United States Patent and Trademark Office OG Notices: 29 July 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: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
revising the rules of practice in patent cases as part of its 21st
Century Strategic Plan to implement beginning-to-end electronic image
processing of patent applications. Specifically, the changes adopted in
this notice facilitate electronic image data capture and processing,
streamline the patent application process, and simplify and clarify the
pertinent provisions of the rules of practice.
DATES: Effective Date: July 30, 2003.
Applicability date: The changes apply to any paper filed in the
Office on or after July 30, 2003. Further, the revisions to Secs.
1.3, 1.14(a) through (d) and (f) through (h), 1.59 and 1.99 apply to
all patent applications filed before, on, or after July 30, 2003.
FOR FURTHER INFORMATION CONTACT: Jay Lucas (703) 308-6868 or Robert
Clarke (703) 305-9177, Senior Legal Advisors, or Robert J. Spar (703)
308-5107, Director, Office of Patent Legal Administration (OPLA),
directly by phone. Questions may also be submitted in writing to Mail
Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450,
Alexandria, VA 22313-1450; by electronic mail sent to
robert.clarke@uspto.gov; or by facsimile to (703) 872-9411.
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 (IP) offices.
The system will use image technology to replace the standard paper
processing of patent applications currently used in the Office. The
paper components of the patent 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.
Thereafter, all processing and examination by all Office personnel will
be conducted with the electronic image files, instead of the paper
source documents.
The system will affect applicants minimally during the patent
application process, because the program affects internal operations
and not external communications. Applicants may continue to send and
receive 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 changes to the rules of practice in title 37 of the
Code of Federal Regulations (CFR) are designed to improve internal
operation by the use of the electronic image format, primarily by
easing the requirements upon applicants in amendment practice and
information disclosure statement submissions. The electronic nature of
patent records will permit their viewing by the public through the
Patent Application Information Retrieval (PAIR) system, which has a
number of advantages: (1) It provides notice to applicants of certain
examination processing activities (e.g., mailing of Office actions);
(2) it assures confidence in the integrity of the Office records; (3)
it reduces the handling of the records; and (4) 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 announced a prototype program
in December of 2002. See USPTO Announces Prototype of Image Processing,
1265 Off. Gaz. Pat. Office 87 (Dec. 17, 2002). The Office has
incorporated the experience and lessons learned from this prototype
program into a production system. See Notification of United States
Patent and Trademark Office Patent Application Records being Stored and
Processed in Electronic Form, 1271 Off. Gaz. Pat. Office 100 (June 17,
2003).
The electronic format of applications will reduce delays in moving
information within the Office and between the Office, the applicant,
other 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 has been amended to provide that papers presented in
violation of the decorum and courtesy requirements 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 of a paper violating Sec. 1.3 as an
electronic sheet(s), the Office will 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 application has not
yet been captured as an image file, the paper will not be entered in
the Official file (which would in this instance be a paper file). In
either event, the Office will provide notice in the Official file that
the paper will not be available to the public and send a decision to
the applicant notifying the applicant of the non-entry. If the paper is
intended as a reply to an Office action, the reply will not be
considered a bona fide reply under Sec. 1.135(c) and the period set in
the prior Office action will continue to run.
Similarly, a paper submitted in violation of Sec. 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) as is the
current practice. Therefore, the reply will not toll the time period
set in a prior Office action. The Office will provide notice of the
non-entry to the applicant or patent owner.
Section 1.9
Section 1.9 has been 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 has
been revised to clarify the rule and to expand the rule to provide for
electronic files.
Paragraph (a)(1) has been rewritten to list the records that may be
made 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 former Secs. 1.14(c) and (e) to assist
the public in understanding what applications may be made available to
the public. Accordingly, Sec. 1.14(a)(1), as rewritten, is divided
into Secs. 1.14(a)(1)(i) through (a)(1)(vii) listing different
types of application files and explaining whether any part of the file
contents may be made available to the public. For example, Sec.
1.14(a)(1)(iii) explains that copies of published pending applications
may be made 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. The explanation for when an application
may be made available in Sec. 1.14(a)(1)(iv) rephrases the "referred
to" provision of former Sec. 1.14(e)(2) with "identified or relied
upon" and adds a definition of "identified" that conforms with
current Office policy interpreting "referred to." An application is
"referred to" when it is identified by application number or serial
number and filing date, first named inventor, title and filing date or
other application specific information are provided in the text. In
addition, in the new Sec. 1.14(a)(1)(v) where the benefit of a pending
application is relied upon pursuant to 35 U.S.C. 119(e), 120, 121 or
365 in certain applications, copies of the application file contents
may be made available in the same manner that copies of the application
would have been had the application been published as a U.S. patent
application publication (Sec. 1.14(a)(1)(iii)). As a result of this
change to Sec. 1.14, if an application is a continuation of an earlier
application, and the Office publishes the continuation as a patent
application publication but without an identification of the earlier
application in the published document, a copy of the file contents of
the earlier-filed application may be made available to the public, upon
payment of the required fee for a copy, if the application is still
pending. This is because the Office (PALM) records for continuation
applications, which are available to the public following publication,
will indicate the status as a continuation and information about the
earlier application.
Paragraph (a)(2) has been revised to combine and restate former
Secs. 1.14(a)(1) and (b) which address status information. 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 PAIR system on the Office's Internet Web site at:
http://pair.uspto.gov.
Section 1.14 is also amended to have a new Sec. 1.14(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.
Section 1.14(c) is the same as former Sec. 1.14(d). Paragraph (d)
of former Sec. 1.14 has been redesignated as Sec. 1.14(c).
Section 1.14(d) is the same as former Sec. 1.14(f). Paragraph (f)
of former Sec. 1.14 has been redesignated as Sec. 1.14(d).
Section 1.14(e) is the same as former Sec. 1.14(g). Paragraph (g)
of former Sec. 1.14 has been redesignated as Sec. 1.14(e). On
reconsideration, the changes proposed in Sec. 1.14(f)(1) and (2) were
not necessary to implement an image file wrapper system. The proposed
changes, including the public comments, may be reconsidered in the
future.
Section 1.14(f) is the same as former Sec. 1.14(h). Paragraph (h)
of former Sec. 1.14 has been redesignated as Sec. 1.14(f).
Section 1.14(g) of Sec. 1.14 corresponds to former Sec. 1.14(i),
and is further amended to explain the meaning of the terms "Home
Copy," "Search Copy," and "Examination Copy," and by inserting
"of a publication" after "English language translation" in Sec.
1.14(g)(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 Sec. 1.14 is changed to add "a
publication of an international patent application" after "English
language translation of." In addition, the parenthetical phrase at the
end of Sec. 1.14(g)(1), referencing the fee for a copy of an
international application file, or a copy of a document in a file, has
been changed from a reference to Sec. 1.19(b) rather than Sec.
1.19(b)(2) or Sec. 1.19(b)(3), the fees for the contents of a file or
a CD, and the parenthetical phrase at the end of Sec. 1.14(g)(2),
referencing the fee for a copy of an English language translation in a
file, has been corrected to refer to Sec. 1.19(b)(4), the fee for a
document, rather than Sec. 1.19(b)(2) or Sec. 1.19(b)(3).
Section 1.14(h) is the same as former Sec. 1.14(j). Paragraph (j)
of former Sec. 1.14 has been redesignated as Sec. 1.14(h).
The changes that had been proposed in 1.14(e) have been postponed
pending successful negotiation and implementation of agreements with
other IP offices to provide for electronic document exchange. The
Office will at that time publish a final rule amending Sec. 1.14 to
provide for an applicant to provide consent (if the application is
being maintained in confidence under 35 U.S.C. 122(a) and Sec. 1.14)
to electronic document exchange of the applications with the IP offices
with which the Office has such an agreement.
Section 1.17
Section 1.17 has been amended to eliminate the reference to
returning information that has been expunged in Sec. 1.17(h) because
expunged information need not be returned under Sec. 1.59 as amended.
Section 1.19
The proposed changes to Sec. 1.19 to eliminate the required fee
for providing a copy of an application as filed to certain other IP
offices following an agreement with other IP offices to electronically
share such document has been postponed pending successful
implementation of such agreements. The Office will at that time publish
a final rule amending Sec. 1.19 to eliminate its fee for applicants
who consent to electronic document exchange of the applications with
the IP offices with which the Office has such an agreement.
Section 1.52
Section 1.52 has been 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 application examination. These images will
form the Official file of the application. See Notification of United
States Patent and Trademark Office Patent Application Records being
Stored and Processed in Electronic Form, 1271 Off. Gaz. Pat. Office at
100. 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
Sec. 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 Sec. 1.52 has been amended to clarify that it
pertains to paper and facsimile submissions, and that such submissions
must not be permanently bound together. Correspondence may include
multiple papers each of which may be on either 21.6 cm by 27.9 cm (8
1/2 by 11 inch) or 21.0 cm by 29.7 cm (DIN size A4) paper. For example,
a transmittal letter and Information Disclosure Statement (IDS) on 21.6
cm by 27.9 cm (8 1/2 by 11 inch) paper accompanied by copies of cited
references on 21.0 cm by 29.7 cm (DIN size A4) paper is permitted.
Paragraph (a)(2) of Sec. 1.52 has been amended to clarify that it
pertains to paper and facsimile submissions.
Paragraph (a)(5) of Sec. 1.52 has been amended to clarify that it
pertains to paper and facsimile submissions.
Paragraph (a) of Sec. 1.52 has also been amended by adding
Secs. 1.52(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 Sec. 1.52 have been 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 Sec. 1.52 has been amended to explain the
consequences of a failure to provide compliant papers within the set
time period. That is, Sec. 1.52(b)(7) provides 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 has been 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. The paper source
document will eventually be destroyed under a United States National
Archives and Records Administration (NARA) approved schedule.
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 Sec. 1.59 has been amended by deleting the
phrase "and returned" from the first sentence, and deleting the
second sentence.
Paragraph (b) of Sec. 1.59 has been amended by deleting the phrase
"and return" from each of the first and second sentences. The Office
will continue to provide notice in the Official file that a paper has
been expunged and the Office will send a decision to the applicant
notifying the applicant that the paper has been expunged.
Section 1.71
Section 1.71 has been amended by adding a new Sec. 1.71(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. Further, the claims, abstract
or sequence listing (if any) should not be included
on any sheet including any other part of the specification. A title of
the invention if it is provided as a heading on the first page of the
specification is considered part of the specification.
Section 1.72
Paragraph (b) of Sec. 1.72 has been 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, the last sentence of
Sec. 1.72(b) has been removed to eliminate the prohibition on using
the abstract to interpret the claims to conform the rule to be
consistent with Federal Circuit case law. See Hill-Rom Co. versus
Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.*, 54 USPQ2d 1437, 1440
n.1 (Fed. Cir. 2000).
Section 1.75
Paragraph (h) of Sec. 1.75 has been 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 1.98
Section 1.98 has been amended by adding a new Sec. 1.98(e), which
provides that the requirement in Sec. 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 will no longer have to be supplied by
applicants.
An EFS software upgrade has added an IDS, submitted under the
provisions of Secs. 1.97 and 1.98, as a type of electronic
submission that may be made via the Office's EFS. 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 Sec. 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. In those instances in which
an applicant sends an IDS on the same day by EFS and by conventional
delivery, and a fee under Sec. 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 fifty U.S. patents and up to fifty 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 Sec. 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
Secs. 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) in 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 Sec. 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 Secs. 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 Sec. 609 III(C)(1) of the Manual of Patent
Examining Procedure (8th ed. 2001) (Rev. 1, Feb. 2003) (MPEP). The
examiner may either initial next to the citation on the listing of
references to indicate that the erroneously cited patent has been
reviewed or line through the citation as not in compliance with Sec.
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 Secs. 1.97 and 1.98, as specified in MPEP Sec.
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 (an appropriate 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 "Acknowledgment 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 has been 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 Sec. 1.99. 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 Sec. 1.99 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 Sec. 1.99 has been amended by deleting the word
"dispose of" and replacing it with "not enter." Paragraph (e) of
Sec. 1.99 has been amended by deleting the phrase "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 in non-reissue applications has been revised to permit greater
navigational control during examination in an image file wrapper
environment.
Paragraph (b) continues to provide the manner of making amendments
to the specification and further provides that its provisions do not
apply to making amendments to the claims, computer listings or sequence
listings. Paragraph (b) has been revised to require a particular format
of marking to show changes and also to eliminate the requirement to
provide a clean copy of any revised paragraph or section.
Paragraph (b)(1) provides the manner of making an amendment to
delete, add or replace a paragraph. It also explicitly provides that
amendments to section headings or the title of the invention are to be
made as if the section heading or title were a paragraph.
Paragraph (b)(1)(i) continues to require that an amendment include
an instruction that unambiguously identifies the location, in the
specification, of the paragraph to be deleted or replaced, or where a
new paragraph is to be added.
Paragraph (b)(1)(ii) provides that any replacement paragraph must
include markings to show all changes relative to the immediate prior
version of the paragraph. Added subject matter must be shown by
underlining the added text. If any paragraph is being marked-up to show
added subject matter and at least part of the added subject matter is
to be underlined itself following entry, then the subject matter
intended to include underlining that is being added may be shown by
double underlining that part of the added text. Deleted subject matter
must be shown by striking through the deleted text with two exceptions:
(1) For deletion of five characters or fewer, double brackets may be
used (e.g., [[eroor]]; and (2) if strike-through cannot be easily
perceived (e.g., deletion of the number "4" or certain punctuation
marks), double brackets must be used (e.g., [[4]]). As an alternative
to using double brackets, however, extra portions of text may be
included before and after text being deleted, all in strike-through,
followed by including and underlining the extra text with the desired
change. The requirement to provide a clean version of the replacement
paragraph has been eliminated. Examples of typical amendments in the
revised practice will be available on the Office's Internet Web site
(http://www.uspto.gov).
Recognizing that some word processing software will automatically
generate a vertical line in the margin adjacent marked-up changes, the
Office will not object to the inclusion of a vertical line in the
margin of amendments to the specification or claims. As an alternative
to providing an amendment to the first line of the specification to
make the reference required by Sec. 1.78 to claim the benefit of a
prior application, the Office will continue the practice under Sec.
1.76 to accept an application data sheet that includes the required
reference in Sec. 1.78 to claim the benefit of a prior application.
Paragraph (b)(1)(iii) provides that when a paragraph is added to
the specification, the text of the new paragraph must not be
underlined.
Paragraph (b)(1)(iv) provides that the amendment paper must not
include a marked-up version of a deleted paragraph. Where applicant has
used the optional paragraph numbering system set forth in Sec.
1.52(b)(6), an appropriate instruction to delete a paragraph would be
"Please delete paragraph 0016." Applicants may also include the first
and/or last few words of a paragraph to uniquely identify the paragraph
to be deleted. An appropriate instruction would be "Please delete the
paragraph beginning `Potash may be obtained' on page 16."
Paragraph (b)(2)(i) continues to require that an amendment include
an instruction which unambiguously identifies the section heading of
the section of the specification being replaced.
Paragraph (b)(2)(ii), like its counterpart paragraph (b)(1)(ii),
has been revised to require that any replacement section must include
markings to show all changes relative to the immediate prior version of
the section. Added subject matter must be shown by underlining the
added text. If the replacement section being marked-up to show added
subject matter and at least part of the added subject matter is to be
underlined itself following entry, then the subject matter intended to
include underlining that is being added may be shown by double
underlining that part of the added text. Deleted subject matter must be
shown by striking through the deleted text with two exceptions: (1) for
deletion of five characters or fewer, double brackets may be used
(e.g., [[eroor]]; and (2) if strike-through cannot be easily perceived
(e.g., deletion of the number "4" or certain punctuation marks),
double brackets must be used (e.g., [[4]]). As an alternative to using
double brackets, however, extra portions of text may be included before
and after text being deleted, all in strike-through, followed by
including and underlining the extra text with the desired change.
Recognizing that some word processing software will automatically
generate a vertical line in the margin opposite marked-up changes, the
Office will not object to the inclusion of a vertical line
in the margin of amendments to the specification or claims. Paragraph
(b)(2)(ii) has also been revised to eliminate the requirement to
provide a clean version of the replacement section. Examples of typical
amendments in the revised practice will be available on the Office's
Internet Web site (http://www.uspto.gov).
Amendments to the abstract of the disclosure should be included in
that portion of applicant's amendment document which presents
amendments to the specification. Where the amendments to the abstract
are minor in nature, i.e., purely grammatical in nature or a limited
number of additions or deletions of subject matter are presented, the
abstract should be provided as a marked-up version using strike-through
and underlining as the methods to show all changes relative to the
immediate prior version. Where the abstract is being substantially
rewritten and the amended abstract bears little or no resemblance to
the previously filed version of the abstract, a new (substitute)
abstract may be provided in clean form accompanied by an instruction
for the cancellation of the previous version of the abstract. The text
of the new abstract must not be underlined. It would be
counterproductive for applicant to prepare and provide an abstract so
riddled with strike-through and underlining that its meaning and
language are obscured from view and comprehension. Whether supplying a
marked-up version of a previous abstract or a clean form new abstract,
the abstract must still comply with Sec. 1.72(b) requirements
regarding length and placement of the abstract on a separate sheet of
paper.
Paragraph (b)(3) has been rewritten to reflect a concurrent
revision to Sec. 1.125. Although the requirement for a clean form, or
version without markings, of a replacement paragraph or section of the
specification has been eliminated, the Office maintains the need for a
clean form and a marked-up version of a substitute specification. Since
substitute specifications generally include many changes, the clean
version will assist the examiner to view the substitute specification
without distractions from the markings. The marked-up version will
assist the examiner in readily ascertaining those changes being made
and to alert the examiner to the presence of any new matter. Amendment
by substitute specification is permissible where, as set forth in Sec.
1.121(b)(3)(i), an instruction to replace the specification is
submitted and, as set forth in Sec. 1.121(b)(3)(ii), the substitute
specification is provided in compliance with Secs. 1.125(b) and
(c). Section 1.125(b) continues to require that a substitute
specification be accompanied by a statement that it includes no new
matter. Section 1.125(c) now requires that two versions of the
substitute specification be provided. One version must be submitted
with markings showing all changes (strike-through, or in some cases
double brackets, indicating subject matter being deleted and
underlining indicating subject matter being added) relative to the
immediate prior version of the specification of record. An accompanying
clean version (without markings) must also be supplied.
Strike-through and underlining features are available in most, if
not all, commercially available word processing systems. Often times
these features are located and activated through a "format" menu,
which allows the user to create text, which is struck through or
underlined, or highlight text already presented. In the latter case,
previously presented text may be selected and strike-through or
underlining engaged such that the text is marked in the desired
fashion. Additionally, some word processing systems offer editorial
tools that permit a user to automatically "track changes" made when
editing a document. These editorial tools frequently use strike-through
as the manner in which to indicate deleted subject matter and
underlining as the manner in which to indicate added subject matter. To
clearly identify a line or a section of a document in which changes
have been made, these editorial tools may place a vertical line in the
left or right margin of the document directly adjacent to the line or
section of text in which the changes occur. The presence of such
vertical lines in the left or right margin of a replacement paragraph
or section of the specification or a marked-up version of a substitute
specification is acceptable.
Deleted subject matter may also be indicated in some circumstances
by double brackets placed at the beginning and the end of the deleted
text. Double brackets must be used if the deleted text would not be
easily perceived using strike-through. For example, changing "4
corners" to "three corners" should be indicated by "three [[4]]
corners" rather than "three4 corners" (the strike-through being
obscured by the horizontal line in the "4"). Double brackets may also
be used to indicate the deletion of five or fewer consecutive
characters. Alternatively, the use of strike-through and/or underlining
to show the deletion and/or addition of punctuation marks or difficult
to perceive characters may, in the replacement paragraph or rewritten
claim, encompass portions of text before and after the punctuation
marks or characters. Examples of typical amendments in the revised
format will be available on the Office's Internet Web site
(http://www.uspto.gov).
The prior requirement made in Secs. 1.121(b)(1)(ii) and
(b)(2)(ii) to provide a clean form, or version without markings, of a
replacement paragraph or section to the specification has been
eliminated.
Paragraph (b)(4) remains unchanged.
New Sec. 1.121(b)(5) has been added to provide that once a
paragraph, section, or specification is amended in a first amendment
document, re-presentation of the amended material in subsequent
amendment documents is not necessary unless it is amended again or a
substitute specification is provided.
Paragraphs (c)(1) through (c)(3) have been replaced with revised
Secs. 1.121(c) and (c)(1) through (c)(5). Paragraph (c) as revised
provides 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, except when the claim is
being canceled. Section 1.121(c) also requires submitting a complete
listing of all claims ever presented, including the text of all pending
and withdrawn claims, and the status of each and every claim in every
amendment document that includes an amendment to the claims. This
listing, if entered, replaces all prior versions of the claims in the
application. Inclusion of the claim status is required for each claim
in each claim listing and must be indicated in a parenthetical
expression following the claim number. The status of all claims in the
application, even those previously canceled or withdrawn, must be
indicated in the claim listing.
The status of each claim included in the claim listing must be
described by one of the following seven defined identifiers in
parentheses after the claim number:
(Original): Claim filed with the application
(Currently amended): Claim being amended in the current amendment
document
(Canceled): Claim deleted from the application.
(Withdrawn): Claim still in the application, but in a non-elected
status.
(Previously presented): Claim added or amended in an earlier amendment
document.
(New): Claim being added in the current amendment document.
(Not entered): Claim presented in a previous amendment document but
which has either not been entered or the status of entry is unknown to
applicant when a subsequent amendment to the claims is filed.
The status identifier "previously presented" must be used in
those circumstances where: (1) A claim has been previously presented as
"new" in a prior amendment document and entry of the claim is
certain; and (2) a claim has been previously presented as "currently
amended" in a prior amendment document. "Previously presented"
should not be used for a claim which was previously presented in a
prior amendment document, most particularly an after final amendment,
and entry of the claim was denied or applicant is uncertain at the
present time whether or not the claim has been approved for entry. The
status of "not entered" should be used for such claims. It is
foreseen that the latter described scenario could occur in those
situations where a first after final amendment has been filed and
applicant desires to file a second after final amendment prior to
receiving a notice of allowance or an advisory action notifying the
applicant whether or not claims presented or amended in the first after
final amendment have been entered. Thus, the status of "not entered"
should be used for claims which have not been approved for entry, or if
it is not known if they have been approved for entry.
Patent Cooperation Treaty (PCT) amendment procedures (i.e., PCT
Articles 19 and 34(2)(b)) are applicable during the international stage
of an international application, and thus status identifiers are not to
be used during the international stage. During the national stage
(pursuant to 35 U.S.C. 371), amendment rules under Sec. 1.121 apply to
preliminary and subsequent amendments. When submitting these amendments
in national stage, a claim listing is required with status identifiers
indicated in a parenthetical expression following the claim number. The
status identifier may indicate that claims were "original,"
"previously presented," or "canceled" based on changes made during
the international stage. More specifically, in an amendment under Sec.
1.121 in national stage, the status identifier "original" must be
used for claims that had been presented on or by the international
filing date and not modified or canceled. The status identifier
"previously presented" must be used in any amendment submitted during
national stage for all claims added or modified under PCT Articles 19
or 34 in the international stage that were subsequently entered in the
national stage. Similarly, the status identifier "canceled" must be
used in any amendment submitted during national stage for any claims
canceled under an Article 19 or 34 amendment in the international stage
that was subsequently entered in the national stage. If the amendment
under Sec. 1.121 in the national stage is making a change in a claim,
the status identifier "currently amended" must be used for that
claim.
The Office will continue the current practice of entering all
previously filed unentered after final amendments and amendments filed
with a request for continued examination (RCE) under Sec. 1.114,
unless applicant instructs otherwise. Absent specific instructions for
entry, these amendments will be entered in the order in which they were
filed. See MPEP Sec. 706.07(h) (page 700-85). The claim listing in the
most recent amendment will be used as the current claim listing. When
applicant submits an amendment after final or an amendment with an RCE,
the markings in the text of the claims should be made relative to the
claims of the last entered amendment (or the original claims if no
amendments have been entered). When filing an RCE, applicants are
encouraged to present a comprehensive amendment that includes all of
the desired changes previously presented in the unentered after final
amendments along with specific instructions not to enter the after
final amendments.
When claims are added, they must be numbered consecutively
beginning with the number next following the highest numbered claim
previously presented, whether entered or not. See Sec. 1.126.
Therefore, the claim listing in any after final amendment, or amendment
filed with an RCE, should include the claim number(s) for any unentered
new claims submitted in a previously filed after final amendment, the
status identifier should be indicated as (not entered) and the text of
such claims must not be presented. Consecutive unentered claims may be
aggregated into one line (e.g., claims 20-25 (not entered)) in the
claim listing. If applicant wishes to represent the previously
submitted but unentered new claims, the claim listing must include the
new claims with claim numbers beginning with the number next following
the highest numbered claim previously presented. The new claims must
include the status identifier "new" and the text of the new claims.
The Office will also continue the current practice of entering
unentered after final amendments that the examiner has indicated would
be entered upon the filing of an appeal. Absent specific instructions
for entry, these amendments will be entered in the order in which they
were filed. The claim listing in the most recent amendment will be used
as the current claim listing.
Combining the status identifiers (withdrawn) and (currently
amended) into a single status identification, e.g., (withdrawn--
currently amended), may be used in those situations where a claim has
been previously withdrawn as non-elected but applicant wishes to amend
the claim in an effort to rejoin the withdrawn (non-elected) claim with
the elected invention. In all other situations only a single status
identifier may be used.
As a result of the changes to Sec. 1.121, each amendment document
will be self-contained, as it sets forth a complete listing of all
claims, including the text of all pending claims, for examination and
provides the status of all of the claims in one location in the file.
Paragraph (c)(1) provides for the presentation of the claims in
ascending numerical order. This prevents the grouping of claims by
status (all "new" claims together, all "currently amended" claims
together, etc.), and ensures a complete listing of all claims in
numerical order, regardless of status. Consecutive "canceled" or
"not entered" claims, however, may be aggregated (e.g., "Claims 1-5
(canceled)"). Further, paragraph (c)(1) requires 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. In other words, the complete listing of all of
the claims must commence on a separate sheet of the amendment document.
This requirement facilitates indexing of the application papers.
Paragraph (c)(2) requires that markings be provided in claims to
show the addition or deletion of subject matter. Added subject matter
must be shown by underlining. If any claim is being marked-up to show
added subject matter and at least part of the added subject matter is
to be underlined itself following entry, then the subject matter
intended to include underlining that is being added may be shown by
double underlining that part of the added text. Deleted subject matter
must be shown by striking through the deleted text with two exceptions:
(1) For deletion of five characters or fewer, double brackets may be
used (e.g., [[eroor]]; and (2) if strike-through cannot be easily
perceived (e.g., deletion of the number "4" or certain punctuation
marks), double brackets must be used (e.g.,
[[4]]). As an alternative to using double brackets, however, extra
portions of text may be included before and after text being deleted,
all in strike-through, followed by including and underlining the extra
text with the desired change. This section eliminates the previously
accepted use of equivalent marking systems. No other methods of
markings or comparison (other than underlining, strike-though or double
brackets) are permitted. Only claims of the status "currently
amended," or "withdrawn" if also being amended, shall include
markings showing changes made. Examples of typical amendments in the
revised format will be available on the Office's Internet Web site
(http://www.uspto.gov).
Paragraph (c)(3) requires that the current amendment document also
include the submission of a clean version, i.e., without any markings
in the presentation of text, of all pending and withdrawn claims not
being amended, but being included as part of the claim listing in the
current amendment document. The presentation of a clean version in any
"original," "previously presented," or "withdrawn" claim
constitutes an assertion that it has not been changed relative to the
immediate prior version except to omit markings that may have been
present in the immediate prior version of the claims of the (current)
status of withdrawn or previously presented. This relieves the Office
of the burden of cross-reading various versions of the same claim to
ensure accuracy of rewritten claims. Any claims added by amendment must
be indicated with the status of "new," presented in clean version,
and shall not be underlined.
Paragraphs (c)(4)(i) and (ii) set forth when claim text must not be
presented and that cancellation of any claim is effected by mere
instructions to cancel. Alternatively, identifying the status of a
claim in the complete listing of all claims as "canceled" will
constitute an instruction to cancel the claim. The text of "canceled"
and "not entered" claims must not be presented; and these claims must
be indicated as being in the status of "canceled" or "not entered,"
respectively.
Paragraph (c)(5) requires that a claim canceled in its entirety can
only be reinstated if presented as a new claim with a new claim number.
Paragraph (d) requires that any drawing changes be submitted in
compliance with Sec. 1.84 on replacement sheets as an attachment to an
amendment document. An accompanying detailed explanation of all of the
changes should be provided on a separate sheet in the drawing
amendments or remarks section of the amendment document. A marked-up
copy of one or more of the figures being amended, with annotations, may
also be included to provide further explanation of the changes made.
The marked-up version must be labeled as "Annotated marked-up
Drawings." 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 and appropriate changes made to the brief description of
the several views of the drawings for consistency. 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 (as per Sec. 1.84(c)) so as
not to obstruct any portion of the drawing figures. If the changes are
not accepted by the examiner, the applicant will 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.
In order to bring Sec. 1.121(g) into conformity with earlier
changes, "(c)(1)" is changed to "(c) and (c)(1) through (c)(5)."
A new Sec. 1.121(h) has been inserted 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.
Previous Secs. 1.121(h), (i), and (j) have been redesignated
as Secs. 1.121(i), (j), and (k), respectively.
Section 1.125
Paragraph (b) has been revised to add a cross-reference to Sec.
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.
Paragraph (c) of Sec. 1.125 has been revised to require the
presentation by applicant of both a marked-up version of the
specification (using strike-through or in some circumstances double
brackets to indicate deleted subject matter and underlining to indicate
added subject matter) and a clean version without markings. Deleted
subject matter must be shown by striking through the deleted text or,
in some cases, placing double brackets at the beginning and the end of
the deleted text. Double brackets must be used if the deleted text
would not be easily perceived using strike-through, such as, the
deletion of a punctuation mark or a number. Double brackets may also be
used to indicate the deletion of five or fewer consecutive characters.
Examples of typical amendments in the revised format will be available
on the Office's Internet Web site (http://www.uspto.gov).
Section 1.173
Current Sec. 1.173(b)(3) is being replaced by Secs.
1.173(b)(3), (3)(i) and(3)(ii) as a conforming amendment, in order to
provide consistency between utility and reissue drawing practice.
Section 1.823
Section 1.823 has been amended by revising Sec. 1.823(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.
Response to Comments
The Office published a notice proposing changes to the rules of
practice to implement electronic maintenance of official patent
application records. See Changes to Implement Electronic Maintenance of
Official Patent Application Records, 68 FR 14365 (Mar. 24, 2003), 1269
Off. Gaz. Pat. Office 166 (Apr. 22, 2003) (proposed rule). The Office
received twenty written comments (from Intellectual Property
Organizations, Law Firms, and Patent Practitioners) in response to this
notice. Comments generally in support of a change are not discussed.
The comments and the Office's responses to those comments follow:
Comment 1: A number of comments questioned if the Office, after
making the proposed change in Sec. 1.3, would continue its practice of
providing notice to an applicant, patent owner or third party requester
when a paper submitted by that party constituted a failure of proper
decorum and courtesy.
Response: The Office will continue to provide written notice that a
paper submitted by a party to the Office constitutes a failure of
proper decorum and courtesy. Following the mailing of the written
notice, the paper will no longer be retained in the public electronic
image file wrapper. The paper version will eventually be destroyed
under a NARA approved schedule. The Office has also amended Sec. 1.3
to provide that notice of non-entry will be provided.
Comment 2: One comment indicated that there was no reasonable basis
for the proposed change to Sec. 1.3.
Response: It is noted that following transition to an image file
wrapper environment, the physical paper constituting a failure of
proper decorum and courtesy will either have been previously physically
destroyed or will be in a temporary storage facility arranged by date
order of scanning. Therefore, the Office will be unable to provide the
document or, if the document is still in temporary storage, would incur
unnecessary costs and delays to provide the physical paper document.
Comment 3: One comment indicated that the proposed change to Sec.
1.9 to add a new Sec. 1.9 (R) should be revised to indicate that a new
Sec. 1.9 "k" has been added.
Response: The comment has been adopted. The rule has been revised
to add a new Sec. 1.9 "k" rather than a Sec. 1.9 (R).
Comment 4: As to Sec. 1.14(a), two responses suggested expanding
the applications that are available to the public without a petition
for access to also include unpublished pending applications that are
either incorporated by reference in certain documents or 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, or with effect as a U.S. application.
One comment stated that since almost ninety percent of pending U.S.
applications are now published, there is no sound public policy or
unusual Office burden that should prevent public access to these
unpublished pending applications, and argued that these unpublished
pending applications can be an essential source of prosecution history
that is necessary, for example, to interpret the scope of claims in a
patent that relies on the unpublished pending application for filing
date benefit.
Response: The comment that pending applications that are relied
upon under 35 U.S.C. 119(e), 120, 121 or 365 should be more readily
available to the public has been adopted, but the limited access to
applications that are incorporated by reference remains. Accordingly,
proposed Sec. 1.14(a)(1)(v) (which address unpublished pending
applications) has been separated into Secs. 1.14(a)(1)(v) (for
benefit situations) and (vi) (for incorporation by reference or
otherwise identified situations). A copy of the application as
originally filed, the file contents, or any document in the file of an
unpublished pending application that is relied upon in a benefit claim
will be available upon written request pursuant to Sec. 1.14(a)(1)(v).
A copy of the application as originally filed for an unpublished
pending application that is incorporated by reference will also be
available upon payment of the required fee pursuant to Sec.
1.14(a)(1)(vi). Thus, these types of pending applications will continue
to require payment of a fee for copies, as access to these applications
is limited. The Office will continue to require that an order for a
copy of the file contents, or any paper in the file, be placed with the
Office of Public Records (OPR) in order to reduce the amount of time
that the application is removed from the examination process. Of
course, pursuant to Sec. 1.14(b), if the Office has an image file
wrapper (IFW) and once the public inspection utility is available to
the public, the public would be permitted to inspect the IFW at any
time, even when the application is in final data capture for issuance
of the application as a patent.
Comment 5: One comment also requested clarification as to the
definition of "referenced." Another comment indicated that there is a
defect with Sec. 1.14 in that it does not notify the public that the
Office will provide either a copy of or access to a file for an
abandoned unpublished application if the application number for that
abandoned unpublished application is referenced in a document in the
file of a publicly available application, such as in an IDS in the
publicly available application. The Office should revise Sec. 1.14 to
clarify that point.
Response: In the final rule, the term "identified" has been used
instead of "referenced" in order to provide greater clarity. For an
application to be "identified" there must be a reference to the
application in the published patent or patent application document
itself. In Sec. 1.14(a)(iv), the following sentence has been added:
"An application is considered to have been identified in a document,
such as a patent, when the application number or serial number and
filing date, first named inventor, title and filing date or other
application specific information are provided in the text of the
patent, but not when the same identification is made in a paper in the
file content of the patent and is not included in the printed patent or
application publication." As a result, any application that is
identified in a patent whether on the front page of the patent, in the
"References Cited" section, incorporated-by-reference in the
specification, or relied upon for priority, or in some other manner, is
available to the public. If an application is identified in an
amendment to the specification of an application, and that amendment is
later canceled, then the application is not identified in the patent
document.
Note that if the application was relied upon under 35 U.S.C. 119(e)
or 120, but for some reason, the application was not identified in the
patent application publication (e.g., the benefit claim was made in a
preliminary amendment and preliminary amendments are not reflected in
patent application publications (see Sec. 1.215(a))), the application
is still available to the public because Office computer records will
show the benefit claim.
It not enough that the application has been referenced somewhere in
the file content, such as in an examiner's Office action. An
application that is mentioned in an examiner's Office action may be
available on petition, but not automatically by operation of the rule.
Examiners need to be able to mention copending commonly assigned
applications and to distinguish the application that they are examining
from other applications of the applicant, and the record needs to be
clear as to discussion of other relevant applications, but if such a
discussion also had the effect of laying open the related applications,
then the Office would continually be subjected to requests to expunge
the record of allegedly unnecessary references to other applications.
Comment 6: One comment noted that proposed new Sec. 1.14(b) states
that "the Office may at its discretion provide access only to an
electronic copy of the specification, drawings, and file contents of
the application." The comment further noted that the proposed rule
does not indicate how the Office will "provide access only to an
electronic copy" and requested that the proposed rule be revised to
clarify what "access only to an electronic copy" means to apprise
practitioners of what they need to do to get that access.
Response: The comment has not been adopted. The mechanism by which
the Office will provide electronic copies is anticipated to change
rapidly over the next five years, and the text of proposed Sec.
1.14(b) was chosen to give the Office flexibility in the mechanism in
which electronic access will be provided. At this time, the Office does
not limit access for any patent applications to electronic copies, and
when the Office does limit such access, the Office will explain how to
obtain such access on the Office's Internet Web site as well as in
other documents.
Comment 7: Several comments indicated approval of proposed new
Sec. 1.14(e) to Sec. 1.14. One comment requested that the Office
streamline the global patenting process by relieving applicants of the
burden of having to place and track orders for certified copies and
then ship them around the world by relieving applicants who consent to
sharing the electronic file of their applications of the need to
request that the Office transmit their application to other IP offices
in which they are claiming priority, by deeming a priority claim made
in an IP office with which the Office has a bilateral agreement as
authorization for the Office to transmit the file to that IP office or
provide that office with access to the file.
Response: Pending implementation of the system to provide document
exchange, the revision to Sec. 1.14(e) has been postponed. Deeming a
priority claim made in an IP office with which the Office has a
bilateral agreement as an authorization for the Office to transmit a
file to that Office and for the Office to electronically obtain the
priority document is an excellent suggestion that the Office will
explore further. At this time, however, the Office does not consider it
advisable to treat a priority claim as being sufficient to permit an
office of subsequent filing to "pull" the priority document from the
office of first filing. The Office prefers to provide for the office of
first filing to "push" the priority document to the office of
subsequent filing at the request of the applicant to do so. This is
because applicants do sometimes inadvertently provide the wrong
application number in their priority claim.
Comment 8: Another comment requested that the Office create a
process by which the applicant provides express written consent to the
sharing of its electronic application with other IP offices as simply
as possible by allowing the consent to be incorporated into the
Application Transmittal as well as being submitted as a separate paper
either at the time the application is filed or subsequent thereto.
Response: The proposed changes to Sec. 1.14(e) have been
postponed. The comments made will be considered when the proposed
change is reconsidered. The Office plans to make consent to share its
electronic application as simple as possible. The Office has a strong
interest in sharing search results and other information with other IP
offices.
Comment 9: One comment stated that proposed new Sec. 1.14(e)
indicates that the Office may share unpublished applications with other
IP offices, if the applicant consents, and presumed that the Office
will implement a procedure wherein the applicant is notified of an
intent to share the application with the other IP offices, and then
requires the applicant to take some affirmative action after notice by
the Office, as is proposed in Sec. 1.14(f)(2) regarding decisions the
Director wants to publish for Board proceedings that are not otherwise
public.
Response: The proposed changes to Sec. 1.14(e) have been
postponed. The comments made will be considered when the proposed
change is reconsidered.
Comment 10: Finally, under Sec. 1.14(f)(2) (as proposed), another
comment encouraged the Office to make any action or decision that
involves an interpretation of patent laws and regulations that would be
of important precedential value available to the public regardless of
whether the decision discloses a trade secret or other confidential
information. The comment explained that the great majority of
applications will be available to the public by virtue of a publication
of most applications eighteen months after first filing, and argued
that the policy and practice of applications being published represents
the rule rather than the exception. In the unique circumstances where
an action or decision is considered to have important precedential
value, the comment argued that the general rule of transparency to the
public should prevail over the interests of confidentiality of an
individual application that is not even available to most applicants.
In addition as to Sec. 1.14(f) (as proposed), which indicates that
the Office may publish certain decisions of the BPAI, several comments
on the proposal stated that the Director has authority for publication
of such decisions based upon the Director's authority specified in 35
U.S.C. 122(a) to make "information concerning" patent applications
public in "special circumstances as may be determined by the
Director." The comments in response to the notice of proposed rule
making listed one special circumstance as an opinion concerning an
application that claims the benefit of a published application,
including a published foreign priority application, but the comments in
response to this proposed change argued that there is no logical
relationship between foreign priority and a benefit to the public, and
that there is no logical reason for the Director to treat a claim to
priority of a published foreign application as a "special
circumstance." Another comment stated that there is a public purpose
served by publication of BPAI decisions, even if the BPAI does not
think those decisions, as noted in the comments, "involve an
interpretation of patent laws or regulations that would be
precedential," and argued that the Director should state that any
decision of the BPAI concerning a patent application is a special
circumstance warranting publication of the decision.
Response: On reconsideration, the changes proposed in Sec.
1.14(f)(1) and (2) were not necessary to implement an image file
wrapper system. The proposed changes, including the public comments on
the proposed changes, may be reconsidered in the future.
Comment 11: One comment requested clarification on whether the
Office intended to require all pages of a paper submitted to the Office
in a particular paper to be the same size (e.g., all either on 21.6 cm
by 27.9 cm (8 1/2 by 11 inch) or 21.0 cm by 29.7 cm (DIN size A4)
paper) in proposed Sec. 1.52(a)(1).
Response: All papers being submitted to the Office should be on
either 21.6 cm by 27.9 cm (8 1/2 by 11 inch) or 21.0 cm by 29.7 cm
(DIN size A4) paper. Rule 1.52(a)(1) currently requires all papers to
be on sheets of paper being the same size. For example, each page of an
amendment must be on the same size paper. This rule does not, however,
require that all correspondence in an application be on the same size
paper. As a result, if a foreign client forwards to the patent
practitioner prior art on 21.0 cm by 29.7 cm (DIN size A4) paper, a
transmittal letter and form USPTO/SB/08 on 21.6 cm by 27.9 cm (8 1/2
by 11 inch) paper may be submitted together with copies of the cited
references on 21.0 cm by 29.7 cm (DIN size A4) paper and be consistent
with Sec. 1.52.
Comment 12: One comment requested that either the Office change its
practice and specifically identify what specific provision or
provisions of Sec. 1.52 were not complied with in making a decision of
non-compliance or assist applicants in submitting proper papers after a
notice has been mailed.
Response: The Office did not propose any changes to its practice of
treating papers not in compliance with Sec. 1.52. Nevertheless,
several of the most common errors are, in fact, described with
particular detail in notices of non-compliance mailed by the Office.
Other less common errors are more generally described. This represents
a balancing of the need to process application papers in a timely
manner with the desire to assist applicants. Further, when assistance
is timely requested, the Office makes efforts to assist applicants in
submitting papers.
Comment 13: One comment requested that Sec. 1.52(i) be liberalized
to permit single line spacing because the Office would no longer need
to hand-enter amendments within the electronic files and because the
current requirement creates bulky files for applicants.
Response: This request cannot be adopted. First, during the
transition to an image file wrapper environment, the Office must
continue its current paper-based system for a considerable number of
applications. Second, even after the transition is complete, the
greater than single line spacing is useful for image processing (e.g.,
using optical character recognition technology). This is particularly
true for text including superscript or subscript font. Further, the
change would be inconsistent with PCT Rule 11.9(c) and would therefore
be undesirable.
Comment 14: One comment suggested that the preamble of Sec. 1.59
be reconsidered. It was suggested that the Office should not,
particularly during an evaluation period, destroy original (pre-
scanning) paper copies of document to safeguard the usability of its
records.
Response: The Office plans to store the original paper copies for a
period of time while the Office evaluates the effectiveness of its
quality control and quality assurance procedures. The original paper
copies will eventually be destroyed under a NARA-approved schedule.
Comment 15: Several comments questioned if the Office, after making
the proposed change in Sec. 1.59, would continue its practice of
providing notice to an applicant, patent owner or third party requester
when a paper was expunged.
Response: The Office will continue to provide written notice when
granting a petition for expungement. Following the mailing of the
written notice, the expunged paper will no longer be retained in the
public electronic image file wrapper. The Office has also amended Sec.
1.59 to provide that notice of non-entry will be provided.
Comment 16: One comment requested clarification concerning whether
an application's title is considered an "other part" in proposed
Secs. 1.71 and 1.72 or whether the title should continue to be
provided on the first page of the specification.
Response: The title of the invention, if presented as part of the
specification as a heading on the front page of the specification, is
considered to be part of the specification. See Sec. 1.77(b)(1).
Therefore, the title may continue to be provided on the first page of
the specification.
Comment 17: One comment suggested that the Office change its
internal practices to require applicant's consent to making most
substantive changes to abstracts by revising MPEP Sec. 608.01(b).
Response: MPEP Sec. 608.01(b) provides that changes to the
abstract at allowance are to be made by examiner's amendment.
Procedures for preparing examiner's amendment are set forth in MPEP
Sec. 1302.04. Substantive changes to the abstract must be made by
formal examiner's amendment with approval from the applicant.
Therefore, the current practice and procedures are consistent with the
comment.
Comment 18: One comment suggested that the Office reconsider its
proposal to eliminate the last sentence of current Sec. 1.72 and
revised the sentence to read: "In proceedings within the Office, the
Abstract shall not be used for interpreting the scope of the claims,"
so that examiners would not be tempted to rely on the Abstract to
displace the "broadest reasonable interpretation" of a claim.
Response: The comment is not adopted. The Federal Circuit has
indicated that the abstract is a potentially helpful source of
intrinsic evidence in determining the scope of the claims. See Hill-Rom
Co. 209 F.3d at 1341 n.*, 54 USPQ2d at 1440 n.1 (Fed. Cir. 2000).
Comment 19: Several comments indicated that it would be unfair for
the Office to reduce, by one day, the time period in Sec. 1.97(c) for
submission of an information disclosure statement (IDS).
Response: The Office proposed this change to realign when
applicants would be entitled to consideration of IDSs in light of the
real time access to changes in status information by accessing the
Office's computer records via the PAIR. Several comments indicated that
this change would unfairly burden honest applicants in order to punish
a small number of dishonest ones. In light of the comments, the Office
has not gone forward with this proposal. The Office is actively
considering a change in PAIR to delay the inclusion of changes in
status information in PAIR until the next business day after changes in
status as an alternative remedy that would not be overly inclusive.
Comment 20: One comment suggested that the Office permit submission
of e-IDS statements listing foreign patent documents and non-patent
literature.
Response: The Office has been investigating how to expand the use
of e-IDS to non-U.S. patent documents to allow applicant to submit a
broader variety of listings of references and to allow examiners to
easily retrieve the cited references. Unfortunately, the Office
resources do not permit expansion at this time.
Comment 21: One comment questioned if the Office, after determining
that a paper submitted under Sec. 1.99 could not be entered, would
notify the party submitting the paper that it was not entered.
Response: The Office will continue its practice of not
corresponding with third parties following publication of an
application under 35 U.S.C. 122(b), since the Office's procedures must
not permit third party protests after publication without the express
written consent of the applicant. See 35 U.S.C. 122(c).
Comment 22: A number of comments suggested that the Office reduce
the number of status identifiers required as part of Sec. 1.121(c).
Several comments stated that the eleven identifiers described for use
by the Office were unnecessarily complex, and having to use such a
large number could lead to confusion and errors. Most of the focus in
the comments was on the identifiers "(Reinstated--formerly claim
)," "(Previously reinstated)," "(Re-presented --formerly
dependent claim )" and "(Previously re-presented)." Several
comments suggested the use of no more than five identifiers, since it
was felt a number of the proposed identifiers might be overlapping or
redundant.
Response: The comments, for the most part, have been adopted by the
Office. Paragraph (c) is amended in the final rule to require the use
of only the following identifiers: (Original), (New), (Currently
amended), (Withdrawn), (Canceled), (Not entered) and (Previously
presented), the last of which is inclusive of previously added and
previously amended claims.
The use of appropriate identifiers in the image file wrapper
environment is designed to inform any user (examiner, technical support
staff, applicant, practitioner, etc.) of the current status of each and
every claim in the application. Labeling a claim as "new" or
"currently amended" serves the desired purpose by providing a focus
on what is being added to the claims in the application via the current
amendment, relative to the immediate prior version. Additional
explanations relating to status identifiers or classification of claims
into a particular status can be provided at any time in the "Remarks"
section of the amendment document.
Claims presented for the first time in an amendment after final
rejection should be classified with the status identifier "new." If
an applicant presents claims in an amendment after
final rejection, which may or may not have been entered by the Office
prior to the submission of a (subsequent) supplemental amendment, a
notice of appeal or an RCE request, the second or subsequent amendment
should classify any claims presented for the first time in the second
or subsequent amendment as "new." Any claims presented for a second
or subsequent time (which were previously not entered) should be
classified as "not entered." If an applicant presents new claims in
an amendment whose entry status is unknown (at the time of filing of a
second or subsequent amendment), and the same and/or additional claims
are to be presented in a subsequently filed amendment, claim numbers
following the last used numbers of the previously filed paper must be
employed. See Sec. 1.126. Even if the earlier amendment is not
entered, the claim numbers presented in the subsequent amendment must
begin after the last numbered claim of the previously submitted
amendment. The Office will make modifications to correct the claim
numbering prior to allowance once any unentered papers have been
approved for entry.
Comment 23: Several comments addressed the status of "withdrawn"
claims and the desirability of including the text of these claims in
the complete claim listing (set), in order to facilitate the
calculation of fees and relieve the burden of searching the entire file
to locate and determine claim dependencies, etc. Another comment argued
on behalf of presenting the claim text of these claims in order to be
able to present amendments so as to have them rejoined with the
claim(s) being examined.
Response: The Office has adopted the suggestion. Paragraph (c) has
been revised to require the inclusion of the text of withdrawn claims
in the claim listing (set). Paragraph (c) is amended to reflect this
change. If withdrawn claims are being amended, they must still be
classified with the status identifier "withdrawn," but may include
markings to show changes.
Comment 24: One comment proposed that the Office modify the
language of the rule to provide for presentation of some text that is
to be deleted from the specification in order to assist in determining
the exact location of text that is to be canceled.
Response: The suggestion made in this comment will be permitted in
practice by the Office. There are a number of ways to identify the
precise location of subject matter which is to be deleted from the
specification, such as, use of paragraph numbers, page number and line
number identification: "paragraph at page 4 beginning with `The
apparatus * * *,' ". Paragraph (b)(1)(i) of this section provides that
"Amendments to the specification may be made by submitting: (i) An
instruction, which unambiguously identifies the location * * *" If
inclusion of a few words of text is needed to "unambiguously" or
uniquely locate the paragraph to be deleted (e.g., due to the lack of
line numbering), the use of the first and/or last few words of the
paragraph is permitted.
Comment 25: One comment included the suggestion that the claim
listing not be required to present claims in numerical order, but to
permit groupings of claims in other than ascending numerical order. The
commenter believes it is more important to an examiner to have the
claims presented in groupings that represent a logical order, such as
by subject matter relationship.
Response: The point raised by this comment has validity only in the
original presentation of claims, where applicant can control the
groupings of related claims as well as the claim numbering. In
amendment practice, however, the re-presentation of claims in a
different order, or the addition of new claims in an order other than
numerical, would cause confusion in processing, make fee calculations
difficult and possibly result in claims being overlooked. There are
many other aspects of processing which a patent application undergoes,
where strict numerical presentation of claims is essential.
Comment 26: A number of comments have been received which oppose
the use of strike-through as the only marking system acceptable to
indicate deleted subject matter in amendments of the specification and
claims. Several of the comments raised the likelihood of confusion as
the principal argument against the use of strike-through, where, for
example, the numeral "4" is to be deleted, or a punctuation mark is
to be changed. Others suggested possible confusion for deletion of
formula elements. Another noted the inability of some word processing
programs to make strike-through a permanent part of the final document.
Response: The Office has decided to modify the mandatory
requirement of the use of strike-through to permit the use of double
brackets (i.e., [[ ]]) where five or fewer characters are being deleted
or where the use of strike-through cannot be easily perceived. Strike-
through will still be the required method of indicating or marking text
that is to be deleted by the amendment. Double brackets could be used,
for example, when changing "4 corners" to "three corners" in an
amendment document, which would normally be perceived with difficulty
if only strike-through were required. Double brackets may also be used
when deleting five or fewer characters.
Comment 27: One comment suggested that the proposed rule (Sec.
1.121(b)(1)(ii)) provided for underlining with respect to a new
paragraph being added to the specification, while the sample amendment
(on the Office's Internet Web site) did not include underlining of an
added paragraph. This apparent inconsistency could lead to confusion
among applicants and practitioners.
Response: The addition of Sec. 1.121(b)(1)(iii) to the final rule
clarifies the use of markings for added paragraphs in the
specification. This section provides that the full text of any added
paragraph to the specification is to be presented without underlining.
Comment 28: Several comments opposed the requirement of Sec.
1.121(d) that replacement sheets of drawings complying with Sec. 1.84
be submitted in an amendment document. It was felt that applicants
might incur an unnecessary expense if the drawings were not approved
for entry.
Response: The suggestions that the Office not require replacement
sheets of drawings which comply with Sec. 1.84 have not been adopted.
Since the majority of corrected drawings are accepted without requiring
further modification, savings of time and resources would result in the
majority of cases if additional processing is thereby eliminated. In
order to provide an accompanying explanation of the changes being made,
applicants must include explanatory comments in the remarks section of
the amendment document. In addition, applicant may, under paragraph
(d)(1), provide a marked-up drawing with annotations to show the
changes made. The examiner may also require a marked-up drawing under
paragraph (d)(2).
Comment 29: One comment questioned the current practice of
retroactive non-entry of papers in violation of Sec. 10.10(b). The
comment also requested that papers violating Sec. 10.10(b) be accepted
into the record and serve to toll any time period running against the
applicant until after the Office has notified applicant that a paper in
the application was submitted in violation of Sec. 10.10(b). The same
comment requested that the Office only disapprove entry of papers
violating Sec. 10.10(b) that are submitted after the Office has
provided a first notice in an application that papers in violation of
Sec. 10.10(b) had been submitted.
Response: The Office did not propose to revise Sec. 10.10(b).
Therefore, the comment was not germane to the changes to the rules of
practice that are currently under consideration. The Office will
consider the comment, and may reconsider its current practice or
propose revisions to its rules of practice, in the future.
Comment 30: One comment requested that the Office explicitly
provide for the inclusion of a path, file name, date and time of
creation corresponding to the location of an application's
specification on applicant's hard drive within the application's
specification or within some other document submitted with the
application.
Response: The Office's current rules of practice permit inclusion
of this material within the transmittal letter accompanying a new
application filing or an amendment document.
Comment 31: One comment suggested that the Office permit or require
filing in Adobe "pdf" format, preferably preserving the text portion
as searchable text. It was also suggested that the Office consider
"freezing" the format of Adobe used in order to prevent increased
costs.
Response: The Office is exploring the business implications of
accepting information submitted in an Adobe "pdf" format, and is
assessing the legal, business, and technical issues of permitting
applications to be filed in this format.
Comment 32: An inquiry concerning data security was received.
Response: Efforts to safeguard data security are not germane to
this rule making and will be discussed by separate document.
Comment 33: One comment inquired how the Office was planning to
safeguard against facilitating identity theft when it posts images of
application data on line.
Response: The image file wrapper of an issued patent or published
patent application including any signatures included therein is a
public document that the Office intends to make publicly available. The
Office plans to make these records available for public inspection over
the Internet by October 2004. While the Office is actively considering
adopting electronic signatures, there is currently no special efforts
to safeguard the signatures included in the image file wrapper of
applications that are currently pending or any of the signatures
submitted in applications filed after a rule change to permit
electronic signatures. It is also noted that image copies of any
publicly available patent application or patent file are already
available from a number of private sector vendors. Therefore, the
Office's plan to make the image file wrapper of patents and published
applications available for public inspection over the Internet does not
increase the risk of identity theft.
Rule Making Considerations
Administrative Procedure Act
This notice adopts 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 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 and the manner of
filing information disclosure statements. Accordingly, this final rule
involves 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). Accordingly, this final rule may be adopted without
prior notice and opportunity for public comment under 5 U.S.C. 553(b)
and (c), or thirty-day advance publication under 5 U.S.C. 553(d).
Regulatory Flexibility Act
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 (or any other law), the analytical
requirements of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.
are inapplicable. As such, the regulatory flexibility analysis is not
required, and none has been provided. See 5 U.S.C. 603.
Executive Order 13132
This 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 rule making 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 final rule have been
reviewed and previously approved by OMB under the following control
numbers 0651-0021, 0651-0031, 0651-0032 and 0651-0033. The 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, ANNEX/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, PTO/SB/08B, PTO/SB/21-27, PTO/SB/30-32,
PTO/SB/35-37, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/67-68, PTO/SB/91-92,
PTO/SB/96-97, PTO-2053-A/B, PTO-2054-A/B, PTO-2055-A/B.
Type of Review: Currently under review.
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 and 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, PTO/SB/13PCT, PTO/SB/16-19, PTO/SB/29,
PTO/SB/101-110.
Type of Review: Currently under review.
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 45 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
Cover Sheet, 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, PTO/SB/50-51, PTO/SB/51S, PTO/SB/52-53,
PTO/SB/55-58, 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: 2 minutes to 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, Commissioner for Patents, P.O. Box 1450, Alexandria, VA
22313-1450, 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 recordkeeping
requirements, Small Businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is amended as
follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.3 is revised to read as follows:
Sec. 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. A notice of
the non-entry of the paper will be provided. Complaints against
examiners and other employees must be made in correspondence separate
from other papers.
3. Section 1.9 is amended by adding paragraph (k) to read as follows:
Sec. 1.9 Definitions.
* * * * *
(k) Paper as used in this chapter means a document that may exist
in electronic 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:
Sec. 1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application information. Patent
applications that have not been published under 35 U.S.C. 122(b) are
generally preserved in confidence pursuant to 35 U.S.C. 122(a).
Information concerning the filing, pendency, or subject matter of an
application for patent, including status information, and access to the
application, will only be given to the public as set forth in Sec.
1.11 or in this section.
(1) Records associated with patent applications (see paragraph (g)
for international applications) may 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 Sec. 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 may be provided upon request and payment of the
appropriate fee set forth in Sec. 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 Sec. 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 may be
provided to any person upon request, and payment of the appropriate fee
set forth in Sec. 1.19(b).
(iii) Published pending applications. A copy of the application-as-
filed, the file contents of the application, or a specific document in
the file of a pending application that has been published as a patent
application publication may be provided to any person upon request, and
payment of the appropriate fee set forth in Sec. 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 (h) of this section.
(iv) Unpublished abandoned applications (including provisional
applications) that are identified or relied upon. The file contents of
an unpublished, abandoned application may be made available to the
public if the application is identified in a U.S. patent, a statutory
invention registration, a U.S. patent application publication, or an
international patent application publication of an international
application that was published in accordance with PCT Article 21(2). An
application is considered to have been identified in a document, such
as a patent, when the application number or serial number and filing
date, first named inventor, title and filing date or other application
specific information are provided in the text of the patent, but not
when the same identification is made in a paper in the file contents of
the patent and is not included in the printed patent. Also, the file
contents may be made available to the public, upon a written request,
if benefit of the abandoned application is claimed under 35 U.S.C.
119(e), 120, 121, or 365 in an application that has issued as a U.S.
patent, or has published as a statutory invention registration, a U.S.
patent application publication, or an international patent application
that was published in accordance with PCT Article 21(2). A copy of the
application-as-filed, the file contents of the application, or a
specific document in the file of the application may be provided to any
person upon written request, and payment of the appropriate fee (Sec.
1.19(b)).
(v) Unpublished pending applications (including provisional
applications) whose benefit is claimed. A copy of the file contents of
an unpublished pending application may be provided to any person, upon
written request and payment of the appropriate fee (Sec. 1.19(b)), if
the benefit of the application is claimed under 35 U.S.C. 119(e), 120,
121, or 365 in an application that has issued as a U.S. patent, 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). A copy of the application-as-filed, or a specific
document in the file of the pending application may also be provided to
any person upon written request, and payment of the appropriate fee
(Sec. 1.19(b)). The Office will not provide access to the paper file
of a pending application, except as provided in paragraph (c) or (h) of
this section.
(vi) Unpublished pending applications (including provisional
applications) that are incorporated by reference or otherwise
identified. A copy of the application as originally filed of an
unpublished pending application may be provided to any person, upon
written request and payment of the appropriate fee (Sec. 1.19(b)), if
the application is incorporated by reference or otherwise identified 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).
The Office will not provide access to the paper file of a pending
application, except as provided in paragraph (c) or (h) of this
section.
(vii) When a petition for access or a power to inspect is required.
Applications that were not published or patented, that are not the
subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365 in
an application that has issued as a U.S. patent, 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), or
are not identified in a U.S. patent, a statutory invention
registration, a U.S. patent application publication, or an
international patent application that was published in accordance with
PCT Article 21(2), are not available to the public. If an application
is identified in the file contents of another application, but not the
published patent application or patent itself, a granted petition for
access (see paragraph (h)), or a power to inspect (see paragraph (c))
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)(vi) 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 another 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 may be made available
pursuant to paragraphs (a)(1)(i) through (a)(1)(vi) of this section,
the Office may at its discretion provide access to only 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 may 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 Sec. 3.71 of this chapter); or
(4) A registered attorney or agent named in the papers accompanying
the application papers filed under Sec. 1.53 or the national stage
documents filed under Sec. 1.495, if an executed oath or
declaration pursuant to Sec. 1.63 or Sec. 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) Decisions by the Director or the Board of Patent Appeals and
Interferences. Any decision by the Director or the Board of Patent
Appeals and Interferences which would not otherwise be open to public
inspection may be published or made available for public inspection if:
(1) The Director believes the decision involves an interpretation
of patent laws or regulations that would be of precedential value; and
(2) The applicant, or a party involved in an interference for which
a decision was rendered, is given notice and an opportunity to object
in writing within two months on the ground that the decision discloses
a trade secret or other confidential information. Any objection must
identify the deletions in the text of the decision considered necessary
to protect the information, or explain why the entire decision must be
withheld from the public to protect such information. An applicant or
party will be given time, not less than twenty days, to request
reconsideration and seek court review before any portions of a decision
are made public under this paragraph over his or her objection.
(f) Publication pursuant to Sec. 1.47. Information as to the
filing of an application will be published in the Official Gazette in
accordance with Sec. 1.47(c).
(g) 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 Sec. 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
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 (Sec. 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 permitted 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) through (a)(1)(vi) and (h)(3) of this section will not be
permitted with respect to the Examination Copy in accordance with PCT
Article 38.
(h) Access or copies in other circumstances. The Office, either sua
sponte or on petition, may also provide access or copies of all or part
of an application if necessary to carry out an Act of Congress or if
warranted by other special circumstances. Any petition by a member of
the public seeking access to, or copies of, all or part of any pending
or abandoned application preserved in confidence pursuant to paragraph
(a) of this section, or any related papers, must include:
(1) The fee set forth in Sec. 1.17(h); and
(2) A showing that access to the application is necessary to carry
out an Act of Congress or that special circumstances exist which
warrant petitioner being granted access to all or part of the
application.
5. Section 1.17 is amended by revising paragraph (h) to read as
follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(h) For filing a petition under one of the following sections which
refers to this paragraph: $130.00.
Sec. 1.12--for access to an assignment record.
Sec. 1.14--for access to an application.
Sec. 1.47--for filing by other than all the inventors or a person not
the inventor.
Sec. 1.53(e)--to accord a filing date.
Sec. 1.59--for expungement of information.
Sec. 1.84--for accepting color drawings or photographs.
Sec. 1.91--for entry of a model or exhibit.
Sec. 1.102--to make an application special.
Sec. 1.103(a)--to suspend action in an application.
Sec. 1.138(c)--to expressly abandon an application to avoid
publication.
Sec. 1.182--for decision on a question not specifically provided for.
Sec. 1.183--to suspend the rules.
Sec. 1.295--for review of refusal to publish a statutory invention
registration.
Sec. 1.313--to withdraw an application from issue.
Sec. 1.314--to defer issuance of a patent.
Sec. 1.377--for review of decision refusing to accept and record
payment of a maintenance fee filed prior to expiration of a patent.
Sec. 1.378(e)--for reconsideration of decision on petition refusing to
accept delayed payment of maintenance fee in an expired patent.
Sec. 1.644(e)--for petition in an interference.
Sec. 1.644(f)--for request for reconsideration of a decision on
petition in an interference.
Sec. 1.666(b)--for access to an interference settlement agreement.
Sec. 1.666(c)--for late filing of interference settlement agreement.
Sec. 1.741(b)--to accord a filing date to an application under Sec.
1.740 for extension of a patent term.
Sec. 5.12--for expedited handling of a foreign filing license.
Sec. 5.15--for changing the scope of a license.
Sec. 5.25--for retroactive license.
Sec. 104.3--for waiver of a rule in Part 104 of this title.
* * * * *
6. Section 1.52 is amended by revising paragraphs (a) and (b) to read
as follows:
Sec. 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 Sec. 1.58 for chemical and mathematical formulae and
tables, and Sec. 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 Sec.
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 Secs. 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 (Sec. 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 (Sec. 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,
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.
* * * * *
7. Section 1.59 is revised to read as follows:
Sec. 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 Secs. 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 Sec.
1.17(h) and establish to the satisfaction of the Director that the
expungement of the information is appropriate in which case a notice
granting the petition for expungement will be provided.
(c) Upon request by an applicant and payment of the fee specified
in Sec. 1.19(b), the Office will furnish copies of an application,
unless the application has been disposed of (see Secs. 1.53(e),
(f) and (g)). The Office cannot provide or certify copies of an
application that has been disposed of.
8. Section 1.71 is amended by adding paragraph (f) to read as follows:
Sec. 1.71 Detailed description and specification of the invention.
* * * * *
(f) The specification must commence on a separate sheet. Each sheet
including part of the specification may not include other parts of the
application or other information. The claim(s), abstract and sequence
listing (if any) should not be included on a sheet including any other
part of the application.
9. Section 1.72 is amended by revising paragraph (b) to read as
follows:
Sec. 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 or other material. 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.
10. Section 1.75 is amended by revising paragraph (h) to read as
follows:
Sec. 1.75 Claim(s).
* * * * *
(h) The claim or claims must commence on a separate physical sheet
or electronic page. Any sheet including a claim or portion of a claim
may not contain any other parts of the application or other material.
* * * * *
11. Section 1.98 is amended by adding paragraph (e) to read as follows:
Sec. 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.
12. Section 1.99 is amended by revising paragraphs (d) and (e) to read
as follows:
Sec. 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 (Sec. 1.215(a)) or
prior to the mailing of a notice of allowance (Sec. 1.311), whichever
is earlier. Any submission under this section not filed within this
period is permitted only when the patents or publications could not
have been submitted to the Office earlier, and must also be accompanied
by the processing fee set forth in Sec. 1.17(i). A submission by a
member of the public to a pending published application that does not
comply with the requirements of this section will not be entered.
* * * * *
13. Section 1.121 is revised to read as follows:
Sec. 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 Sec. 1.52, directing that
specified amendments be made.
(b) Specification. Amendments to the specification, other than the
claims, computer listings (Sec. 1.96) and sequence listings (Sec.
1.825), must be made by adding, deleting or replacing a paragraph, by
replacing a section, or by a substitute specification, in the manner
specified in this section.
(1) Amendment to delete, replace, or add a paragraph. Amendments to
the specification, including amendment to a section heading or the
title of the invention which are considered for amendment purposes to
be an amendment of a paragraph, must be made by submitting:
(i) An instruction, which unambiguously identifies the location, to
delete one or more paragraphs of the specification, replace a paragraph
with one or more replacement paragraphs, or add one or more paragraphs;
(ii) The full text of any replacement paragraph with markings to
show all the changes relative to the previous version of the paragraph.
The text of any added subject matter must be shown by underlining the
added text. The text of any deleted matter must be shown by strike-
through except that double brackets placed before and after the deleted
characters may be used to show deletion of five or fewer consecutive
characters. The text of any deleted subject matter must be shown by
being placed within double brackets if strike-through cannot be easily
perceived;
(iii) The full text of any added paragraphs without any
underlining; and
(iv) The text of a paragraph to be deleted must not be presented
with strike-through or placed within double brackets. The instruction
to delete may identify a paragraph by its paragraph number or include a
few words from the beginning, and end, of the paragraph, if needed for
paragraph identification purposes.
(2) Amendment by replacement section. If the sections of the
specification contain section headings
as provided in Sec. 1.77(b), Sec. 1.154(b), or Sec. 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,
which unambiguously identifies the location, to delete that section of
the specification and to replace such deleted section with a
replacement section; and
(ii) A replacement section with markings to show all changes
relative to the previous version of the section. The text of any added
subject matter must be shown by underlining the added text. The text of
any deleted matter must be shown by strike-through except that double
brackets placed before and after the deleted characters may be used to
show deletion of five or fewer consecutive characters. The text of any
deleted subject matter must be shown by being placed within double
brackets if strike-through cannot be easily perceived.
(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 Secs.
1.125(b) and (c).
(4) Reinstatement of previously deleted paragraph or section. A
previously deleted paragraph or section may be reinstated only by a
subsequent amendment adding the previously deleted paragraph or
section.
(5) Presentation in subsequent amendment document. Once a paragraph
or section is amended in a first amendment document, the paragraph or
section shall not be re-presented in a subsequent amendment document
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 and deletions) as
indicated in this subsection, except when the claim is being canceled.
Each amendment document that includes a change to an existing claim,
cancellation of an existing claim or addition of a new claim, must
include a complete listing of all claims ever presented, including the
text of all pending and withdrawn claims, in the application. The claim
listing, including the text of the claims, in the amendment document
will serve to replace all prior versions of the claims, in the
application. In the claim listing, the status of every claim must be
indicated after its claim number by using one of the following
identifiers in a parenthetical expression: (Original), (Currently
amended), (Canceled), (Withdrawn), (Previously presented), (New), and
(Not entered).
(1) Claim listing. All of the claims presented in a claim listing
shall be presented in ascending numerical order. Consecutive claims
having the same status of "canceled" or "not entered" may be
aggregated into one statement (e.g., Claims 1-5 (canceled)). The claim
listing 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.
(2) When claim text with markings is required. All claims being
currently amended in an amendment paper shall be presented in the claim
listing, indicate a status of "currently amended," and be submitted
with markings to indicate the changes that have been made relative to
the immediate prior version of the claims. The text of any added
subject matter must be shown by underlining the added text. The text of
any deleted matter must be shown by strike-through except that double
brackets placed before and after the deleted characters may be used to
show deletion of five or fewer consecutive characters. The text of any
deleted subject matter must be shown by being placed within double
brackets if strike-through cannot be easily perceived. Only claims
having the status of "currently amended," or "withdrawn" if also
being amended, shall include markings. If a withdrawn claim is
currently amended, its status in the claim listing may be identified as
"withdrawn--currently amended."
(3) When claim text in clean version is required. The text of all
pending claims not being currently amended shall be presented in the
claim listing in clean version, i.e., without any markings in the
presentation of text. The presentation of a clean version of any claim
having the status of "original," "withdrawn" or "previously
presented" will constitute an assertion that it has not been changed
relative to the immediate prior version, except to omit markings that
may have been present in the immediate prior version of the claims of
the status of "withdrawn" or "previously presented." Any claim
added by amendment must be indicated with the status of "new" and
presented in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim.
(i) No claim text shall be presented for any claim in the claim
listing with the status of "canceled" or "not entered."
(ii) Cancellation of a claim shall be effected by an instruction to
cancel a particular claim number. Identifying the status of a claim in
the claim listing as "canceled" will constitute an instruction to
cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was
previously canceled may be reinstated only by adding the claim as a
"new" claim with a new claim number.
(d) Drawings. One or more application drawings shall be amended in
the following manner: Any changes to an application drawing must be in
compliance with Sec. 1.84 and must be submitted on a replacement sheet
of drawings which shall be an attachment to the amendment document and,
in the header, labeled "Replacement Sheet." Any replacement sheet of
drawings shall include all of the figures appearing on the immediate
prior version of the sheet, even if only one figure is amended. All
changes to the drawing(s) shall be explained, in detail, in either the
drawing amendment or remarks section of the amendment paper.
(1) A marked-up copy of any amended drawing figure, including
annotations indicating the changes made, may be included. The marked-up
copy must be clearly labeled as "Annotated Marked-up Drawings" and
must be presented in the amendment or remarks section that explains the
change to the drawings.
(2) A marked-up copy of any amended drawing figure, including
annotations indicating the changes made, must be provided 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), or (c) of this section is not required.
(h) Amendment sections. Each section of an amendment document
(e.g., amendment to the claims, amendment to the specification,
replacement drawings, and remarks) 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 Sec. 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 Sec. 1.530.
(k) Amendments in provisional applications. Amendments in
provisional applications are not usually 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.
14. Section 1.125 is amended by revising paragraphs (b) and (c) to read
as follows:
Sec. 1.125 Substitute specification.
* * * * *
(b) Subject to Sec. 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 relative to the
immediate prior version of the specification of record. The text of any
added subject matter must be shown by underlining the added text. The
text of any deleted matter must be shown by strike-through except that
double brackets placed before and after the deleted characters may be
used to show deletion of five or fewer consecutive characters. The text
of any deleted subject matter must be shown by being placed within
double brackets if strike-through cannot be easily perceived. 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.
* * * * *
15. Section 1.173 is amended by revising paragraph (b)(3) to read as
follows:
Sec. 1.173 Reissue specification, drawings and amendments.
* * * * *
(b) * * *
(3) Drawings. One or more patent drawings shall be amended in the
following manner: Any changes to a patent drawing must be submitted as
a replacement sheet of drawings which shall be an attachment to the
amendment document. Any replacement sheet of drawings must be in
compliance with Sec. 1.84 and shall include all of the figures
appearing on the original version of the sheet, even if only one figure
is amended. Amended figures must be identified as "Amended," and any
added figure must be identified as "New." In the event that a figure
is canceled, the figure must be surrounded by brackets and identified
as "Canceled." All changes to the drawing(s) shall be explained, in
detail, beginning on a separate sheet accompanying the papers including
the amendment to the drawings.
(i) A marked-up copy of any amended drawing figure, including
annotations indicating the changes made, may be included. The marked-up
copy must be clearly labeled as "Annotated Marked-up Drawings" and
must be presented in the amendment or remarks section that explains the
change to the drawings.
(ii) A marked-up copy of any amended drawing figure, including
annotations indicating the changes made, must be provided when required
by the examiner.
* * * * *
16. Section 1.823 is amended by revising paragraph (a)(1) to read as
follows:
Sec. 1.823 Requirements for nucleotide and/or amino acid sequences as
part of the application.
(a)(1) If the "Sequence Listing" required by Sec. 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 material other than part of the
sequence listing. A fixed-width font should be used exclusively
throughout the "Sequence Listing."
* * * * *
June 24, 2003 JAMES E. ROGAN
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office