United States Patent and Trademark Office OG Notices: 22 April 2003
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: 2003-P-007]
RIN 0651-AB59
Changes to Implement Electronic Maintenance of Official
Patent Application Records
AGENCY: United States Patent and Trademark Office,
Commerce.
ACTION: Notice of proposed rule making.
SUMMARY: The United States Patent and Trademark Office
(Office) has established a 21st Century Strategic Plan to transform the
Office into a quality-focused, highly productive, responsive
organization supporting a market-driven intellectual property system.
One priority of the 21st Century Strategic Plan is the beginning-to-end
electronic processing of patent applications. The Office is proposing
changes to the rules of practice in this notice to adapt to a patent
electronic image management system. Specifically, the changes proposed
in this notice facilitate electronic data capture and processing,
streamline the patent application process, and simplify and clarify the
pertinent provisions of the rules of practice.
DATES: To be ensured of consideration, written
comments must be received on or before April 24, 2003. No public
hearing will be held.
ADDRESSES: Comments should be sent by electronic mail
message over the Internet addressed to:
PatentEFW.comments@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) 872-9411,
marked to the attention of Robert 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 would
prefer that the comments be submitted on a DOS formatted 3 1/2 inch
disk accompanied by a paper copy.
The comments will be available for public inspection at the
Office of Patent Legal Administration, Office of the Deputy
Commissioner for Patent Examination Policy, located at Room 3D65 of
Crystal Plaza 3/4, 2201 South Clark Place, Arlington, Virginia, and
will be available through anonymous file transfer protocol (ftp) via
the Internet (address: http://www.uspto.gov). Since comments
will be made available for public inspection, information that is not
desired to be made public, such as an address or phone number, should
not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Robert A. Clarke
((703) 305-9177), Senior Legal Advisor, or Robert J. Spar ((703)
308-5107), Director, Office of Patent Legal Administration (OPLA),
directly by phone, or by facsimile to (703) 305-1013, marked to the
attention of Mr. Clarke, or by mail addressed to: Box
Comments - Patents, Commissioner for Patents, Washington, DC 20231.
SUPPLEMENTARY INFORMATION: The Office is increasing
the integrity of its internal patent application record maintenance by
adopting a new electronic data processing system for the storage and
maintenance of all the records associated with patent applications.
Because the system is consistent with the data processing system used
by the European Patent Office (EPO), it will also improve information
exchange among the Intellectual Property Offices.
The system will use image technology to replace the standard
paper processing of patent applications currently used in the Office.
The paper document application file contents (including the
specification, oath or declaration, drawings, information disclosure
statements, amendments, Office actions, and file jacket notations) of
pending applications will be scanned into electronic image files. All
processing and examination will be performed with the electronic image
files, instead of the paper source documents, by all Office personnel.
The system will affect applicants minimally during the patent
application process, because the program affects internal operations
and not external communications. Applicants will continue to send and
receive Office correspondence in paper form, although the Office
encourages use of the existing alternative electronic filing system
resources for application filings and certain information disclosure
statement submissions. The proposed changes to the rules of practice in
title 37 of the Code of Federal Regulations (CFR) are designed to
improve internal operations' use of the electronic format, primarily by
easing the requirements upon applicants in amendment practice and
information disclosure statement submissions. The electronic nature of
patent records permits their viewing by the public through the Patent
Application Information Retrieval (PAIR) system, which has a number of
advantages: it provides notice to applicants of certain examination
processing activities (e.g., mailing of Office actions); it
assures confidence in the integrity of the Office records; it reduces
the handling of the records; and it allows parallel processing of the
application by various parts of the Office.
The technology and procedures for the new system are similar to
those used at the EPO, but adapted to the Office's legal requirements
and existing computer systems. The Office has incorporated the
experience and lessons learned from the previously announced prototype
program (USPTO Announces Prototype of Image Processing, 1265
Off. Gaz. Pat. Office 87 (December 17,2002)) into a
production system for all patent applications.
The electronic format of applications will reduce delays in
moving information within the Office and between the Office, the
applicant, other Intellectual Property (IP) Offices and other parties
having authority to view the records. It will also reduce the potential
for loss of records and misfiling, provide the capacity for multiple
parties to access the records simultaneously, improve the efficiency of
the publication process, and set the Office up for subsequent
improvements in electronic communication related to applications
between the Office, the applicant, and other parties.
It is also anticipated that the system will facilitate the
sharing of information between the Office and other IP Offices. The
Office anticipates that agreements to electronically transmit priority
documents to certain other IP Offices as well as search results and
other application information will be negotiated shortly. Transmission
of priority documents electronically directly to the other IP Offices
on request of the applicant is anticipated to reduce the overall costs
to the applicant and to the other IP Offices (which would receive the
certified copy in a format that is easily stored and retrieved on
demand). In tandem with this effort is a parallel effort to promote the
sharing of information (e.g., search results) concerning
related applications by the various IP Offices in order to reduce
duplication of efforts, improve the efficiency and quality of
examination efforts, and decrease workload. Thus, it is anticipated
that the Office's migration to an electronic environment together with
international negotiations will improve the efficiency and work quality
of the Office.
Discussion of Specific Rules
Section 1.3: Section 1.3 is proposed to be amended
to provide that papers presented in violation of the decorum and
courtesy requirement will not be entered. The Office is capturing
electronic images of all documents (papers) that will be the official
records of certain applications. If the Office has captured the image
as an electronic sheet(s), the Office would electronically remove the
document from the Official file (the collection of documents related to
a patent application or patent and which would be in this instance an
electronic file) and from the Office computer systems. If the Office
has not captured the image, the paper would not be entered in the
Official file (which would in this instance be a paper file). In either
event, the Office would provide notice in the Official file that the
paper will not be available to the public. If the paper is intended as
a reply to an Office action, the reply will not be considered a
bona fide reply under 1.135(c) and the period set in the
prior Office action will continue to run. Similarly, a paper submitted
in violation of 10.10(b) that is intended as a reply will not be
entered in the Official file and will not be treated as an unsigned
reply (nor as a signed reply). Therefore, the reply will not toll the
time period set in a prior Office action.
Section 1.9: Section 1.9 is proposed to be amended
to clarify that the word "paper" and "papers" refer to a
document or documents, which may be electronic records or physical
paper sheet(s).
Section 1.14: Section 1.14 explains that
applications for patents are generally preserved in confidence, and
sets forth the special circumstances (35 U.S.C. 122(a)) under which a
member of the public may have information about, copies of, or access
to a patent application. Section 1.14 is proposed to be revised to
clarify the rule and to expand the rule to provide for electronic files
and electronic exchange of documents.
Paragraph (a)(1) has been rewritten to list the records that
are available. The term "file wrapper and contents" has been
replaced with the term "file contents" to avoid confusion with the
paper (non- electronic) file jacket and its contents. Paragraph (a)(1)
rephrases the provisions of current 1.14(c) and (e) to assist the
public in understanding what applications are available to the public.
Accordingly, paragraph (a)(1), as rewritten, is divided into paragraphs
(a)(1)(i) through (a)(1)(vi) listing different types of application
files and explaining whether any part of the file content is available
to the public. For example, paragraph (a)(1)(iii) explains that
published pending applications are available to the public, upon
written request, and payment of the appropriate fee, and that the
original paper file of the pending application that was published as a
patent application publication is not available to the public. In
addition, it is proposed in the new paragraphs (a)(1)(iv) and (a)(1)(v)
that where the benefit of an application is relied upon pursuant to 35
U.S.C. 119(e), 120, 121 or 365 in certain applications, the application
will be available in the same manner that the application would have
been had the application been referenced in a U.S. patent or U.S.
patent application publication. As a result of this proposed rule
change if an application is filed as a continuation of an earlier
application, and the USPTO publishes the continuation as a patent
application publication without a reference to the earlier application,
the earlier-filed application will still be available to the public
(either the originally filed application or the entire application
file, depending upon whether the earlier-filed application is
abandoned).
Paragraph (a)(2) is proposed to be revised to combine and
restate current 1.14(a)(1) and (b). The application number of any
application that claims the benefit of the filing date of a patent or
an application that has been published may be obtained from the Patent
Application Information Retrieval (PAIR) system on the Office's web
site at: http://pair.uspto.gov.
Section 1.14 is also proposed to be amended to have a new
paragraph (b), to explain that electronic access may be provided to all
or part of certain applications. Following migration to an electronic
image file as the Official file of patent applications, access will be
provided solely to the electronic Official file and not to the original
paper document sheets used to create electronic images within the
Official file.
Proposed 1.14(c) is the same as current 1.14(d).
Paragraph (d) of current 1.14 is proposed to be redesignated as
1.14(c).
Proposed 1.14(d) is the same as current 1.14(f).
Paragraph (f) of current 1.14 is proposed to be redesignated as
1.14(d).
Section 1.14 is also proposed to be amended to have a new
paragraph (e), to provide that the Office may share its electronic
application files that have not been published or otherwise made
available to the public with another Intellectual Property (IP) Office
pursuant to an agreement between the Office and another IP Office and
if the applicant expressly consents. The written consent must be filed
in the Office for the Office to transmit, or allow access by the other
IP Office, to the application or other records associated with the
application. The migration to an electronic environment will allow the
Office to participate with other IP Offices in more rapid exchange of
information, such as priority documents, between IP Offices. It should
be noted that following publication, or where the application is
otherwise available to the public, the written consent of applicant is
not required before access to the application file is provided.
Paragraph (f) of 1.14 corresponds to paragraph (g) of
current 1.14, which is proposed to be amended to move the text from
(g) and of paragraph (g)(1) to paragraph (2), and to provide in the new
paragraph (1) that any action of the Board of Patent Appeals and
Interferences (BPAI), or any decision on petition, may be published or
made available for public inspection without applicant's or patent
owner's permission if rendered in a file open to the public pursuant
to 1.11 or available pursuant to 1.14(e)(2), an application that
has been published in accordance with 1.211 through 1.221, or in
an application claiming priority to, or the benefit of, an earlier
filing date under 35 U.S.C. 119(a)-(d), 120, 121 or 365 of an
application that has been published or patented. In paragraph (2), the
rule would provide that an action of the BPAI, or any decision on
petition, not publishable under paragraph (1) of this section, may be
published or made available for public inspection if the Director
believes the action or decision involves an interpretation of patent
laws or regulations that would be of important precedential value; and
the applicant, or any party involved in the interference, does not
within two months after being notified of the intention to make the
action or decision public, object in writing on the ground that the
decision discloses a trade secret or other confidential information and
states that such information is not otherwise publicly available. If an
action or decision discloses such information, the applicant or party
shall identify the deletions in the text of the action or decision
considered necessary to protect the information. If the applicant or
the party considers that the entire action or decision must be withheld
from the public to protect such information, the applicant or party
must explain why. Applicants or parties will be given time, not less
than twenty days, to request reconsideration and seek court review
before any portions of actions or decisions are made public over their
objection. This procedure is the same as that of current paragraph
(g)(2), but has been reworded for clarity and also to use the
terminology "any action" of the BPAI or "decision on petition"
would be publishable, whereas the current rule uses the terminology
"decision by the Director or the BPAI".
Generally, patent applications are maintained in confidence
unless the Director finds "special circumstances" due to which
information about an application or the application itself may be
released. See 35 U.S.C. 122(a). Section 1.14 sets forth when some such
"special circumstances" have been found, and specifies when release
of information about an application or access to all or part of an
application may be provided without a petition. Accordingly, as one
example of a "special circumstance," as proposed to be amended with
new paragraph (f)(1), a BPAI decision would be published, even if the
decision does not involve an interpretation of patent laws or
regulations that would be precedential so long as the application
claims priority to or the benefit of an earlier application that has
been published or patented (e.g., a Japanese patent
application). The BPAI decision would be published even if the
application in which the decision was made requests nonpublication of
the application, and the application is not itself patented.
Proposed 1.14(g) is the same as current 1.14(h), which is
proposed to be redesignated as 1.14(g).
Proposed paragraph (h) of 1.14 corresponds to current
1.14(i), and is further proposed to be amended to explain the meaning
of the terms "Home Copy," "Search Copy," and "Examination
Copy," and by inserting "of the publication" after "English
language translation" in paragraph (b)(2). Section 13204 of Public
Law 107-273 made a technical change to the provisional rights
provisions of the patent statute as to international applications to
clarify that a translation of the international publication, as opposed
to the international application, is required to be filed in order for
a patent owner to obtain provisional rights pursuant to 35 U.S.C.
154(d). In view of this change to the statute, the corresponding
reference to the translation in 1.14 is proposed to be changed to
add "a publication of an international patent application" after
"English language translation of." In addition, it is proposed that
the parenthetical phrase at the end of paragraph (h)(1), referencing
the fee for a copy of an international application file, or a copy of a
document in a file, be changed from a reference to 1.19(b) rather
than 1.19(b)(2) or 1.19(b)(3), the fees for the contents of a
file or a CD, and the parenthetical phrase at the end of paragraph
(h)(2), referencing the fee for a copy of an English language
translation in a file, be corrected to refer to 1.19(b)(4), the fee
for a document, rather than 1.19(b)(2) or 1.19(b)(3).
Proposed 1.14(i) is the same as current 1.14(j), which is
proposed to be redesignated as 1.14(i)
As proposed to be amended, 1.14 will apply to all patent
applications filed before, on, or after the date that the amendment to
1.14 becomes final.
Section 1.17: Section 1.17 is proposed to be amended
to eliminate the reference to returning information in paragraph (h)
because expunged information will not be returned under 1.59 as
proposed to be amended.
Section 1.19: Section 1.19 is proposed to be amended
by revising paragraph (b)(1) to eliminate the fee for providing an
electronic copy of an application as filed to another IP Office if
applicant consents in writing by filing an authorization under 35
U.S.C. 122(a) to permit the Office to exchange information related to
the entire file record of the application with the other IP Office. The
electronic transmission would serve as the certified copies of
applications as filed that can be required by the other IP Offices
under Article 4(D)(3) of the Paris Convention.
Section 1.52: Section 1.52 is proposed to be amended
to clarify the requirement for proper paper sizes in paper
communications submitted to the Office and to set forth the analogous
requirements for electronic communications.
The Office plans to capture electronic images of all documents
that form the record of patent examination. These images will form the
Official file of the application. Applicants will have the option of
submitting application documents and other communications to the Office
on paper, by facsimile transmission, or via the Office's electronic
filing system (EFS). The existing requirements for paper and facsimile
submissions (as well as the prohibition against filing patent
applications by facsimile, see 1.6(d)(3)) are retained, and the
requirements for electronic submissions are added. One newly added
requirement for paper submissions requires that the papers not be
permanently bound because the papers must be readily separable for
scanned entry into the image system. The use of binder clips or
standard office staples will generally be acceptable. The detailed
requirements for electronic submissions are provided in the Office's
EFS documentation (available electronically at http://www.uspto.gov)
and the proposed amendments direct the affected party's attention to
those requirements.
Paragraph (a)(1) of 1.52 is proposed to be amended to
clarify that it pertains to paper and facsimile submissions, and that
such submissions not be permanently bound together.
Paragraph (a)(2) of 1.52 is proposed to be amended to
clarify that it pertains to paper and facsimile submissions.
Paragraph (a)(3) of 1.52 is proposed to be amended to
clarify that it pertains to paper and facsimile submissions.
Paragraph (a)(5) of 1.52 is proposed to be amended to
clarify that it pertains to paper and facsimile submissions.
Paragraph (a) of 1.52 is also proposed to be amended by
adding paragraphs (a)(6) and (a)(7) to set forth that papers submitted
electronically must comply with the Office's EFS requirements and that
failure to comply will result in a requirement for correction.
Paragraphs (b)(3) and (b)(4) of 1.52 are proposed to be
amended to clarify that the requirements for the abstract and claims to
begin on a separate sheet on physical paper are similarly required to
begin on a separate electronic page in an electronic submission.
Paragraph (b)(7) of 1.52 is proposed to be amended to
explain the consequences of a failure to provide compliant papers
within the set time period. That is, as proposed to be amended, the
rule will provide that compliant papers must be provided within the set
time period in order to avoid abandonment of the application in the
case of an applicant for patent, termination of proceedings in the case
of a patent owner in a reexamination proceeding, or refusal of
consideration of the papers in the case of a third party requester in a
reexamination proceeding.
Section 1.59: Section 1.59 is proposed to be amended
to eliminate references to returning documents that have been expunged
to recognize that, with electronic Official files, there will be
nothing to return when a paper is expunged. The Office is capturing
electronic images of all documents that form the Official file. Where
the image is generated from a physical source document, the originating
document may be disposed of once the electronic image accuracy is
verified. Therefore, if a document is to be expunged from the record,
the only operation that will be required will be removal of the image
from the Official file. Paragraph (a)(1) of 1.59 is proposed to be
amended by deleting the phrase "and returned" from the first
sentence, and deleting the second sentence. Paragraph (b) of 1.59 is
proposed to be amended by deleting the phrase "and return" from
each of the first and second sentences.
Section 1.71: Section 1.71 is proposed to be amended
by adding a new paragraph (f) to require that the first page of a
specification commence on a new sheet and to require that no sheet
including part of the text of the specification include any other
material. Claims must also commence on a new sheet and in accordance
with the proposed changes to 1.75, must not include other parts of
the application.
Section 1.72: Paragraph (b) of 1.72 is proposed
to be amended to prohibit the paper presenting the abstract to include
any other portions of the application or other material. Presentation
of material other than the abstract on the same page as the abstract
makes the electronic indexing of the application more difficult. In
addition, it is proposed to remove the last sentence of paragraph (b)
to eliminate the prohibition on using the abstract to be used to
interpret the claims to conform the rule to be consistent with Federal
Circuit case law. See Hill-Rom Co. v. Kinetic Concepts, Inc.,
209 F.3d 1337, 1341 n.*, 54 USPQ2d 1437, 1440 n.1 (Fed. Cir.
2000).
Section 1.75: Paragraph (h) of 1.75 is proposed
to be amended to prohibit a paper presenting claims from including any
other portions of the application or other material. Presentation of
material other than the claims on the same page as one or more claims
makes the electronic indexing of the application more difficult.
Section 1.97: Section 1.97 is proposed to be amended
to move the last date on which an information disclosure statement
(IDS) may be filed to the day prior to the mailing of the next Office
action from the Office.
Sections 1.97(b) and (c) are proposed to be amended to move the
last date onwhich an IDS may be filed from the day of mailing of an
Office action to the day before the mailing of an Office action.
Section 1.97(b)(3) is proposed to be amended to require filing
of an IDS before the day of the mailing of the first Office action.
Section 1.97(b)(4) is proposed to be amended to require filing
of an IDS before the day of the mailing of the first Office action
after the filing of a request for continued examination under 1.114.
Section 1.97(c) is proposed to be amended to require filing of
an IDS before the day of the mailing of any of a final action under
1.113, a notice of allowance under 1.311, or an action that
otherwise closes prosecution in the application, provided it is
accompanied by one of: (1) The statement specified in 1.97(e); or
(2) the fee set forth in 1.17(p).
With PAIR, applicants can easily determine when Office actions
are mailed by reviewing the change of status information for an
application that is available over the Internet. Unless applicants are
required to submit an IDS before Office actions are mailed, applicants
may unfairly delay prosecution to meet their short-term needs by
mailing an IDS on the same day as Office actions are mailed upon seeing
that a mailing occurred through PAIR. Therefore, in order to promote
efficient processing and provide the benefits of PAIR, a change in the
"mailing rule" is being proposed.
Section 1.98: Section 1.98 is proposed to be amended
by adding a new paragraph (e), which provides that the requirement in
1.98(a)(2)(i) for a copy of all listed U.S. patents and U.S. patent
application publications does not apply to any IDS submitted in
compliance with the Office's electronic filing system. Thus, for any
IDS submitted to the Office via the Office's EFS, paper copies of U.S.
patents and U.S. application publications cited in the IDS would no
longer have to be supplied by applicants.
An EFS software upgrade has added an IDS, submitted under the
provisions of 1.97 and 1.98, as a type of electronic submission
that may be made via the Office's EFS. Currently, the EFS may only be
used to submit: (1) Certain non-provisional utility patent
applications; (2) provisional applications; (3) biotechnology sequence
listings; (4) copies of patent applications for purposes of having the
copies of the patent application published (redacted publication,
republication as amended, or voluntary publication); (5) assignments of
patents and applications; and (6) Information Disclosure Statements.
See Legal Framework for the Use of the Electronic Filing System,
1263 Off. Gaz. Pat. Office 60, 61 (Oct. 8, 2002). With
the EFS software upgrade, an applicant is able to electronically
transmit an IDS with the filing of a new utility patent application, or
as a subsequent filing. This EFS software upgrade is NOT usable for
third party information disclosure submissions under 1.99. The IDS
submission via EFS is the only electronic substitute for a paper IDS
submission contemplated. EFS has been available to the general public
for limited electronic filing since October 2000. See Electronic
Filing System Available to Public, 1240 Off. Gaz. Pat.
Office 45 (Nov. 14, 2000).
Applicants may file an IDS via EFS by (1) entering the
references' citation information in a fillable electronic form,
equivalent to the paper PTO-1449 form (or revised form PTO/SB/08A and
08B) by using EFS software; and (2) transmitting the fillable
electronic form data to the Office via EFS. This electronic EFS form
currently allows only citations for U.S. patents and U.S. patent
application publications. If any references to foreign patent documents
or non-patent literature documents or unpublished U.S. applications are
to be cited, then applicants will continue to submit those citations on
a separate, conventional paper PTO-1449 form (or equivalent form)
delivered with a printed copy of each cited foreign patent document,
non-patent literature document and unpublished U.S. application via
mail, facsimile transmission, or hand delivery. Applicants need not
send the Office copies of any U.S. patent or U.S. application
publication documents cited on a fillable electronic IDS form that is
electronically transmitted to the Office via EFS. In those instances in
which an applicant sends an IDS on the same day by EFS and by
conventional delivery, and a fee under 1.97 is due, only one fee
will be due if the applicant informs the Office in the conventional
submission that such a submission is associated with an electronic
submission on the same day in which the fee was paid.
The EFS software provides a fillable electronic IDS form
equivalent to a paper PTO-1449, Information Disclosure Statement form,
in which citations for up to 50 U.S. patents and up to 50 U.S. patent
application publications may be entered. This EFS fillable form has
fields where statements of relevance and where notifications that the
documents were cited in a communication from a foreign patent Office in
accordance with 1.97(e) may be given. The EFS upgrade validates the
format of data entered into the fillable electronic IDS form and
provides the means to specify whether this fillable EFS IDS form is to
be linked to an accompanying new application filing or is being filed
in a previously filed application, and transmit the XML formatted IDS
data on the fillable electronic form to the Office. The EFS software
also provides fields to enter required fee payment information under
1.97(c)(2) and (d)(2).
The fillable, EFS IDS form will be entered as a paper (but will
actually be part of an electronic database) into the application file
contents indicating that it was received on the date the complete
transmission containing the form was received in the Office via EFS.
This is the date the Office will refer to in considering compliance
with 1.97.
Examiners will consider the U.S. patents and U.S. application
publications cited on an EFS transmitted IDS form provided the
remaining requirements of 1.97 and 1.98 are met, by reviewing
electronic or printed copies produced from the Office's electronic
databases. It will be most important that the cited patent and
application publication numbers be accurate and devoid of transcription
error. There will be no applicant-provided copies of the disclosed
documents in the application file for the examiner to review. Instead,
because the Office will electronically retrieve the patents and
application publications so identified by those numbers, the examiner
will only be able to consider the documents so identified. As a
corollary, examiners will only consider what is actually cited. Where,
for example, an error is made in transcribing a U.S. patent number, and
the examiner, after retrieving the patent associated with the number as
entered in the IDS, determines that the patent associated with the
number as entered in the IDS is not the correct number, because the
inventor's name and issue date entered in the IDS does not match the
corresponding data on the patent associated with the patent number
entered in the IDS, the examiner will follow the procedure regarding
the handling of non-complying information disclosure statements set
forth in section 609 III(C)(1) of the Manual of Patent
Examination Procedure (8th ed. 2001) (MPEP). The examiner may
either initial the paper copy printed from the electronic IDS to
indicate that the erroneously cited patent has been reviewed or line
through the citation as not in compliance with 1.98.
The only procedure for having such documents considered when an
erroneous patent or application publication number is cited in an eIDS
will be by citing the correct document identifying number in a
subsequent IDS, either paper or electronic, that conforms to the
requirements of 1.97 and 1.98, as specified in MPEP 609 III(C)(1)
regarding corrections of the information in non-complying information
disclosure statements.
The IDS may be submitted as part of an EFS electronic
application filing, or subsequent to an application filing, either in
paper or via EFS. The ePAVE program will prompt the filer to associate
an IDS file with a new application file and to provide payment
information, where either is appropriate. As with the other types of
electronic submissions, ePAVE will validate the format, display it to
the filer, prompt for the filer's electronic signature, use the filer's
digital certificate (a digital certificate may be obtained from the
Office's Electronic Business Center), to encrypt the whole package, and
transmit the submission to the Office. Upon receipt, the Office will
send to the filer an electronic post card "Acknowledgement
Receipt", including a server date stamp, a unique server number, the
application number, and confirmation of the number of the files
received by the Office. If the IDS submission is subsequent to the
application filing, the filer will be required to enter both an
application number and a confirmation number. A confirmation number is
an additional four-digit identifier assigned to an application, and can
be found in the upper left-hand corner of the official filing receipt.
A filer will be required to have a customer number, obtained from the
Office's Electronic Business Center, and an Office provided digital
certificate to use EFS as with current practice.
Section 1.99: Section 1.99 is proposed to be amended
to provide that the Office will not enter any explanation of the
patents or publications, or any other information (that is not limited
to patents or publications) included in a submission. The Office will
also not enter a submission that is not in compliance with the
requirements of this section. The Office is capturing electronic images
of all documents that form the Official file of certain applications
and the original paper documents, if stored, will be stored off-site
and will not be easily accessible, and if destroyed, will not be
available. Therefore, any submission, or part of the submission, that
is not in compliance with this section would not be captured as
electronic images and, if such documents have been entered into the
Official file, the Office will electronically remove the documents from
the Official file.
Paragraph (d) of 1.99 is proposed to be amended by deleting
the word "dispose of" and replacing it with "not enter."
Paragraph (e) of 1.99 is proposed to be amended by deleting the
phase "returned or discarded" and replacing it with "will not be
entered".
Section 1.121: The manner of making amendments to
the specification, claims and drawings is being revised with proposed
changes to 1.121. While the process of making amendments would
generally remain the same, relying on the use of replacement versions
of the specification, claims and drawing figures, the process for
submitting amendments is simplified. The submission of two versions
(clean and marked-up) of amended subject matter, and the attendant
editorial difficulties associated with this practice, will no longer be
required other than for substitute specifications. For amending the
specification ( 1.121(b)(1) and (b)(2)), applicants would be required
to submit a replacement paragraph or section marked-up to show changes
relative to the immediate prior version. No clean version of
replacement paragraphs or sections would be required. When the
specification is to be amended extensively, a substitute specification
marked-up to show changes relative to the immediate prior version would
be submitted, as per 1.125 which is invoked by 1.121(b)(3). In
this situation, a clean version of the specification would also be
required, as per current 1.125(c). For amending the claims (
1.121(c)), applicants would be required to provide replacement claims
(marked-up to show changes relative to the immediate prior version) as
part of a complete listing of all the claims in the application each
time a claim is amended, which listing would include the status of each
claim, and the text of each pending claim under examination. No
separate clean version would be required at the time a claim is
amended. For amending drawing figures ( 1.121(d)), applicants would
be required to submit a replacement figure with the changes made. No
pre-approval of proposed changes in red ink will be required. In each
situation, an explanation of the changes must be supplied.
This proposed revised process for amending the specification,
claims and drawing figures of pending patent applications will further
facilitate the advent of electronic examination in the Office. The
principal feature of this proposal, and the one which would most
significantly impact the examination process, would require that a
complete listing of claims (which includes the status of all claims and
the text of pending claims under examination) be submitted as part of
each amendment document that includes any amendments to the claims,
with the complete listing totally replacing any and all previous
versions of claims throughout an application. The conversion of all
paper-based application files into electronic image format, together
with the proposed changes to amendment practice, will enable the
complete listing of all of the claims to be conveniently located and
easily accessed on a computer screen for review by a patent examiner or
the applicant, or where the application is open to the public.
In order to promote uniformity and consistency of practice, the
Office, in the proposed changes to 1.121, would require applicants
to utilize only strike-through for deleted subject matter and
underlining for added subject matter as markings to show changes made.
No other method of markings will be permitted.
As a result of the adoption of the proposed changes to
1.121, applicants will, in most cases, no longer be required to
reproduce lengthy segments of the specification in both clean and
marked-up versions. Only a marked-up version of a replacement paragraph
or section will be required. Where a substitute specification has been
provided because of extensive amendments, the substitute specification
should be supplied as a clean replacement version, which will be
entered. A marked-up version is also necessary to the examination
process to show the examiner the changes that were made. These
requirements are the same as the current requirements of 1.125(b)
and (c) for submitting a substitute specification. With respect to the
claims, the proposed changes will result in the filing of a complete
listing of all of the claims in the application, and the status of each
claim (in the listing), in a single amendment document each time an
amendment to the claims is made. The status of every claim will be
indicated in a parenthetical expression following each claim number,
using the identifiers "(original)", "(previously amended)",
"(currently amended)", etc. Only the claims being changed at the
time an amendment is filed will include the markings to show the
changes. Claims not currently amended will be presented in the same
amendment document in clean version. Applicants will no longer be
required to submit both a clean version and a separate marked-up
version of claims being changed. Further, the submission of a clean
version in addition to a marked-up version is strongly discouraged.
Dual versions (clean and marked-up) may get confused and the wrong
version may get entered into the application file. In such an event, an
incorrect message would be given, as providing any claim text in clean
version will be taken to be an assertion by applicants that no changes
have been made relative to the immediate prior version. The burden of
ensuring accuracy between the most recent and the prior versions would
be borne by applicants.
Amendments to a drawing figure will be made by submitting the
actual changes in a replacement drawing sheet which is in compliance
with 1.84. If multiple drawing figures are on a single drawing
sheet, the replacement drawing sheet should include the figures which
have not been revised as well as the revised drawing figure(s). A
detailed explanation of each of the changes made to a drawing figure
must also be provided in a separate section of the amendment document.
If the changes are not acceptable to or approved by the examiner, the
applicant would be notified and given a requirement for corrective
action in the next Office action. In the absence of an objection to the
drawings, no further drawing submission by applicant will be required.
The proposed changes to amendment practice, if adopted in the
final rule, will provide amendments ready for scanning and indexing
into an electronic image format and incorporated into an electronic
file wrapper that will be available and accessible to examiners on
their individual PCs for further examination. Due to the large backfile
of pending applications in the Office, the implementation of the
scanning system and the creation of electronic file wrappers will be
phased into the technology centers over a period of time. The proposed
changes to the rule will require applicants to consolidate all of the
claims of any currently pending application into a single amendment
document each time any claim is amended, or a new claim is added. In
the final rule, if it is adopted as proposed, all amendment documents
will be required to include the full text of all pending claims (except
for withdrawn claims) with their status in parentheses after the claim
numbers, as well as an indication of the status of any claims which
have been currently or previously canceled or withdrawn.
Section 1.121(b) is proposed to be amended to clarify that
applicants must make amendments to the specification by use of (1)
replacement paragraph, or (2) replacement section. Provisions for
submitting a substitute specification have been cross-referenced to
1.125. Provisions for amending claims are provided for in other
sections of this rule (paragraph (c)).
It is proposed that paragraphs (b)(1)(ii), (b)(2)(ii) and
(b)(3)(ii) be changed to require that the amendment include a version
of the amended paragraph, section or substitute specification (by
reference to 1.125) marked-up to show the changes by using
"strike-through" as the method for showing deletions of subject
matter in the specification. Similarly the Office proposes to require
underlining to show additions of subject matter. Only strike-through
and underlining should be used as the method to show changes.
It is further proposed to eliminate current paragraphs
(b)(1)(iii), (b)(2)(iii) and (b)(3)(iii).
It is proposed to add new paragraph (b)(5) to indicate that
precise instructions as to location of the changes must be provided for
entry of amendments to the specification. Deletion of a paragraph or
section may be made by instruction to cancel only; no actual text to be
canceled should be submitted. Once an amended paragraph, section, or
substitute specification is presented in an amendment document, there
is no further need for the applicant to re-present the amended
submission in a subsequently filed amendment document.
It is proposed to replace current paragraphs (c)(1) through
(c)(3) with revised paragraphs (c) and (c)(1) through (c)(5). Paragraph
(c) as revised would provide for a total rewriting of a claim each time
the claim is amended, including markings to show the changes being made
relative to the immediate prior version of the claim. This section
would also require submitting a complete listing of all pending claims
in the application, including the status of each and every claim in
every amendment document that includes an amendment to the claims. This
listing would replace all prior versions of the claims (except for any
withdrawn claims), and listings of the claims in the application. The
claim status required with each amendment document would be indicated
in a parenthetical expression following the claim number. The status of
all claims in the application, even those previously canceled or
withdrawn, would be indicated with each amendment document.
In order to promote uniformity and consistency, only the
following defined identifiers should be used to indicate the status of
the claims (in parentheses after the claim number):
(Original): Claim filed with the application
(Currently amended): Claim being amended in the current amendment
document
(Previously amended): Claim not being currently amended, but which was
amended in a previous amendment document
(Canceled): Claim deleted from the application
(Withdrawn): Claim still in the application, but in a nonelected status
(Previously added): Claim added in an earlier amendment document
(New): Claim being added in the current amendment document
(Reinstated - formerly claim #_): Claim deleted in an earlier amendment
document, but represented with a new claim number in current amendment
(Previously reinstated): Claim deleted in an earlier amendment and
reinstated in an earlier amendment document
(Re-presented "formerly dependent claim #_): Dependent claim
re-presented in independent form in current amendment document
(Previously re-presented): Dependent claim re-presented in independent
form in an earlier amendment, but not currently amended
As a result of this proposed change, each amendment document
would be self-contained, i.e., it would include a complete
set of claims for examination and would provide the status of all of
the claims in one location in the file.
An example of how the claims, and the status of the claims,
would be presented is as follows (use of the word "claim" before
the claim number is optional):
Claims 1-5 (canceled) (Note: consecutive canceled or withdrawn
claims may be aggregated)
Claim 6 (withdrawn)
Claim 7 (previously amended): A bucket with a handle
Claim 8 (currently amended): A bucket with a green blue handle
Claim 9 (withdrawn)
Claim 10 (original): A bucket with a wooden handle
Claim 11: (new): A bucket with plastic sides and bottom
Paragraph (c)(1) would require the use of strike-through (for
deletions) and underlining (for additions) to indicate how an amended
claim differs from its immediate prior version. The proposed amendment
to this section eliminates the previously accepted use of equivalent
marking systems. No other method of markings or comparison (other than
strike-through and underlining) would be permitted. Only claims of the
status "currently amended" would include markings showing changes
made.
Paragraph (c)(2) would require that the current amendment
document include not only the marked-up version of claims being
currently amended, but also the submission of a clean version of
pending claims not being amended in the current amendment document. The
presentation of clean text (not underlined) in any claim would
constitute an assertion that no changes have been made from the
immediate prior version of the same claim. This would relieve the
Office of the burden of cross-reading various versions of the same
claim to ensure accuracy of rewritten claims. The text of canceled or
withdrawn claims should not be presented in each amendment document;
these claims should be indicated as being in the status of
"(canceled)" or "(withdrawn)".
Paragraph (c)(3) would provide for the cancellation of any
claim by mere instructions to cancel. If no instructions to cancel a
specific claim were submitted in an amendment paper, listing the claim
as canceled in the claim status would constitute an instruction to
cancel the claim; no other instruction would be necessary. Any added
claims (in the current amendment document) should be merely identified
in the status parenthetical expression as "(new)" and should not be
underlined.
As proposed in paragraph (c)(4), the claims should be presented
in ascending numerical order. This would prevent the grouping of claims
by status (all new claims together, all amended claims together, etc.),
and ensure a complete set of claims in numerical order, regardless of
status. Consecutive claims of the same status, however, could be
aggregated (e.g., "Claims 1-5 (previously canceled)").
Further, it is proposed to revise paragraph (c)(4) to require that any
sheet of an amendment paper including part of the text of a claim shall
not include material directed to any other part of the amendment or any
remarks concerning the claims. This requirement will facilitate
indexing of the application papers.
Paragraph (c)(5) would require that a claim canceled in its
entirety could only be reinstated if presented as a new claim with a
new claim number.
Paragraph (d) would require that any drawing changes be
submitted in compliance with 1.84 on replacement sheets in an
attachment to an amendment document. An accompanying detailed
explanation of all of the changes would be provided on a separate sheet
in the drawing amendments or remarks section of the amendment document.
Any amended replacement drawing sheet should include all of the figures
appearing on the immediate prior version of the sheet, even though only
one figure may be amended. The figure or figure number of an amended
drawing should not be labeled as "amended." If a drawing figure is
to be canceled, the appropriate figure must be removed from the
replacement sheet, and where necessary, the remaining figures must be
renumbered. Additional replacement sheets may be necessary to show the
renumbering of the remaining figures. The replacement sheet(s) should
be labeled "Replacement Sheet" in the page header so as not to
obstruct any portion of the drawing figures. If the changes are not
accepted by the examiner, the applicant would be notified and informed
of any required corrective action in the next Office action. No further
drawing submission of the amended drawing figure(s) by applicant would
be required, unless applicant is so notified.
As proposed in paragraph (d)(1), the applicant would be
permitted to provide a marked-up copy of any figure being amended with
the amendment document. This mark-up would be used by the Office to
determine the changes being made in the drawings.
As proposed in paragraph (d)(2), examiners would be permitted
to require a marked-up copy of a figure that has been or is required to
be revised. The examiner may make the requirement in an Office action
requiring a drawing correction, or after a drawing amendment has been
made.
A change is proposed to the last line of paragraph (g) in order
to bring it into conformity with earlier changes, "(c)(1)" is
changed to "(c) and (c)(1) through (c)(5)".
It is proposed that paragraph (h) be added to require that each
section of an amendment (e.g., amendments to the claims,
amendments to the specification, replacement drawings, remarks) begin
on a separate sheet of the amendment paper.
Paragraphs (h), (i), and (j) have been renamed as (i), (j), and
(k), respectively.
Section 1.125: Paragraph (b) is proposed to be
revised to add a cross-reference to 1.312 to remind applicants that
for submissions of substitute specifications filed after the notice of
allowance has been mailed and up to the time of payment of the issue
fee, entry of the substitute specification is not a matter of right.
Paragraphs (c) of 1.125 is proposed to be revised to require
the presentation by applicant of both a marked-up version of the
specification (using strike-through to indicate deleted subject matter
and underlining to indicate added subject matter) and a clean version
without markings.
Section 1.823: Section 1.823 is proposed to be
amended by revising paragraph (a)(1) to require that any sheet
including a part of a sequence listing not include material other than
part of a sequence listing. This change is to facilitate indexing of
the specification.
Rule Making Considerations
Administrative Procedure Act: This notice proposes
changes to the rules of practice that facilitate electronic image
record management of patent application files to support the
beginning-to-end electronic processing of patent applications. The
changes proposed in this notice are limited to the format for and the
manner of making amendments to patent applications, the handling of
patent applications and other papers within the Office, the manner of
filing information disclosure statements, and the procedures for
electronic exchange of priority documents with other intellectual
property offices. Therefore, these changes involve rules of agency
practice and procedure under 5 U.S.C. 553(b)(A). See Bachow
Communications Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001).
Therefore, prior notice and opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b) or (c) (or any other law).
Nevertheless, the Office is providing this opportunity for public
comment on the changes proposed in this notice because the Office
desires the benefit of public comment on these proposed 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), 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 rule making 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 rule making has been
determined to be not significant for purposes of Executive Order 12866
(Sept. 30, 1993).
Paperwork Reduction Act: This proposed rule involves
information collection requirements which are subject to review by the
Office of Management and Budget (OMB) under the Paperwork Reduction Act
of 1995 (44 U.S.C. 3501 et seq.). The collections of
information involved in this proposed rule have been reviewed and
previously approved by OMB under the following control numbers
0651-0021, 0651-0031, 0651-0032 and 0651-0033. The United States Patent
and Trademark Office is not resubmitting an information collection
package to OMB for its review and approval because the changes in this
proposed rule would not affect the information collection requirements
associated with the information collection under OMB control numbers
0651-0021, 0651-0031, 0651-0032 and 0651- 0033.
The title, description and respondent description of each of
the information collections is shown below with an estimate of the
annual reporting burdens. Included in the estimate is the time for
reviewing instructions, gathering and maintaining the data needed, and
completing and reviewing the collection of information. The principal
impacts of the changes in this proposed rule are to (1) expressly
provide for the electronic submission of an information disclosure
statement; (2) provide for a slight change in the format of an
application being filed in order to accommodate for the scanning and
indexing of different sections of the application file; and (3) provide
for a change in the manner of making amendments to an application
consistent with the Office's efforts to establish a patent electronic
image management system.
OMB Number: 0651-0021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101,ANNEX/134/144, PTO-1382,
PCT/IPEA/401, PCT/IB/328, PTO/SB/61/PCT, PTO/SB/64/PCT.
Type of Review: Approved through December of 2003.
Affected Public: Individuals or Households, Business or
Other For-Profit, Federal Agencies or Employees, Not-for-Profit
Institutions, Small Businesses or Organizations, farms, and State,
Local or Tribal Government.
Estimated Number of Respondents: 331,407.
Estimated Time Per Response: 0.25 (15 minutes) to 4.0 (4
hours).
Estimated Total Annual Burden Hours: 401,202 hours.
Needs and Uses: The information collected is required by the
Patent Cooperation Treaty (PCT). The general purpose of the PCT is to
simplify the filing of patent applications on the same invention in
different countries. It provides for a centralized filing procedure and
a standardized application format.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers:
PTO/SB//08A/08B/21/22/23/24/25/26/27/30/31/32/35/37/ 36/ 42/43/61
61/PCT/62/63/64 64/PCT/67/68/91/92/96/97 PTO-2053-A/B PTO-2054-A/B
PTO-2055-A/B.
Type of Review: Approved through April of 2003.
Affected Public: Individuals or Households, Business or
Other For-Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 2,247,270.
Estimated Time Per Response: 1 minute 48 seconds to 4 hours.
Estimated Total Annual Burden Hours: 1,021,822 hours.
Needs and Uses: During the processing for an application for
a patent, the applicant/agent may be required or desire to submit
additional information to the 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; Submission of priority documents and Amendments.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07/13PCT/16-19/29/101-110.
Type of Review: Approved through April of 2003.
Affected Public: Individuals or Households, Business or
Other For-Profit Institutions, Not-For-Profit Institutions, farms,
Federal Government, and State, Local, or Tribal Governments.
Estimated Number of Respondents: 319,350.
Estimated Time Per Response: 24 minutes to 10 hours and 75
minutes.
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, Provisional Application
Coversheet, and Plant Patent Application Declaration will assist
applicants in complying with the requirements of the patent statute and
regulations, and will further assist the Office in processing and
examination of the application.
OMB Number: 0651-0033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/44/50/51, 51S/52/53/55/56/57/58,
PTOL-85B.
Type of Review: Approved through January of 2004.
Affected Public: Individuals or Households, Business or
Other For-Profit Institutions, Not-For-Profit Institutions, farms,
State, Local and Tribal Governments, and Federal Government.
Estimated Number of Respondents: 205,480.
Estimated Time Per Response: 0.03 (2 minutes) to 2.0 (2
hours).
Estimated Total Annual Burden Hours: 63,640 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, OMB,
725 17th Street, NW., Washington, DC 20503, (Attn: PTO Desk Officer).
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 1.3 is revised to read as follows:
1.3 Business to be conducted with decorum and courtesy.
Applicants and their attorneys or agents are required to
conduct their business with the United States Patent and Trademark
Office with decorum and courtesy. Papers presented in violation of this
requirement will be submitted to the Director and will not be entered.
Complaints against examiners and other employees must be made in
correspondence separate from other papers.
3. Section 1.9 is amended by adding paragraph (R) to read as
follows:
1.9 Definitions.
* * * * *
(R) Paper as used in this Chapter means a document that may
exist in electronic, computer readable form or in physical form, and
therefore does not necessarily imply physical sheets of paper.
* * * * *
4. Section 1.14 is revised to read as follows:
1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application
information. Patent applications that have not been published
under 35 U.S.C. 122(b) are generally preserved in confidence pursuant
to 35 U.S.C. 122(a). Information concerning the filing, pendency, or
subject matter of an application for patent, including status
information, and access to the application, will only be given to the
public as set forth in 1.11 or in this section.
(1) Records associated with patent applications other than
international applications (see paragraph (h) of this section for
international applications) shall be available in the following
situations:
(i) Patented applications and Statutory Invention
Registrations. The file of an application that has issued as a
patent or published as a statutory invention registration is available
to the public as set forth in 1.11(a). A copy of the patent
application-as-filed, the file contents of the application, or a
specific document in the file of such an application shall be provided
upon request and payment of the appropriate fee set forth in
1.19(b).
(ii) Published abandoned applications. The file of
an abandoned application that has been published as a patent
application publication is available to the public as set forth in
1.11(a). A copy of the application-as-filed, the file contents of the
published application, or a specific document in the file of the
published application shall be provided to any person upon request, and
payment of the appropriate fee set forth in 1.19(b).
(iii) Published pending applications. A copy of the
application-as-filed, the file contents of the published application,
or a specific document in the file of a pending application that has
been published as a patent application publication shall be provided to
any person upon request, and payment of the appropriate fee set forth
in 1.19(b). If a redacted copy of the application was used for the
patent application publication, the copy of the specification,
drawings, and papers may be limited to a redacted copy. The Office will
not provide access to the paper file of a pending application that has
been published, except as provided in paragraph (c) or (i) of this
section.
(iv) Unpublished abandoned applications (including
provisional applications) that are referenced in certain
documents. The file contents of an abandoned application that is
referenced in a U.S. patent, Statutory Invention Registration, a U.S.
patent application publication, or an international patent application
publication of an international appaccordance with PCT Article 21(2) are available to the public, if a
written request is submitted. Also, the file contents of an abandoned
application that is relied upon under 35 U.S.C. 119(e), 120, 121, or
365 by an application that has issued as a U.S. patent, or in an
application that has published as a Statutory Invention Registration,
U.S. patent application publication, or an international patent
application publication that was published in accordance with PCT
Article 21(2) are available to the public, if a written request is
submitted. A copy of the application-as-filed, the file contents of the
application, or a specific document in the file of the application
shall be provided to any person upon written request, and payment of
the appropriate fee ( 1.19(b)).
(v) Unpublished pending applications that are referenced
in certain documents. A copy of the application-as-filed of a
pending application that is referenced in a U.S. patent, Statutory
Invention Registration, a U.S. patent application publication, or an
international patent application publication that was published in
accordance with PCT Article 21(2) shall be provided to any person upon
written request, including the fee set forth in 1.19(b)(1). Also, a
copy of the application-as-filed of a pending application that is
relied upon under 35 U.S.C. 119(e), 120, 121, or 365 by an application
that has issued as a U.S. patent, or in an application that has
published as a Statutory Invention Registration, a U.S. patent
application publication, or an international patent application
publication that was published in accordance with PCT Article 21(2)
shall be provided to any person upon written request, including the fee
set forth in 1.19(b)(1). Until the application is abandoned,
patented, or published as a Statutory Invention Registration or a U.S.
patent application publication, a granted petition for access (see
paragraph (i) of this section), or a power to inspect (see paragraph
(c) of this section) is necessary to obtain the file of the
application.
(vi) Applications that were not published or patented,
and are not referenced in a U.S. patent, a Statutory Invention
Registration, a U.S. patent application publication, or an
international patent application publication that was published in
accordance with PCT Article 21(2), or relied upon under 35 U.S.C.
119(e), 120, 121, or 365 in an application that has issued as a U.S.
patent, or been published as a Statutory Invention Registration, a U.S.
patent application publication, or an international patent application
publication that was published in accordance with PCT Article 21(2).
Applications that were not published or patented, and are not
referenced in a U.S. patent, a Statutory Invention Registration, a U.S.
patent application publication, or an international patent application
publication that was published in accordance with PCT Article 21(2) are
not available to the public, unless the application that issued as the
U.S. patent or was published as the Statutory Invention Registration,
U.S. patent application publication, or an international patent
application publication that was published in accordance with PCT
Article 21(2) claims the benefit of the application under 35 U.S.C.
119(e), 120, 121, or 365. A granted petition for access (see paragraph
(i) of this section), or a power to inspect (see paragraph (c) of this
section) is necessary to obtain the application, or a copy of the
application.
(2) Information concerning a patent application may be
communicated to the public if the patent application is identified in
paragraphs (a)(1)(i) through (a)(1)(v) of this section. The information
that may be communicated to the public (i.e., status
information) includes:
(i) Whether the application is pending, abandoned, or patented;
(ii) Whether the application has been published under 35 U.S.C.
122(b);
(iii) The application "numerical identifier" which may be:
(A) The eight-digit application number (the two-digit series
code plus the six-digit serial number); or
(B) The six-digit serial number plus any one of the filing date
of the national application, the international filing date, or date of
entry into the national stage; and
(iv) Whether an application claims the benefit of the
application (i.e., whether there are any applications that
claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121
or 365 of the application), and if there are any such applications, the
numerical identifier of the application, the specified relationship
between the applications (e.g., continuation), whether the
application is pending, abandoned or patented, and whether the
application has been published under 35 U.S.C. 122(b).
(b) Electronic access to an application. Where a
copy of the application papers or access to the application is
available pursuant to paragraphs (a)(1)(i) through (a)(1)(v) of this
section, the Office may at its discretion provide access only to an
electronic copy of the specification, drawings, and file contents of
the application.
(c) Power to inspect a pending or abandoned
application. Access to an application shall be provided to any
person if the application file is available, and the application
contains written authority (e.g., a power to inspect)
granting access to such person. The written authority must be signed
by:
(1) An applicant;
(2) An attorney or agent of record;
(3) An authorized official of an assignee of record (made of
record pursuant to 3.71 of this chapter); or
(4) A registered attorney or agent named in the papers
accompanying the application papers filed under 1.53 or the national
stage documents filed under 1.495, if an executed oath or
declaration pursuant to 1.63 or 1.497 has not been filed.
(d) Applications reported to Department of Energy.
Applications for patents which appear to disclose, purport to disclose
or do disclose inventions or discoveries relating to atomic energy are
reported to the Department of Energy, which Department will be given
access to the applications. Such reporting does not constitute a
determination that the subject matter of each application so reported
is in fact useful or is an invention or discovery, or that such
application in fact discloses subject matter in categories specified by
42 U.S.C. 2181(c) and (d).
(e) Unpublished applications provided to other
Intellectual Property Offices. Before a patent application is
published or otherwise becomes available to the public pursuant to
paragraphs (a)(1)(i) through (a)(1)(iv) of this section, the Office
may, pursuant to an agreement between the Office and another
Intellectual Property (IP) Office, provide the other IP Office with
access to the electronic record of the application without charge to
applicant, if applicant consents. After an application has been
published, such consent is not required.
(f) Decisions by the Director or the Board of Patent
Appeals and Interferences.
(1) Any action of the Board of Patent Appeals and
Interferences, or any decision on petition, may be published or made
available for public inspection without applicant's or patent owner's
permission if rendered in a file open to the public pursuant to 1.11
or available pursuant to 1.14(e)(2), in an application that has been
published in accordance with 1.211 through 1.221, or in an
application claiming benefit of an earlier filing date under 35 U.S.C.
119(a)-(d), 120, 121 or 365 of an application that has been published
or patented.
(2) Any action of the Board of Patent Appeals and
Interferences, or any decision on petition not publishable under
paragraph (f)(1) of this section, may be published or made available
for public inspection if the Director believes the action or decision
involves an interpretation of patent laws or regulations that would be
of important precedential value; and the applicant, or any party
involved in the interference, does not within two months after being
notified of the intention to make the action or decision public, object
in writing on the ground that the decision discloses a trade secret or
other confidential information and states that such information is not
otherwise publicly available. If an action or decision discloses such
information, the applicant or party shall identify the deletions in the
text of the action or decision considered necessary to protect the
information. If the applicant or the party considers that the entire
action or decision must be withheld from the public to protect such
information, the applicant or party must explain why. Applicants or
parties will be given time, not less than twenty days, to request
reconsideration and seek court review before any portions of actions or
decisions are made public over their objection. See 2.27
for trademark applications.
(g) Publication pursuant to 1.47. Information as
to the filing of an application will be published in the Official
Gazette in accordance with 1.47(c).
(h) International applications. (1) Copies of
international application files for international applications which
designate the U.S. and which have been published in accordance with PCT
Article 21(2), or copies of a document in such application files, will
be furnished in accordance with PCT Articles 30 and 38 and PCT Rules
94.2 and 94.3, upon written request including a showing that the
publication of the application has occurred and that the U.S. was
designated, and upon payment of the appropriate fee (see
1.19(b)), if:
(i) With respect to the Home Copy (the copy of the
international application kept by the Office in its capacity as the
Receiving Office, see PCT Article 12(1)), the international application
was filed with the U.S. Receiving Office;
(ii) With respect to the Search Copy (the copy of the
international application kept by the Office in its capacity as the
International Preliminary Searching Authority, see PCT Article 12(1)),
the U.S. acted as the International Searching Authority; or
(iii) With respect to the Examination Copy (the copy of an
international application kept by the Office in its capacity as the
International Preliminary Examining Authority), the United States acted
as the International Preliminary Examining Authority, an International
Preliminary Examination Report has issued, and the United States was
elected.
(2) A copy of an English language translation of a publication
of an international patent application which has been filed in the
United States Patent and Trademark Office pursuant to 35 U.S.C.
154(2)(d)(4) will be furnished upon written request including a showing
that the publication of the application in accordance with PCT Article
21(2) has occurred and that the U.S. was designated, and upon payment
of the appropriate fee ( 1.19(b)(4)).
(3) Access to international application files for international
applications which designate the U.S. and which have been published in
accordance with PCT Article 21(2), or copies of a document in such
application files, will be furnished in accordance with PCT Articles 30
and 38 and PCT Rules 94.2 and 94.3, upon written request including a
showing that the publication of the application has occurred and that
the U.S. was designated.
(4) In accordance with PCT Article 30, copies of an
international application-as-filed under paragraph (a) of this section
will not be provided prior to the international publication of the
application pursuant to PCT Article 21(2).
(5) Access to international application files under paragraphs
(a)(1)(i)-(iv) and (h)(3) of this section will not be permitted with
respect to the Examination Copy in accordance with PCT Article 38.
(i) Access or copies in other circumstances. The
Office, either sua sponte or on petition, may also provide access or
copies of all or part of an application if necessary to carry out an
Act of Congress or if warranted by other special circumstances. Any
petition by a member of the public seeking access to, or copies of, all
or part of any pending or abandoned application preserved in confidence
pursuant to paragraph (a) of this section, or any related papers, must
include:
(1) The fee set forth in 1.17(h); and
(2) A showing that access to the application is necessary to
carry out an Act of Congress or that special circumstances exist which
warrant petitioner being granted access to all or part of the
application.
5. Section 1.17 is amended by revising paragraph (h) to read as
follows:
1.17 Patent application and reexamination processing
fees.
* * * * *
(h) For filing a petition under one of the following sections
which refers to this paragraph - $130.00
1.12 - for access to an assignment record
1.14 - for access to an application
1.47 - for filing by other than all the inventors or a person not the
inventor
1.53(e) - to accord a filing date
1.59 - for expungement of information
1.84 - for accepting color drawings or photographs
1.91 - for entry of a model or exhibit
1.102 - to make an application special
1.103(a) - to suspend action in an application
1.138(c) - to expressly abandon an application to avoid publication
1.182 - for decision on a question not specifically provided for
1.183 - to suspend the rules
1.295 - for review of refusal to publish a statutory invention
registration
1.313 - to withdraw an application from issue
1.314 - to defer issuance of a patent
1.377 - for review of decision refusing to accept and record payment
of a maintenance fee filed prior to expiration of a patent
1.378(e) - for reconsideration of decision on petition refusing to
accept delayed payment of maintenance fee in an expired patent
1.644(e) - for petition in an interference
1.644(f) - for request for reconsideration of a decision on petition
in an interference
1.666(b) - for access to an interference settlement agreement
1.666(c) - for late filing of interference settlement agreement
1.741(b) - to accord a filing date to an application under 1.740
for extension of a patent term
5.12 - for expedited handling of a foreign filing license
5.15 - for changing the scope of a license
5.25 - for retroactive license
* * * * *
6. Section 1.19 is amended by revising paragraph (b)(1) to read
as follows:
1.19 Document supply fees.
* * * * *
(b) * * *
(1) Certified or uncertified copy of the paper portion of
patent application as filed, except for a certified copy provided
pursuant to an agreement between the Office and another Intellectual
Property (IP) Office when the certified copy is provided to the other
IP Office in electronic form and when written authorization under 35
U.S.C. 122(a) to permit access to file information by the other IP
Office receiving the priority document is given by applicant for which
there is no fee:
(i) Regular service - $15.00
(ii) Expedited regular service - $30.00
* * * * *
7. Section 1.52 is amended by revising paragraphs (a) and (b)
to read as follows:
1.52 Language, paper, writing, margins, compact disc
specifications.
(a) Papers that are to become a part of the permanent United
States Patent and Trademark Office records in the file of a patent
application or a reexamination proceeding.
(1) All papers, other than drawings, that are submitted on
paper or by facsimile transmission, and are to become a part of the
permanent United States Patent and Trademark Office records in the file
of a patent application or reexamination proceeding, must be on sheets
of paper that are the same size, not permanently bound together, and:
(i) Flexible, strong, smooth, non-shiny, durable, and white;
(ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9
cm (8 1/2 by 11 inches), with each sheet including a top margin of at
least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1
inch), a right side margin of at least 2.0 cm (3/4 inch), and a bottom
margin of at least 2.0 cm (3/4 inch);
(iii) Written on only one side in portrait orientation;
(iv) Plainly and legibly written either by a typewriter or
machine printer in permanent dark ink or its equivalent; and
(v) Presented in a form having sufficient clarity and contrast
between the paper and the writing thereon to permit the direct
reproduction of readily legible copies in any number by use of
photographic, electrostatic, photo-offset, and microfilming processes
and electronic capture by use of digital imaging and optical character
recognition.
(2) All papers that are submitted on paper or by facsimile
transmission and are to become a part of the permanent records of the
United States Patent and Trademark Office should have no holes in the
sheets as submitted.
(3) The provisions of this paragraph and paragraph (b) of this
section do not apply to the pre-printed information on paper forms
provided by the Office, or to the copy of the patent submitted on paper
in double column format as the specification in a reissue application
or request for reexamination.
(4) See 1.58 for chemical and mathematical formulae and
tables, and 1.84 for drawings.
(5) If papers that are submitted on paper or by facsimile
transmission do not comply with paragraph (a)(1) of this section and
are submitted as part of the permanent record, other than the drawings,
applicant, or the patent owner, or the requester in a reexamination
proceeding, will be notified and given a period of time within which to
provide substitute papers that comply with paragraph (a)(1) of this
section in order to avoid abandonment of the application in the case of
an applicant for patent, termination of proceedings in the case of a
patent owner in a reexamination proceeding, or refusal of consideration
of the papers in the case of a third party requester in a reexamination
proceeding.
(6) Papers that are submitted electronically to the Office must
be formatted and transmitted in compliance with the Office's electronic
filing system requirements.
(7) If the papers that are submitted electronically to the
Office do not comply with paragraph (a)(6) of this section, the
applicant, or the patent owner, or the requester in a reexamination
proceeding, will be notified and given a period of time within which to
provide substitute papers that comply with paragraph (a)(6) of this
section in order to avoid abandonment of the application in the case of
an applicant for patent, termination of proceedings in the case of a
patent owner in a reexamination proceeding, or refusal of consideration
of the papers in the case of a third party requester in a reexamination
proceeding.
(b) The application (specification, including the claims,
drawings, and oath or declaration) or reexamination proceeding and any
amendments or corrections to the application or reexamination
proceeding.
(1) The application or proceeding and any amendments or
corrections to the application (including any translation submitted
pursuant to paragraph (d) of this section) or proceeding, except as
provided for in 1.69 and paragraph (d) of this section, must:
(i) Comply with the requirements of paragraph (a) of this
section; and
(ii) Be in the English language or be accompanied by a
translation of the application and a translation of any corrections or
amendments into the English language together with a statement that the
translation is accurate.
(2) The specification (including the abstract and claims) for
other than reissue applications and reexamination proceedings, and any
amendments for applications (including reissue applications) and
reexamination proceedings to the specification, except as provided for
in 1.821 through 1.825, must have:
(i) Lines that are 1 1/2 or double spaced;
(ii) Text written in a nonscript type font (e.g.,
Arial, Times Roman, or Courier) lettering style having capital letters
which are at least 0.21 cm (0.08 inch) high; and
(iii) Only a single column of text.
(3) The claim or claims must commence on a separate physical
sheet or electronic page ( 1.75(h)).
(4) The abstract must commence on a separate physical sheet or
electronic page or be submitted as the first page of the patent in a
reissue application or reexamination proceeding ( 1.72(b)).
(5) Other than in a reissue application or reexamination
proceeding, the pages of the specification including claims and
abstract must be numbered consecutively, starting with 1, the numbers
being centrally located above or preferably, below, the text.
(6) Other than in a reissue application or reexamination
proceeding, the paragraphs of the specification, other than in the
claims or abstract, may be numbered at the time the application is
filed, and should be individually and consecutively numbered using
Arabic numerals, so as to unambiguously identify each paragraph. The
number should consist of at least four numerals enclosed in square
brackets, including leading zeros (e.g., [0001]). The
numbers and enclosing brackets should appear to the right of the left
margin as the first item in each paragraph, before the first word of
the paragraph, and should be highlighted in bold. A gap, equivalent to
approximately four spaces, should follow the number. Nontext elements
(e.g., tables, mathematical or chemical formulae, chemical
structures, and sequence data) are considered part of the numbered
paragraph around or above the elements, and should not be independently
numbered. If a nontext element extends to the left margin, it should
not be numbered as a separate and independent paragraph. A list is also
treated as part of the paragraph around or above the list, and should
not be independently numbered. Paragraph or section headers (titles),
whether abutting the left margin or centered on the page, are not
considered paragraphs and should not be numbered.
(7) If papers that do not comply with paragraphs (b)(1) through
(b)(5) of this section are submitted as part of the application, the
applicant, or patent owner, or requester in a reexamination proceeding,
the applicant, patent owner or requester in a reexamination proceeding
will be notified and given a period of time within which to provide
substitute papers that comply with paragraphs (b)(1) through (b)(5) of
this section in order to avoid abandonment of the application in the
case of an applicant for patent, termination of proceedings in the case
of a patent owner in a reexamination proceeding, or refusal of
consideration of the papers in the case of a third party requester in a
reexamination proceeding.
* * * * *
8. Section 1.59 is revised to read as follows:
1.59 Expungement of information or copy of papers in
application file.
(a)(1) Information in an application will not be expunged,
except as provided in paragraph (b) of this section.
(2) Information forming part of the original disclosure
(i.e., written specification including the claims, drawings,
and any preliminary amendment specifically incorporated into an
executed oath or declaration under 1.63 and 1.175) will not be
expunged from the application file.
(b) An applicant may request that the Office expunge
information, other than what is excluded by paragraph (a)(2) of this
section, by filing a petition under this paragraph. Any petition to
expunge information from an application must include the fee set forth
in 1.17(h) and establish to the satisfaction of the Director that
the expungement of the information is appropriate.
(c) Upon request by an applicant and payment of the fee
specified in 1.19(b), the Office will furnish copies of an
application, unless the application has been disposed of (see
1.53(e), (f) and (g)). The Office cannot provide or certify copies of
an application that has been disposed of.
9. Section 1.71 is amended by adding paragraph (f) to read as
follows:
1.71 Detailed description and specification of the
invention.
* * * * *
(f) The specification must commence on a separate sheet and
each sheet including part of the specification may not include other
parts of the application.
10. Section 1.72 is amended by revising paragraph (b) to read
as follows:
1.72 Title and abstract.
* * * * *
(b) A brief abstract of the technical disclosure in the
specification must commence on a separate sheet, preferably following
the claims, under the heading "Abstract" or "Abstract of the
Disclosure." The sheet or sheets presenting the abstract may not
include other parts of the application. The abstract in an application
filed under 35 U.S.C. 111 may not exceed 150 words in length. The
purpose of the abstract is to enable the United States Patent and
Trademark Office and the public generally to determine quickly from a
cursory inspection the nature and gist of the technical disclosure.
* * * * *
11. Section 1.75 is amended by revising paragraph (h) to read
as follows:
1.75 Claim(s).
* * * * *
(h) The claim or claims must commence on a separate sheet and
any sheet including a claim or portion of a claim may not contain any
other parts of the application.
* * * * *
12. Section 1.97 is amended by revising paragraphs (b)(3),
(b)(4) and (c) to read as follows:
1.97 Filing of information disclosure statement.
* * * * *
(b) * * *
(3) Before the day of the mailing of a first Office action on
the merits; or
(4) Before the day of the mailing of a first Office action
after the filing of a request for continued examination under 1.114.
(c) An information disclosure statement shall be considered by
the Office if filed after the period specified in paragraph (b) of this
section, provided that the information disclosure statement is filed
before the day of the mailing date of any of a final action under
1.113, a notice of allowance under 1.311, or an action that
otherwise closes prosecution in the application, and it is accompanied
by either:
(1) The statement specified in paragraph (e) of this section;
or
(2) The fee set forth in 1.17(p).
* * * * *
13. Section 1.98 is amended by adding paragraph (e) to read as
follows:
1.98 Content of information disclosure statement.
* * * * *
(e) The requirement in paragraph (a)(2)(i) of this section for
a copy of all listed U.S. patents and U.S. patent application
publications does not apply to any information disclosure statement
submitted in compliance with the Office's electronic filing system.
14. Section 1.99 is amended by revising paragraphs (d) and (e)
to read as follows:
1.99 Third-party submission in published application.
* * * * *
(d) A submission under this section shall not include any
explanation of the patents or publications, or any other information.
The Office will not enter such explanation or information if included
in a submission under this section. A submission under this section is
also limited to ten total patents or publications.
(e) A submission under this section must be filed within two
months from the date of publication of the application ( 1.215(a)) or
prior to the mailing of a notice of allowance ( 1.311), whichever is
earlier. Any submission under this section not filed within this period
is permitted only when the patents or publications could not have been
submitted to the Office earlier, and must also be accompanied by the
processing fee set forth in 1.17(i). A submission by a member of the
public to a pending published application that does not comply with the
requirements of this section will not be entered.
* * * * *
15. Section 1.121 is revised to read as follows:
1.121 Manner of making amendments in applications.
(a) Amendments in applications, other than reissue
applications. Amendments in applications, other than reissue
applications, are made by filing a paper, in compliance with 1.52,
directing that specified amendments be made.
(b) Specification. Amendments to the specification
other than the claims and computer listings ( 1.96) and sequence
listings ( 1.825) must be made by replacement paragraph, replacement
section or substitute specification in the manner specified in this
section.
(1) Amendment by instruction to delete, replace, or add a
paragraph. Amendments to the specification may be made by
submitting:
(i) An instruction, which unambiguously identifies the
location, to delete one or more paragraphs of the specification,
replace a deleted paragraph with one or more replacement paragraphs, or
add one or more paragraphs; and
(ii) Any replacement or added paragraph(s) marked-up to show
all the changes relative to the previous version of the paragraph(s).
The changes must be shown by strike-through (for deleted matter) or
underlining (for added matter).
(2) Amendment by replacement section. If the
sections of the specification contain section headings as provided in
1.77(b), 1.154(b), or 1.163(c), amendments to the
specification, other than the claims, may be made by submitting:
(i) A reference to the section heading along with an
instruction to delete that section of the specification and to replace
such deleted section with a replacement section; and
(ii) A replacement section marked-up to show all changes
relative to the previous version of the section. The changes must be
shown by strike-through (for deleted matter) or underlining (for added
matter).
(3) Amendment by substitute specification. The
specification, other than the claims, may also be amended by
submitting:
(i) An instruction to replace the specification; and
(ii) A substitute specification in compliance with 1.125(c).
(4) Reinstatement: Deleted matter may be reinstated
only by a subsequent amendment presenting the previously deleted
matter.
(5) Presentation: Instructions for entry of replacement
paragraphs or sections must be provided with an unambiguous and precise
location. Deletion of a paragraph or section is permitted by
instruction only; no text to be canceled should be presented. Once a
paragraph, section, or specification is amended in a first amendment
document, the paragraph, section or specification shall not be
re-presented in successive amendment documents unless it is amended
again or a substitute specification is provided.
(c) Claims. Amendments to a claim must be made by
rewriting the entire claim with all changes (e.g.,
additions, deletions, modifications) as indicated in this section. Each
amendment document that includes a change to an existing claim, or
submission of a new claim, must include a complete listing of all
claims in the application. The listing will serve to replace all prior
versions of the text of the claims (except for withdrawn claims) in the
application. The text of all pending claims (except for withdrawn
claims) must be submitted in a single amendment document each time any
claim is amended. The status of each of the claims in the application,
including any previously canceled or withdrawn claims, must be
indicated in each amendment document. Status is indicated by a
parenthetical expression following the claim number and should be
indicated by use of one of the following identifiers: (Original),
(Currently amended), (Previously amended), (Canceled), (Withdrawn),
(Previously added), (New), (Reinstated - formerly claim #_), (Previously
reinstated), (Re-presented - formerly dependent claim #_), or
(Previously re-presented). Only claims of status "currently
amended" shall include markings.
(1) Currently amended claims: All claims being currently
amended in an amendment paper shall be submitted with markings to
indicate the changes that have been made relative to the immediate
prior version of the claims. The changes in any amended claim shall be
shown by strike-through (for deleted matter) or underlining (for added
matter). Only claims of status "currently amended" shall include
markings.
(2) Original, previously amended, or previously added claims:
The text of pending claims not being currently amended shall be
presented in each amendment document in clean version, i.e.,
without any markings in the presentation of clean text. The
presentation of clean text in any claim will constitute an assertion
that it has not been changed relative to the immediate prior version.
The text of canceled and withdrawn claims shall not be presented, but
must be indicated by only claim number and status.
(3) Cancelled and new (added) claims: A claim is canceled by
providing an instruction to cancel the claim by claim number. No markup
shall be presented. Listing a claim as canceled will constitute an
instruction to cancel the claim. Any claims added by amendment must be
indicated as (new), and shall not be underlined.
(4) When one or more claims are amended or added in an
amendment document, all of the claims shall be presented in a listing
in ascending numerical order. Consecutive canceled or withdrawn claims
may be aggregated into one statement (e.g., Claims 1-5
(canceled)). The text of the claims shall commence on a separate sheet
of the amendment document and the sheet(s) that contain the text of any
part of the claims shall not contain any other part of the amendment.
(5) A claim canceled by amendment (deleted in its entirety) may
be reinstated only by a subsequent amendment presenting the claim as a
new claim with a new claim number.
(d) Drawings. Application drawings are amended in
the following manner: Any changes to the application drawings must be
in compliance with 1.84 and must be submitted as replacement sheets
as an attachment to the amendment document. Any replacement sheets
shall include all of the figures appearing on the immediate prior
version of the sheet, even if only one figure is amended. Applicant
shall explain in detail the changes made beginning on a separate sheet
in the drawing amendments or remarks section of the amendment paper.
(1) The applicant may include a marked-up copy of one or more
of the figures being amended indicating the changes being made.
(2) The applicant shall include a marked-up copy of any figure
that has been amended indicating the changes being made when required
by the examiner.
(e) Disclosure consistency. The disclosure must be
amended, when required by the Office, to correct inaccuracies of
description and definition, and to secure substantial correspondence
between the claims, the remainder of the specification, and the
drawings.
(f) No new matter. No amendment may introduce new
matter into the disclosure of an application.
(g) Exception for examiner's amendments. Changes to
the specification, including the claims, of an application made by the
Office in an examiner's amendment may be made by specific instructions
to insert or delete subject matter set forth in the examiner's
amendment by identifying the precise point in the specification or the
claim(s) where the insertion or deletion is to be made. Compliance with
paragraphs (b)(1), (b)(2), (c) or (c)(1) to (c)(5) is not required.
(h) Amendment sections. Each section of an amendment
document must begin on a separate sheet.
(i) Amendments in reissue applications. Any
amendment to the description and claims in reissue applications must be
made in accordance with 1.173.
(j) Amendments in reexamination proceedings. Any
proposed amendment to the description and claims in patents involved in
reexamination proceedings must be made in accordance with 1.530.
(k) Amendments in provisional applications.
Amendments in provisional applications are not normally made. If an
amendment is made to a provisional application, however, it must comply
with the provisions of this section. Any amendments to a provisional
application shall be placed in the provisional application file but may
not be entered.
16. Section 1.125 is proposed to be amended by revising
paragraphs (b) and (c) to read as follows:
1.125 Substitute specification.
* * * * *
(b) Subject to 1.312, a substitute specification, excluding
the claims, may be filed at any point up to payment of the issue fee if
it is accompanied by a statement that the substitute specification
includes no new matter.
(c) A substitute specification submitted under this section
must be submitted with markings showing all the changes (underlining to
indicate subject matter being added and strike-through indicating
subject matter being deleted) relative to the immediate prior version
of the specification of record. An accompanying clean version (without
markings) must also be supplied. Numbering the paragraphs of the
specification of record is not considered a change that must be shown
pursuant to this paragraph.
* * * * *
17. Section 1.823 is proposed to be amended by revising
paragraph (a)(1) to read as follows:
1.823 Requirements for nucleotide and/or amino acid
sequences as part of the application.
(a)(1) If the "Sequence Listing" required by 1.821(c) is
submitted on paper: The "Sequence Listing," setting forth the
nucleotide and/or amino acid sequence and associated information in
accordance with paragraph (b) of this section, must begin on a new page
and must be titled "Sequence Listing." The pages of the "Sequence
Listing" preferably should be numbered independently of the numbering
of the remainder of the application. Each page of the "Sequence
Listing" shall contain no more than 66 lines and each line shall
contain no more than 72 characters. The sheet or sheets presenting a
sequence listing may not include other parts of the application. A
fixed-width font should be used exclusively throughout the "Sequence
Listing."
* * * * *
March 19, 2003 JAMES E. ROGAN
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office