application does not apply to an
international application that never entered the national stage under
35 U.S.C. 371. Therefore, to amend the later-filed international
application to add a claim to the benefit of a prior-filed provisional
application, a prior-filed nonprovisional application, or a prior-filed
international application designating the United States, the applicant
need only file a petition under 1.182 to amend an abandoned
application (the later-filed international application) with the claim
to the benefit of a prior-filed application (regardless of whether the
later-filed international application was filed in the United States
Receiving Office).
Comment 7: Several comments supported the proposed change by
which the Office would issue a notice in a nonprovisional application
claiming the benefit of a non-English language provisional application
that sets a time period within which the English translation must be
filed, but noted that if the Office fails to issue such a notice and
the applicant does not provide such a translation before publication,
the burden will fall on applicants against whom the resulting patent
application publication is cited as a reference to obtain a translation
of the provisional application.
Response: The Office plans to check during the
preexamination processing of a nonprovisional application to determine
whether the nonprovisional application claims the benefit of a
provisional application that was filed in a language other than English
and, if so, whether an English-language translation of the provisional
application was filed in the provisional application. If the
nonprovisional application claims the benefit of a provisional
application that was filed in a language other than English and no
English-language translation of the provisional application was filed
in the provisional application, the Office will issue a notice
requiring the applicant to timely file an English-language translation
and a statement that the translation is accurate. If the Office
schedules an application that claims the benefit of a provisional
application filed in a language other than English for publication
without issuing a notice requiring the applicant to file an
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.
The situation in which a patent application publication results from a
nonprovisional application that claims the benefit of a provisional
application that was filed in a language other than English, and no
English-language translation of the provisional application was filed
in either the provisional application or the nonprovisional
application, will not occur unless: (1) The Office fails to issue a
notice during the preexamination processing of the nonprovisional
application requiring the applicant to timely file an English-language
translation of the provisional application; and (2) the applicant fails
to provide the English-language translation of the non-English-language
provisional application before the publication date of the patent
application publication. Once this situation comes to the Office's
attention, 1.78(a)(5)(iv) as now amended provides that the Office
may issue a notice requiring the applicant (in the nonprovisional
application that resulted in the patent application publication) to
provide an English-language translation of the non-English-language
provisional application and a statement that the translation is
accurate (the Office may also simply obtain its own English-language
translation of the non-English-language provisional application if that
appears to be the most convenient course of action). Failure to timely
provide an English-language translation of the non-English-language
provisional application and a statement that the translation is
accurate in reply to such a notice will result in abandonment in a
pending nonprovisional application, and may jeopardize the claim to the
benefit of the provisional application in any situation (since the
requirements of 1.78(a)(5) have not been complied with).
Comment 8: One comment questioned whether a nonprovisional
application which entered the national stage from an international
application after compliance with 35 U.S.C. 371 must include a
reference under 1.78 to the underlying international application.
Response: A reference under 1.78 to the underlying
international application is neither necessary nor appropriate in a
nonprovisional application which entered the national stage from an
international application after compliance with 35 U.S.C. 371.
See Manual of Patent Examining Procedure 1893.03(c) (8th
ed. 2001) (a national stage application filed under 35 U.S.C. 371 may
not claim benefit of the filing date of the international application
of which it is the national stage since its filing date is the date of
filing of that international application).
Comment 9: One comment suggested that the surcharge for the
unintentionally delayed submission of a priority claim was excessive.
Response: As indicated in the final rule to implement
eighteen-month publication, this surcharge amount must be sufficient to
provide an incentive for applicant to exercise care to ensure that any
desired claim under 35 U.S.C. 119, 120, 121, or 365(a) or (c) is timely
presented. As such, the surcharge amount tracks the fee amount for a
petition to revive an unintentionally abandoned application (35 U.S.C.
41(a)(7)). See Changes to Implement Eighteen-Month Publication of
Patent Applications, 65 FR at 57040, 1239 Off. Gaz. Pat.
Office at 77 (comment 8 and response).
Comment 10: One comment noted that a nonprovisional
application which entered the national stage from an international
application after compliance with 35 U.S.C. 371 has already been
published as an international application.
Response: As indicated in the final rule to implement
eighteen-month publication, the International Bureau publication of an
international application will not be included in the Office's patent
application publication search database. The Office must (re)publish
international applications that entered the national stage to place
these applications into its patent application publication search
database. The benefit gained by ensuring that these prior art documents
will be included in the Office's patent application publication search
database outweighs the cost of (re)publishing these applications.
See Changes to Implement Eighteen-Month Publication of Patent
Applications, 65 FR at 57045, 1239 Off. Gaz. Pat. Office
at 82 (comment 47 and response).
Classification
Administrative Procedure Act
The changes in this final rule 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, and
1.434. Because all of the changes relate to Office practices and
procedures, prior notice and an opportunity for public comment was not
required pursuant to 5 U.S.C. 553(b)(A) (or any other law), and
thirty-day advance publication is not required pursuant to 5 U.S.C.
553(d) (or any other law). However, because the Office desired the
benefit of public comment on this topic, the Office voluntarily
accepted comments pursuant to a published notice proposing the
above-mentioned changes.
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), the analytical
requirements of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.)
are inapplicable. As such, the regulatory flexibility analysis is not
required, and none has been provided. 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 final rule 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 final rule have been
reviewed and previously approved by OMB under the following control
numbers: 0651-0021, 0651-0031, 0651-0032, and 0651-0033.
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/08/21-27/30-32/35-37/42/43/61/62/63/64/67/68/
91/92/96/97/PTO-2053/PTO-2055.
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 \s
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. 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 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 1.14 is amended by revising paragraph (i)(2) to read
as follows:
1.14 Patent applications preserved in confidence.
* * * * *
(i) * * *
(2) A copy of an English language translation of an international
application which has been filed in the United States Patent and
Trademark Office pursuant to 35 U.S.C. 154(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 (
1.19(b)(2) or 1.19(b)(3)).
* * * * *
3. Section 1.55 is amended by revising paragraphs (a)(1)(i) and
(c) to read as follows:
1.55 Claim for foreign priority.
(a) * * *
(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 periods in this paragraph do not apply in an application under
35 U.S.C. 111(a) if the application is:
(A) A design application; or
(B) An application filed before November 29, 2000.
* * * * *
(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) 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) 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 (or
intellectual property authority), 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) must be
accompanied by:
(1) The claim under 35 U.S.C. 119(a)-(d) or 365(a) and this section to
the prior foreign application, unless previously submitted;
(2) The surcharge set forth in 1.17(t); and
(3) 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 Commissioner may require additional
information where there is a question whether the delay was
unintentional.
4. 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 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 international
application designating the United States of America, each prior-filed
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-filed 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-filed 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 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-filed 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 within the later of four months from
the date on which the national stage commenced under 35 U.S.C. 371(b)
or (f) in the later-filed international application or sixteen months
from the filing date of the prior-filed 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-filed application. The time periods in this paragraph do not
apply if the later-filed application is:
(A) An application for a design patent;
(B) An application filed under 35 U.S.C. 111(a) before November 29,
2000; or
(C) A nonprovisional application which entered the national stage after
compliance with 35 U.S.C. 371 from an international application filed
under 35 U.S.C. 363 before November 29, 2000.
(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-filed 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 a nonprovisional 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-filed 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 reference required by 35 U.S.C. 120 and paragraph (a)(2) of
this section to the prior-filed application, unless previously
submitted;
(ii) The surcharge set forth in 1.17(t); and
(iii) 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-filed
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-filed 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-filed 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-filed 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 within the later of four
months from the date on which the national stage commenced under 35
U.S.C. 371(b) or (f) in the later-filed international application or
sixteen months from the filing date of the prior-filed 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-filed provisional application. The time periods in this
paragraph do not apply if the later-filed application is:
(A) An application filed under 35 U.S.C. 111(a) before November 29,
2000; or
(B) A nonprovisional application which entered the national stage after
compliance with 35 U.S.C. 371 from an international application filed
under 35 U.S.C. 363 before November 29, 2000.
(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 prior-filed provisional application was filed in a language
other than English and an English-language translation of the
prior-filed provisional application and a statement that the
translation is accurate were not previously filed in the prior-filed
provisional application or the later-filed 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
prior-filed provisional application and a statement that the
translation is accurate. In a pending nonprovisional application,
failure to timely reply to such a notice will result in abandonment of
the application.
(6) If the reference 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)(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-filed 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 reference required by 35 U.S.C. 119(e) and paragraph (a)(5) of
this section to the prior-filed provisional application, unless
previously submitted;
(ii) The surcharge set forth in 1.17(t); and
(iii) 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.
* * * * *
5. 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.
* * * * *
6. 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.
December 19, 2001 JAMES E. ROGAN
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office