United States Patent and Trademark Office OG Notices: 07 October 2003
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 5
[Docket No.: 2003-P-020]
RIN 0651-AB64
Changes To Support Implementation of the
United States Patent and Trademark Office
21st Century Strategic Plan
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office) has
established a 21st Century Strategic Plan to transform the Office into
a quality-focused, highly productive, responsive organization
supporting a market-driven intellectual property system. The Office is
proposing to revise the rules of practice to support the implementation
of the 21st Century Strategic Plan, which involves improving the patent
application and examination process by promoting quality enhancement,
reducing patent pendency, and using information technology to simplify
the patent application process. The more notable changes being proposed
in this document involve permitting electronic signatures on a number
of submissions, streamlining the requirements for incorporation by
reference of prior-filed applications, and clarifying the
qualifications for claiming small entity status for purposes of paying
reduced patent fees. These changes to the patent application and
examination process are necessary for the Office to be able to process
the long-term trend of increasing numbers of applications within a
reasonable time frame.
COMMENT DEADLINE DATE: To be ensured of consideration, written comments
must be received on or before November 12, 2003. No public hearing will
be held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to ab64.comments@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Comments - Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-
1450 or by facsimile to (703) 305-1013, marked to the attention of
Hiram Bernstein. Although comments may be submitted by mail or
facsimile, the Office prefers to receive comments via the Internet.
The comments will be available for public inspection at the Office
of Patent Legal Administration, located at Room 3-C23 of Crystal Plaza
4, 2201 South Clark Place, Arlington, Virginia, and will be available
through anonymous file transfer protocol (ftp) via the Internet
(address: http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leaving
FR.html&log=linklog&to=http://www.uspto.gov). Since comments will be
for public inspection, information that is not desired to be made
public, such as an address or phone number, should not be included in
the comments.
FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein, Senior Legal
Advisor, by telephone at (703) 305-8713 or Robert J. Spar, Director,
Office of Patent Legal Administration (OPLA), at (703) 308-5107, or by
facsimile to (703) 305-1013, marked to the attention of Mr. Bernstein,
or by mail addressed to: Mail Stop Comments - Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: The Office has conducted a "top to bottom"
review of the patent application and examination process (among other
processes) as part of the 21st Century Strategic Plan. The 21st Century
Strategic Plan is available on the Office's Internet Web site
(http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&
log=linklog&to=www.uspto.gov). While many of the changes to the patent
and examination process necessary to support the 21st Century Strategic
Plan require enabling legislation (and implementing rule changes), the
Office has determined that a number of initiatives can be implemented
under the Office's current rule making and patent examination authority
set forth in 35 U.S.C. 2(b)(2), 131, and 132. This document proposes
changes to the rules of practice in title 37 of the Code of Federal
Regulations (CFR) to improve the patent application and examination
process by promoting quality enhancement, reducing patent pendency, and
using information technology to simplify the patent application
process.
This document specifically proposes changes to the following
sections of title 37 CFR: 1.4, 1.6, 1.8, 1.10, 1.14, 1.17, 1.19, 1.27,
1.47, 1.52, 1.53, 1.55, 1.58, 1.59, 1.69, 1.76, 1.78, 1.83, 1.84, 1.91,
1.94, 1.98, 1.102, 1.103, 1.105, 1.111, 1.115, 1.116, 1.131, 1.136,
1.137, 1.165, 1.173, 1.175, 1.178, 1.182, 1.183, 1.213, 1.215, 1.291,
1.295, 1.296, 1.311, 1.324, 1.377, 1.378, 1.502, 1.530, 1.550, 1.570,
1.644, 1.666, 1.704, 1.705, 1.741, 1.902, 1.953, 1.956, 1.957, 1.958,
1.979, 1.997, 5.12, 5.15, and 5.25. Additionally, this document
proposes to amend title 37 CFR by adding new Sec. 1.57 and removing
Sec. 1.179.
The following members of the Office of Patent Legal Administration
may be contacted directly for the matters indicated:
Joni Chang ((703) 308-3858): Secs. 1.8, 1.10, 1.98, 1.111, and
1.311
Jeanne Clark ((703) 306-5603): Sec. 1.98
James Engel ((703) 308-5106): Secs. 1.14, 1.17, 1.53, 1.59, 1.103,
1.131, 1.182, 1.183, 1.295, 1.296, 1.377, 1.378, 1.644, 1.666, 1.741,
5.12, 5.15, and 5.25
Karin Ferriter ((703) 306-3159): Secs. 1.6, 1.47, 1.52 (other than
(e)(1)(iii) and (e)(3)), 1.58, 1.83, 1.84, and 1.165
Anton Fetting ((703) 305-8449): Secs. 1.17, 1.53, 1.59, 1.103,
1.105, 1.182, 1.183, 1.295, 1.296, 1.377, 1.378, 1.644, 1.666, 1.741,
5.12, 5.15, and 5.25
Kery Fries ((703) 308-0687): Secs. 1.76, 1.704, and 1.705
Hiram Bernstein ((703) 305-8713): Secs. 1.91 and 1.94
Eugenia Jones ((703) 306-5586): Secs. 1.8, 1.10, 1.27, 1.55,
1.57(a), and 1.78
Michael Lewis ((703)306-5585): Secs. 1.4, 1.19, 1.52(e)(1)(iii)
and (e)(3), 1.57, and 1.58(b)
Joe Narcavage ((703) 305-1795): Secs. 1.173, 1.175, 1.178, 1.179,
1.291, and 1.324
Mark Polutta ((703) 308-8122): Secs. 1.213, and 1.215
Kenneth Schor ((703) 308-6710): Secs. 1.98, 1.116, 1.136, 1.137,
1.291, 1.502, 1.550, 1.570, 1.902, 1.953, 1.956, 1.957, 1.958, 1.979,
and 1.997
Fred Silverberg ((703) 305-8986): Sec. 1.115
The Office will post a copy of this notice on its Internet Web site
(http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.
html&log=linklog&to=www.uspto.gov). Additionally, individuals or
organizations that need a copy for the purpose of providing comments,
may send a request by phone or e-mail to Elizabeth Polley at
((703) 308-6202, or elizabeth.polley@uspto.gov) or Terry Dey at
((703) 308-1201 or terry.dey@uspto.gov) to receive an e-mail copy of
the notice. When making a request for an e-mail copy, it is requested
that persons please specify whether they wish to receive the document
in MS-Word, WordPerfect, or HTML format.
Discussion of Specific Rules
Section 1.4: Section 1.4(d) is proposed to be amended to provide
for filing correspondence with electronic signatures on electronically
created correspondence documents that are filed by facsimile
transmission, or hand-carried or mailed to the Office, for entry in a
patent application, patent file, or
reexamination proceeding. The electronic signature must be the signer's
actual name or have the actual name additionally presented in printed
or typed form. The electronic signature may be any combination of
numbers and/or letters and may include a title. Appropriate punctuation
and spaces may be used with the letters and numbers. The signer must
present his or her family name entirely in capital letters in the
signature if the actual name is used. Where the actual name is not used
in the signature, the family name must be presented entirely in capital
letters in the printed or typed form of the name. When the actual name
of the signer is being provided as a printed or typed name, it must be
clearly identified as the actual name of the signer. A practitioner
signing pursuant to Secs. 1.33(b)(1) or 1.33(b)(2) must place the
signer's registration number, either within or after the electronic
signature. A number character () may only be used in a
signature if it is prior to a practitioner's registration number that
is part of the electronic signature. New paragraph (h) sets forth the
procedure for resolving questions as to the veracity of the
(electronic) signature, such as when there are variations in
signatures, or where the signature and the printed or typed name does
not clearly identify the person signing the document, or where more
than one person has used the same signature.
The Office considered proposing a requirement that the order of the
name in a signature be identified with the language such as follows:
given name, middle name or initial, family name if the name is supplied
in that order. Capitalizing only the family name without identifying
the order is considered a simpler and less burdensome procedure for
signing a document. Comments in favor of or opposed to this alternative
are invited.
Section 1.4(d)(1)(iv)(A) sets forth the specific requirements of an
electronic signature (e-signature), and when the Office will accept an
electronic signature in patent-related documents. The phrase
"electronically signed" documents includes documents that are created
and signed in a word processor program and electronically fillable
forms, such as declarations generated using the program Adobe Acrobat
that have pre-printed standard language with an ability to add specific
information such as a signature (e.g., similar to those provided on the
Office's Internet Web site that can be completed and signed
electronically). The proposed rule change is intended to facilitate
movement of documents between practitioners, applicants, and the
Office. The proposed rule change does not permit the filing of Official
correspondence by electronic mail (e.g., e-mail) messages over the
Internet to the Office, but does permit submissions transmitted by
facsimile. Pilot programs, such as the program at the Board of Patent
Appeals and Interferences (BPAI) are not affected by this rule change
(see standing orders at the URL: http://frwebgate.access.gpo.gov/cgi-
bin/leaving.cgi?from=leavingFR.html&log=linklog&to=http://www.uspto.
gov/web/offices/dcom/bpai/standing2003May.pdf). Electronically created
documents that contain an electronic signature e-mailed from applicants
to a practitioner, however, may be transmitted to the Office from a
practitioner by facsimile transfer, or as a paper document. While it is
not now permitted, the Office is considering expanding the means by
which electronically created documents can be transmitted to the
Office, such as by an e-mail attachment using the proposed signature
requirements.
Paragraph 1.4(d)(1)(iv)(A) recites that electronic signatures may
be utilized when the electronically signed document is: (1) Facsimile
transmitted from a computer in its electronic form; (2) printed and
then facsimile transmitted; or (3) printed on paper and hand or mail
delivered to the Office. This paragraph also permits electronic
signatures for documents submitted via the Office's Electronic Filing
System (EFS). The EFS is not an e-mail system. This paragraph does not
authorize delivery of documents to the Office by e-mail over the
Internet.
Practitioners must take care when submitting a document intended to
be unsigned by ensuring that there are no markings in a signature space
or this could be determined to be indicia of a signature (either as a
permanent ink signature or electronic signature).
The documents submitted under this provision may become records
submitted in interference and other legal proceedings where
authentication is required. Applicants and practitioners must recognize
the differences in electronically created documents and paper documents
for authentication purposes and take appropriate steps to be able to
authenticate documents, if required. An issue with electronically
created documents is that they may have embedded comments and track
changes in the electronic document that are not always visible when a
document is rendered using a different computer system or a different
software version, or when printed to paper. Variations in how much of
the embedded comments and track changes are rendered on a given
computer may cause the document signer to see different document
content than the contents of the document that is submitted to the
Office. Additionally, establishing a chain of custody may involve
proving that a document viewed by the Office is, in fact, the same
document executed by the signer.
The Office can only authenticate a document to the extent of what
is contained in Office records. Office records will not contain any of
the electronic communications between the applicant or practitioner
filing a document and a third party. For example, the Office cannot
authenticate from its records a document (e.g., a Sec. 1.132
affidavit) prepared by a third party and including a third party
signature that was submitted to an applicant or practitioner
electronically for resubmission to the Office. Under these
circumstances, the applicant or practitioner would need to be concerned
about both establishing a chain of custody to address alteration and
any attempted repudiation by a third party of his or her electronic
signature. In establishing the authenticity of a document, the
applicant or practitioner would be attempting to show that the date of
execution of the document is earlier than the date of submission to the
Office, and the document was unaltered from that earlier date until its
submission to the Office. A chain of custody would need to be shown and
proven. Therefore, electronically created documents may require
additional procedures over what may be required for a document signed
with an ink signature to address chain of custody and alteration
issues. In addition, there must be procedures in place to address the
issue that the particular document preparation software may have
undergone frequent changes. Different versions of the same software
program may store and display the document, as well as comments and
changes to the document, differently, which gives rise to issues
concerning alteration of the document. Accordingly, applicants and
practitioners must be cognizant of these issues of changed document
appearance and content and take appropriate steps to ensure that their
records, if in electronic form, can be rendered and authenticated at
some later time as being the unaltered electronically signed original
document.
Paragraph 1.4(d)(1)(iv)(A) defines who can insert an electronic
signature into an electronically created document. The proposed rule
change requires that the signer "personally insert" his or her
electronic signature by use of numbers and/or letters, with punctuation
and spaces. To make the identity of the signer self-evident, the same
electronic signature should be utilized each time, with variations of the
signature being avoided. The signer should review any indicia of
identity of the signer in the body of the document including any
printed or typed name and registration number, to ensure that the
indicia of identity is consistent with how the document is signed.
Knowingly adopting an electronic signature of another is not permitted.
The "personally insert" requirement is met by the signer directly
typing his or her electronic signature on a keyboard. This requirement
is not met when a first person types the electronic signature of a
second person, upon receiving only a general instruction from the
second person to insert the second person's signature. A person
physically unable to use a keyboard, however, may, while simultaneously
reviewing the document for signature, direct another person to press
the appropriate keys to form the signature.
Paragraph 1.4(d)(1)(iv)(A) defines the content of an electronic
signature. The Office proposes to adopt a standard of numbers and/or
letters, with punctuation and spaces as the electronic signature, which
must be placed between two forward slashes to be consistent with the
international standard and to build upon the experience gained with
this standard in the Trademarks section of the office. See PCT Annex F,
section 3.3.2. The electronic signature between two forward slashes
cannot contain any additional forward slashes. This standard can be met
with any standard personal computer (PC) and keyboard. The Office also
recognizes that many practitioners sign their name with the number
character ( ) as part of his or her registration number. The
use of the number character ( ) as part of the registration
number would be permitted but not otherwise, such as utilization of a
customer number as the signature. Other non-text characters would not
be permitted, as a typed symbol in one font may vary when viewed in a
different font (e.g., the code for the euro currency symbol in one font
produces a different currency symbol when viewed in another font).
The Office recognizes that periods, commas, and hyphens are often
found in names and will therefore be found in many signatures.
Appropriate punctuation and spaces may be used with numbers and
letters, not in place of numbers and letters in a signature. Hence, the
use of appropriate punctuation and spaces with letters and numbers
would be permitted (e.g., periods, commas and hyphens). A signature of
only punctuation marks ordinarily does not identify any person, and
would be improper. Also, punctuation marks, such as question marks
(e.g., /???/), are often utilized to represent the intent not to sign a
document and would be improper.
To avoid processing delays, the Office needs to readily determine
whether a document has been signed. The filing of a document does not
imply that the document has been signed. The Office does not want to
investigate as to whether a mark (e.g., extraneous marks or a non-
permanent ink presentation of a name) comprises a signature. Therefore,
the Office will only interpret the data presented between forward
slashes as an electronic signature. Hence, documents intended to be
unsigned should be very clear that any data presented between forward
slashes is not intended to be a signature.
Similarly, presentation of just numbers and letters in an
electronically produced document without forward slashes will be
treated under this part as an unsigned document. Script fonts are not
permitted for any portion of a document, which would include a name
typed in a signature area. See Sec. 1.52(b)(2)(ii). Accordingly,
presentation of a typed name without the required slashes even in a
script font does not present the proper indicia manifesting an intent
to sign and will not be accepted as an electronic signature.
Paragraph (d)(1)(iv)(A) requires the signer's actual name be used
except as provided in paragraph (d)(1)(iv)(B), where an electronic
signature is used that differs from the actual name of the signer.
Where an electronic signature is not the signer's actual name, the
actual name must be printed or typed and clearly indicated as the
signer's actual name. The use of lower case and capital letters is
permitted except that the family name must be entirely capitalized with
no other names entirely capitalized. A middle initial if capitalized
and presented with a period to identify it as an abbreviation is
permitted. A person with an electronic signature that includes both a
single character family name and at least one other single character
name must provide an electronic signature with all single character
names other than the family name in non-capital letters. Titles may be
used with the signer's name and can be placed within or after the slash
marks. When the last name is given first it will be presumed to be
followed by a first name before any middle name. Similarly, when a last
name is given last it will be presumed that the first name will precede
a middle name. Where two or more multiple character names are
capitalized, the Office will need to inquire as to which is the last
name.
To accommodate as many varieties of names as possible a signer may
select any combination of letters and/or numbers for his or her
signature under Sec. 1.4(d)(1)(iv)(A). A signature that is the actual
name of the signer need not be accompanied by a typed or printed name.
Accordingly, the absence of a printed or typed name clearly identified
as the actual name of the signer is a representation that the signature
is the signer's actual name.
The Office considered accepting an actual name as a signature
without requiring that the order of names be identified. A signature of
an actual name has been found by the Office insufficient to identify
the signer. For example, some people routinely sign with his or her
last (or family) name first. Similarly, for people with first and last
names that are commonly interchanged as first and last names, it may
not be self-evident which is the given name and which is the family
name. A printed or typed copy of the signer's name immediately below
the signature often will have the same problem of which is the family
name and which is the given name.
The Office considered proposing a standard signature format such as
family name first, followed by given name. A standard signature format
was rejected because it would not aid the Office in identifying the
signer of a document, particularly where the format is not adhered to
by the signer. The Office is receiving applications and correspondence
for other patent-related matters in which it cannot be determined who
signed the document and/or what the actual name of the signer is
because either the order of the family name and given name are unclear,
or more than one signer has the same name. Adopting a standard
signature format would not make it any easier for the Office to detect
in many cases when the order of family name, given name, and middle
name are in a non-standard order.
In the following discussion, family name is intended to be
synonymous with the terms "surname" or "last name" in the customary
format for European-American names. Similarly, given name is intended
to be synonymous with the term "first name" in the customary format
for European-American names. Format and content of a signature are both
critical because people from different countries throughout the world
have different customs for signing a name, e.g., reversing the order of
family (i.e., last) name and given (i.e., first) name. Current rules and
procedures for most communications do not require applicants and
practitioners to utilize any format for the signature. A person may
currently use a signature with his or her family name as the first name
or the last name of the signature. Further, it is common for a person to
abbreviate his or her given name (e.g., William Jefferson Louis, as
W. Jefferson Louis), which, if signed with the last name first, would
appear as a middle initial (i.e., Louis W. Jefferson). The Office is
receiving communications from people all over the world with different
signature formats and the Office cannot readily identify the family name
and given name of the signer.
This lack of consistency in signing order is exacerbated in many
patent applications because a person's name may appear in several
places in the record of an application in a different format (e.g.,
first name and last name reversed) in each occurrence. In addition, the
Office has found at least two applicants and/or practitioners in the
same firm with the given and family names in reverse order (e.g., first
practitioner is Mitchell Louis, and the second practitioner is Louis
Mitchell). Signatures have been found with the printed or typed name
under the signature appearing as the reverse of the signature (e.g.,
/Louis Mitchell/ with Mitchell Louis typed immediately underneath). In
view of the differing customs for the order of signing names, the
Office is frequently unable to ascertain the identity of the signer
(e.g., in the example given, is Louis Mitchell or Mitchell Louis the
signer). The identity of the signer is not self-evident in applications
with applicants and/or practitioners that have reversed versions of the
same names, and when the order of names in a signature is the reverse
order in the adjacent printed/typed version of the signer's name. This
often results in confusion in the Office, and later in the public when
reviewing Office records, as to the actual name and identity of the
signer of a document or a patentee when an application is issued.
To avoid confusion as to whether a registered practitioner is
relying on his or her registration for signing a document, Sec.
1.4(d)(1)(iv)(A) recites that a practitioner signing pursuant to
Secs. 1.33(b)(1) or 1.33(b)(2) of this part must place his or her
complete name, as registered, and his or her registration number, with
or immediately adjacent his or her electronic signature. A number
character () may only be used in a signature if it is prior to
a practitioner's registration number that is part of the electronic
signature. When a practitioner is signing as an assignee, or as an
applicant (inventor) pursuant to Secs. 1.33(b)(3) or 1.33(b)(4), a
registration number is not required but may be supplied.
The requirement that an electronic signature for practitioners be
accompanied by an identification of the family name, and registration
number, is consistent with Article 9(1) of the Patent Law Treaty (June
1, 2000) (PLT).
Paragraph 1.4(d)(1)(iv)(B) recites the requirements for when a
signer uses an electronic signature that is not the person's actual
name. The Office expects that where persons do not sign with their
actual name it is because they are using an e-signature that is the
normal e-signature for that person and not something that is employed
to obfuscate or misidentify the signer. Where the e-signature is not
the actual name because the signer is using the signer's normal
e-signature, the actual name must be presented in printed or typed form
with the last name in capitals. The printed or typed name must be
clearly identified as the actual name. To accommodate as many
signatures as possible, a signer may select any combination of letters
and/or numbers for his or her signature. The flexibility in selecting
combinations of letters and/or numbers for signatures means that the
identity of the signer may not be clear from the signature if it is not
an actual name. For example, a collection of letters/numbers when
presented for the first time without a full printed or typed name that
does not appear to be a person's name (e.g., /123456XYZ/) does not
identify any person as the signer. This is so even where the signer has
submitted a previous document with such signature and an additional
identification of the actual name of the signer. Similarly, where the
signature, because it is not the signer's actual name, appears to
represent an identifiable person with a name different in some respects
from those persons authorized to sign and who are of record in an
application, the name of the signer in the signature alone would not be
sufficient to identify the signer.
Paragraph 1.4(d)(1)(iv)(B) requires that where the signer's usual
electronic signature is not the signer's actual name, the signer must
provide his or her actual name by printing or typing the actual name
and clearly identifying it as such. The signer must further identify in
the printed or typed actual name the signer's family name by entirely
capitalizing only the family name. These requirements are consistent
with PLT Rule 9. Registered practitioners signing pursuant to
Secs. 1.33(b)(1) or 1.33(b)(2) of this part, or where the signer
otherwise (e.g., to distinguish two practitioners with the same name)
includes a registration number when it is not required by rule, should
provide the registration number after the signature, or the printed or
typed name immediately below the signature.
A typed or printed name in the body of the text is not usually
self-identifying as to whether it is the signer's actual name, or even
the name of some other person. A clear indication that it is the
signer's actual name is necessary to distinguish it from the other
possibilities where the signature is not the actual name and a printed
or typed name has not been supplied with the signature. Similarly, the
order of the names, family name, given name, middle name or initial,
unless supplied is not self-evident from the printed or typed name
alone so the order must be indicated by entirely capitalizing only the
family name.
The Office strongly suggests that each signer use a signature
(electronic or otherwise) that has his or her full name including full
middle name. The Office recommends that registered practitioners use
their full name under which they are registered and always include
their registration number with the signature or with the hand-written
or typed name that accompanies a signature. Examples of proper and
improper signatures will be posted on the Office's Internet Web site.
Paragraph 1.4(h) proposes requiring a ratification or confirmation
of a signature, such as where the Office has reasonable doubt as to the
authenticity (veracity) of the signature. The Office may additionally
inquire in regard to a signature simply to identify the signer and
clarify the record where the identity of the signer is unclear. The
inquiries concerning the authenticity (veracity) of a signature are
consistent with PLT Article 8(4)(c) and Rules 7(4), 15(4), 16(6),
17(6), and 18(4). An example of when ratification or confirmation of a
signature may be required is when there are variations in a signature
or whenever a name in an e-signature is not exactly the same as the
name indicated as an inventor, or a practitioner of record. Hence,
whatever signature is adopted by a signer, that signature should be
consistently used on all documents. Also addressed is the treatment of
variations in a signature when a printed or typed name accompanies the
e-signature but the identity of the signer is unclear. In such cases,
the Office may require ratification or confirmation of a signature.
Ratification or confirmation alone does
not provide a means for changing the name of a signer. For example,
when an inventor changes her/his name and the inventor desires to
change her/his name in the application, such change must be accompanied
by a petition under Sec. 1.182. See Manual of Patent Examining
Procedure Sec. 605.04(c) (8th. ed. 2001) (Rev. 1, Feb. 2003) (MPEP).
The Office is proposing to treat failure to follow the format and
content of a standard signature as an unsigned document. Treating the
documents as being unsigned could have varying results dependent on the
nature of the document. For example, in new applications, treating an
oath or declaration as an unsigned oath or declaration could result in
the imposition of a surcharge. See Sec. 1.53(f)(1). Other
correspondence could be treated under the procedures for unsigned
amendment documents set forth in MPEP Secs. 714.01 and 714.01(a).
As previously indicated, the Office is requesting comments on the
alternative of requiring labeling the order of names in a signature in
place of the proposed rule requiring capitalization of the entire
family name.
Section 1.6: Section 1.6(d)(4) is proposed to be amended to provide
that black and white drawings in patent applications may be transmitted
to the Office by facsimile in order to provide more flexibility to
applicants for filing individual papers in applications that contain
drawings. Drawings are now permitted to be transmitted to the Office by
facsimile when accompanied by payment of the issue fee, and drawings
received by facsimile have been of an acceptable quality. See Payment
of the Issue Fee and Filing Related Correspondence by Facsimile, 1254
Off. Gaz. Pat. Office 91 (Jan. 15, 2002). Although the rules of
practice will now permit the submission of black and white drawings by
facsimile, photographs or drawings with detail should not be
transmitted by facsimile. Furthermore, color drawings must continue to
be hand-carried or mailed to the Office instead of being transmitted by
facsimile. In addition, the Office will publish drawings that are
received as long as they can be scanned, and will not, in general
require replacement drawings to replace drawings transmitted by
facsimile, even if the facsimile transmission process results in the
drawings being less sharp than the original drawings.
Section 1.6(e) is proposed to be removed and reserved because the
provisions of Sec. 1.6(e) are deemed more appropriately placed in
Sec. 1.10. This is because the "Express Mail" provisions of Sec.
1.10 are the only means by which correspondence can be accorded a
filing date other than the actual date of receipt in the Office. Thus,
the provisions of Sec. 1.6(e) are proposed to be transferred to Sec.
1.10 along with some changes. Proposed Sec. 1.10(g) and (h)
specifically address situations in which "Express Mail" is returned
or refused by the United States Postal Service (USPS). Proposed Sec.
1.10(i) is similar to Sec. 1.6(e) and addresses situations where there
is a designated interruption or emergency in "Express Mail" service.
Section 1.8: Section 1.8(a) is proposed to be amended to clarify
that the provisions of this section do not apply to time periods or
situations set forth in sections that have been expressly excluded from
Sec. 1.8 as well as situations enumerated in Sec. 1.8(a)(2).
Section 1.8(b) is also proposed to be amended to permit notifying
the Office of a previous mailing, or transmitting, of correspondence,
when "a reasonable amount of time has elapsed from the time of mailing
or transmitting of the correspondence."
Section 1.8(b) is also proposed to be amended to make it clear that
it is not the reexamination proceeding which is concluded under
Secs. 1.550(d) or 1.957(b), but rather the prosecution of the
reexamination. See the discussion as to the amendment of Sec. 1.550
for the rationale for this change.
It is further proposed that Sec. 1.8(b) be revised to more
appropriately set forth the Sec. 1.957(c) consequences of a failure to
respond in an inter partes reexamination.
The proposed amendment to Sec. 1.8(a) is to clarify that the list
enumerated in Sec. 1.8(a)(2) is not exhaustive. Provisions of Sec.
1.8 also do not apply to the time periods or situations set forth in
sections that have been explicitly excluded from Sec. 1.8. For
example, provisions of Sec. 1.8(a) do not apply to time periods and
situations set forth in Secs. 1.217(e) and 1.703(f) because the
exceptions are provided explicitly in Sec. 1.217(e), "[t]he
provisions of Sec. 1.8 do not apply to the time periods set forth in
this section" and Sec. 1.703(f), "[t]he date indicated on any
certificate of mailing or transmission under Sec. 1.8 shall not be
taken into account in a patent term adjustment] calculation."
Recently, many applicants had experienced substantial delays in
delivery of their correspondence by the USPS to the Office. These
applicants did not wish to wait until the application is held to be
abandoned before notifying the Office of the previous mailing, or
transmitting, of the correspondence and supplying a duplicate copy of
the correspondence and requisite statement in accordance with Sec.
1.8(b)(3).
Under the proposed amendment to Sec. 1.8(b), in the event that
correspondence is considered timely filed by being mailed or
transmitted in accordance with Sec. 1.8(a), but not received in the
Office after a reasonable amount of time has elapsed (e.g., more than
one month from the time the correspondence was mailed), the applicants
would not be required to wait until the end of the maximum extendable
period for reply set in a prior Office action (for the Office to hold
the application to be abandoned) before informing the Office of the
previous submitted correspondence and supplying a duplicate copy and
requisite statement. Thus, filing a petition to withdraw the holding of
abandonment would not be necessary in such circumstance. The proposed
amendment to Sec. 1.8(b) would provide applicants an expedited
procedure in resolving substantial delayed mail problems.
Before notifying the Office of a previously submitted
correspondence that is not received by the Office, applicants are
encouraged to check the Patent Application Information Retrieval (PAIR)
System (which can be accessed over the Office's Internet Web site at
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&
log=linklog&to=http://pair.uspto.gov) to see if the correspondence has
been entered into the application file. The PAIR system is a system which
enables applicants to access the Office's electronic records for a patent
application or patent. Private PAIR is available to applicants who have
a customer number associated with the correspondence address for an
application and who have acquired the access software (Entrust Direct
Software and a PKI certificate). Applicants may contact the Electronic
Business Center (EBC) at (703) 305-3028 for more information on PAIR.
The proposal that Sec. 1.8(b) be revised to more appropriately set
forth the Sec. 1.957(c) consequences of a failure to respond in an
inter partes reexamination is necessary to clarify that the inter
partes reexamination prosecution is neither terminated nor concluded
where the patent owner fails to timely respond to an Office action, and
claims in the proceeding remain patentable. Rather, an Office action is
issued to thereby permit the third party requester to challenge the
claims found patentable. As set forth in Sec. 1.957(c), "[i]f claims
are found patentable and the patent owner fails to file a timely and
appropriate response to any Office action in an inter partes
reexamination proceeding, further prosecution will be limited to the
claims found patentable at the time of the failure to respond, and to any
claims added thereafter which do not expand the scope of the claims which
were found patentable at that time" (emphasis added). The proposed revision
accordingly would apply the Sec. 1.8(b) remedy to an inter partes
reexamination prosecution which has been limited as to further prosecution
under Sec. 1.957(c). In addition, the amendment is intended to apply to the
Sec. 1.957(a) situation where the third party requester files an
untimely comment, notice of appeal or brief in an inter partes
reexamination, and the paper would thus be refused consideration (to
thereby limit the requester's prosecution) if not for the operation of
the Sec. 1.8(b) remedy.
Section 1.10: Section 1.10 is proposed to be amended to add
paragraphs (g), (h), and (i) to address the effects of interruptions or
emergencies in USPS "Express Mail" service. For example, Friday,
November 16, 2001, the USPS issued a memorandum temporarily and
immediately suspending "Express Mail" service to Washington DC zip
codes 202xx through 205xx. The suspension included service to the zip
code for certain correspondence mailed to the Office (20231).
Applicants frequently rely on the benefits under Sec. 1.10 to
obtain a particular filing date for a new application. The filing date
accorded to an application is often critical. For example, applicants
who do not file their applications in the United States within one year
from when their invention was first described in a printed publication
or in public use or on sale in this country are not entitled to a
patent. (See 35 U.S.C. 102(b)). Furthermore, to be able to claim the
benefit of a provisional application or to claim priority to a foreign
application, the nonprovisional application claiming benefit or
priority must be filed within one year from the filing of the
provisional application or foreign application, respectively.
Therefore, the means by which applicants may remedy the effects of an
interruption or emergency in USPS Express Mail service which has been
so designated by the Director should be specifically addressed in the
rules of practice.
The Office published a notice on October 9, 2001, that provides
guidance in the situations in which a post office refuses to accept the
deposit of mail for delivery by "Express Mail" Service and situations
in which "Express Mail" is deposited into an "Express Mail" drop
box and given an incorrect "date-in." See United States Postal
Service Interruption and Emergency, 1251 Off. Gaz. Pat. Office 55 (Oct.
9, 2001). The procedure for where the USPS refuses to accept the
deposit of mail for delivery by "Express Mail" as contained in the
notice, however, has not been incorporated into the rules of practice.
The Offices's existing framework to address postal emergencies is
detailed in Sec. 1.6(e), "Interruptions in U.S. Postal Service."
Section 1.6(e) provides that if interruptions or emergencies in the
USPS which have been so designated by the Director occur, the Office
will consider as filed on a particular date in the Office any
correspondence which is: (1) Promptly filed after the ending of the
interruption or emergency; and (2) accompanied by a statement
indicating that the correspondence would have been filed on that
particular date if it were not for the designated interruption or
emergency in the USPS.
The provisions of Sec. 1.6(e) are more appropriate in Sec. 1.10
since "Express Mail" is the only means by which correspondence can be
accorded a filing date other than the actual date of receipt in the
Office. Thus, the provisions of Sec. 1.6(e) are proposed to be
transferred to Sec. 1.10 along with some changes. Proposed Sec.
1.10(g) and (h) specifically address situations in which "Express
Mail" is returned or refused by the USPS. Proposed Sec. 1.10(i) is
similar to Sec. 1.6(e) and addresses situations where there is a
designated interruption or emergency in "Express Mail" service.
Section Sec. 1.10(g) is proposed to be added to provide that any
person who attempts to file correspondence by "Express Mail" that was
returned by the USPS may petition the Director to consider the
correspondence as filed on a particular date in the Office. The
petition must be filed promptly after the person becomes aware of the
return of the correspondence and the number of the "Express Mail"
mailing label must have been placed on the paper(s) or fee(s) that
constitute the correspondence prior to the original mailing by
"Express Mail." The petition must also include the original
correspondence or a copy of the original correspondence showing the
number of the "Express Mail" mailing label thereon and a copy of the
"Express Mail" mailing label showing the "date-in." Furthermore,
the petition must include a statement, which establishes to the
satisfaction of the Director, the original deposit of the
correspondence and that the correspondence or the copy is the original
correspondence or a true copy of the correspondence originally
deposited with the USPS on the requested filing date.
Section 1.10(h) is proposed to be added to provide that any person
who attempts to file correspondence by "Express Mail" that was not
accepted by the USPS may petition the Director to consider the
correspondence as filed on a particular date in the Office. The
petition must be filed promptly after the person becomes aware of the
refusal of the correspondence and the number of the "Express Mail"
mailing label must have been placed on the paper(s) or fee(s) that
constitute the correspondence prior to the attempted mailing by
"Express Mail." The petition must also include the original
correspondence or a copy of the original correspondence showing the
number of the "Express Mail" mailing label thereon. In addition, the
petition must include a statement by the person who originally
attempted to deposit the correspondence with the USPS which
establishes, to the satisfaction of the Director, the original attempt
to deposit the correspondence and that the correspondence or the copy
is the original correspondence or a true copy of the correspondence
originally attempted to be deposited with the USPS on the requested
filing date.
Section 1.10(i) is proposed to be added to provide that any person
attempting to file correspondence by "Express Mail" who was unable to
deposit the correspondence with the USPS due to an interruption or
emergency in "Express Mail" service which has been so designated by
the Director, may petition the Director to consider such correspondence
as filed on a particular date in the Office. This material is proposed
to be transferred from Sec. 1.6. The petition must be filed in a
manner designated by the Director promptly after the person becomes
aware of the designated interruption or emergency in "Express Mail"
service. The petition must also include the original correspondence or
a copy of the original correspondence, and a statement which
establishes, to the satisfaction of the Director, that the
correspondence would have been deposited with the USPS but for the
designated interruption or emergency in "Express Mail" service, and
that the correspondence or copy of the correspondence is the original
correspondence or a true copy of the correspondence originally
attempted to be deposited with the USPS on the requested filing date.
Proposed Sec. 1.10(i) requires the Director to designate an
interruption or emergency in "Express Mail" service. It is envisioned
that in the notice designating the interruption or emergency the
Director would provide guidance on the manner in which petitions under
proposed Sec. 1.10(i) should be filed. This is similar to what
occurred when "Express Mail" was suspended in November of 2001, when
applicants were advised that if the USPS refused to accept correspondence
for delivery to the Office by "Express Mail" they should mail the
correspondence by registered or first class mail with a statement by the
person who originally attempted to deposit the correspondence with the USPS
by "Express Mail."
Section 1.14: Section 1.14(h)(1) is proposed to be amended to refer
to the petition fee set forth in Sec. 1.17(g) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.17: Section 1.17 is proposed to be amended to adjust
petition fees to more accurately reflect the Office's cost of treating
petitions. The petitions whose fees are currently provided for in Sec.
1.17(h) are outside the scope of the usual processing of patent
applications provided for in 35 U.S.C. 41(a) and (b). The Office is
directed by 35 U.S.C. 41(d) to set fees for services not set under 35
U.S.C. 41(a) or (b) so as to recover the average costs of performing
the processing or service.
The Office has conducted an activity-based-accounting cost (ABC)
analysis of the Office's cost of treating the various petitions
enumerated under Sec. 1.17(h) based on current practices and staffing
costs. The Office has determined that the petition fee set forth in
Sec. 1.17(h) does not recover the Office's costs of treating petitions
for a number of the types of petitions enumerated under Sec. 1.17(h).
The Office has also determined that there is a significant difference
in the Office's costs for treating the various types of petitions
enumerated under Sec. 1.17(h). Therefore, the Office is proposing to
separate the petitions enumerated under Sec. 1.17(h) into three
groups, and to charge separate petition fees for each of these three
groups of petitions, which petition fees will more accurately reflect
the cost of treating petitions in these three groups.
The first group of petitions will be covered by a new Sec.
1.17(f), which will specify a petition fee of $400. The petitions in
this group are: (1) Petitions under Sec. 1.53(e) to accord a filing
date; (2) petitions under Sec. 1.57(a) to accord a filing date; (3)
petitions under Sec. 1.182 for decision on a question not specifically
provided for; (4) petitions under Sec. 1.183 to suspend the rules; (5)
petitions under Sec. 1.378(e) for reconsideration of decision on
petition refusing to accept delayed payment of maintenance fee in an
expired patent; (6) petitions under Sec. 1.644(e) in an interference;
(7) petitions under Sec. 1.644(f) for requesting reconsideration of a
decision on petition in an interference; (8) petitions under Sec.
1.666(b) for access to an interference settlement agreement; (9)
petitions under Sec. 1.666(c) for late filing of an interference
settlement agreement; and (10) petitions under Sec. 1.741(b) to accord
a filing date to an application under Sec. 1.740 for extension of a
patent term. Petitions in this first group require analysis of complex
and unique factual situations and evidentiary showings. Often a
petition in this group will involve an issue of first impression
requiring review and approval of a course of action by senior Office
officials.
The second group of petitions will be covered by a new Sec.
1.17(g), which will specify a petition fee of $200. The petitions in
this group are: (1) Petitions under Sec. 1.12 for access to an
assignment record; (2) petitions under Sec. 1.14 for access to an
application; (3) petitions under Sec. 1.47 for filing by other than
all the inventors or a person not the inventor; (4) petitions under
Sec. 1.59 for expungement of information; (5) petitions under Sec.
1.103(a) to suspend action in an application; (6) petitions under Sec.
1.136(b) to review requests for extension of time when the provisions
of section 1.136(a) are not available; (7) petitions under Sec.
1.138(c) to expressly abandon an application to avoid publication; (8)
petitions under Sec. 1.295 for review of refusal to publish a
statutory invention registration; (9) petitions under Sec. 1.296 to
withdraw a request for publication of a statutory invention
registration filed on or after the date the notice of intent to publish
issued; (10) petitions under Sec. 1.377 for review of decision
refusing to accept and record payment of a maintenance fee filed prior
to expiration of a patent; (11) petitions under Sec. 1.550(c) for
patent owner requests for extension of time in ex parte reexamination
proceedings; (12) petitions under Sec. 1.956 for patent owner requests
for extension of time in inter partes reexamination proceedings; (13)
petitions under Sec. 5.12 for expedited handling of a foreign filing
license; (14) petitions under Sec. 5.15 for changing the scope of a
license; and (15) petitions under Sec. 5.25 for a retroactive license.
Petitions in this second group also require analysis of factual
situations and evidentiary showings; however, the factual situations
and evidentiary showings for this second group of petitions often fall
into recognizable patterns. On occasion, however, a petition in this
second group will involve an issue of first impression requiring review
and approval of a course of action by senior Office officials.
The third group of petitions will be covered by Sec. 1.17(h),
which will continue to specify a petition fee of $130. The petitions in
this group are: (1) Petitions under Sec. 1.19(h) to request documents
in a form other than that provided in this part; (2) petitions under
Sec. 1.84 for accepting color drawings or photographs; (3) petitions
under Sec. 1.91 for entry of a model or exhibit; (4) petitions under
Sec. 1.102(d) to make an application special; (5) Sec. 1.313 to
withdraw an application from issue; and (6) petitions under Sec. 1.314
to defer issuance of a patent. Petitions in this third group require
review for compliance with the applicable procedural requirements, but
do not often require analysis of varied factual situations or
evidentiary showings.
Section 1.17(i) is proposed to be amended to provide a processing
fee so that replacement drawings submitted within the period set forth
in Sec. 1.215(a) can be included in any patent application
publication. This will replace the current requirement for a petition
fee under Sec. 1.17(h) for the petition under Sec. 1.182 which is
required for such replacement drawings to be accepted for inclusion in
any patent application publication. See Drawings in Patent Application
Publications and Patents, 1242 Off. Gaz. Pat. Office 114 (Jan. 16,
2001). See also a conforming amendment to Sec. 1.215(a).
Sections 1.17(l) and (m) are proposed to be revised to make it
clear that the reexamination proceeding is not terminated under
Secs. 1.550(d) or 1.957(b), but rather the prosecution of the
reexamination is concluded under Secs. 1.550(d) or 1.957(b). See
the discussion below as to the amendment of Sec. 1.550 for the
rationale for this change.
Section 1.19: Section 1.19 is proposed to be amended to clarify
that copies of documents may be provided in whole, or in part, in
electronic image form at the Office's option. Additionally, Sec.
1.19(b) is proposed to be amended to provide how copies of Image File
Wrapper (IFW) contents are to be charged. Further, it is proposed to
eliminate the seven-day requirement of Sec. 1.19(b)(1) for processing
copy requests, and to eliminate the phrase "that were submitted in
electronic form on a physical media" from Sec. 1.19(b)(3). Paragraphs
(g) and (h) would be added to provide for supplying copies of unscanned
documents and to provide for a petition to obtain copies of documents
in a form other than provided for in the rules of practice.
In view of the ever-increasing (paper) submissions, many of the
Office official records need to be, and are going to be, stored and
maintained in electronic form. As a result of the Office's
migration to electronic storage of documents, especially for voluminous
documents, the Office proposes amending Sec. 1.19 to reflect that the
Office may, at its option, provide copies of documents where the copy
is in electronic form on compact disc. Requests for voluminous
documents can be economically provided in an expedited time frame
without degrading service to other users if copies are furnished on
compact disc. Requests for documents in other forms that would impair
service to other users would be decided on a case-by-case basis as
provided in new Sec. 1.19(h).
Section 1.19(b) is proposed to be amended in view of the current
migration of Office records from paper file wrappers to their
electronic image equivalent with the image file wrapper (IFW) system as
the repository of official Office records. See USPTO Announces
Prototype of Image Processing, 1265 Off. Gaz. Pat. Office 87 (Dec. 17,
2002), and See Changes To Implement Electronic Maintenance of Official
Patent Application Records, 68 FR 38611 (June 30, 2003). The instant
proposed rule change clarifies how copies of IFW contents are to be
charged, as the current rule would otherwise not provide a way for the
public to obtain copies given the absence of a paper file wrapper for
the Office to copy when IFW replaces the paper file wrapper as the
source of copies.
Sections 1.19(b)(1) and (2) are proposed to be amended to reflect
the change to IFW from paper file wrappers. Currently when documents
are submitted to the Office in paper or on compact disc, copies of a
file wrapper and documents contained therein may be made from the
original paper or compact disc submission. If a scanned image is used
to make copies of an application as originally filed, the scanned image
corresponds to a paper file wrapper. In the future, there will be no
paper file wrapper corresponding to scanned image files in the IFW
System. As the Office uploads its records to the IFW system, the
instant proposed change will permit the Office to supply to the public
copies of Office documents directly from the IFW system regardless of
format and media of the initial submission (e.g., paper, electronic, or
compact disc). After uploading into IFW, the original submission may
not be retained or be in an easily retrievable form for copying.
The existing Secs. 1.19(b)(1) and (2) do not provide for
supplying copies of the non-paper portion of a file wrapper (e.g.,
compact discs). Under the current practice, for example, copies of
compact discs associated with a file wrapper must be ordered under
existing Sec. 1.19(b)(3) and are not provided with an order under
existing Secs. 1.19(b)(1) or 1.19(b)(2). Nothing in these proposed
rule changes will change this practice. Similarly, any materials not in
the IFW portion of a file wrapper (e.g., blueprints, microfiche, and
video cassettes) are not included in these current sections or as
proposed to be amended. To the extent, however, that documents may be
uploaded from compact discs to be part of an IFW, those documents will
be included with the IFW copy. In the event the Office cannot fill an
order solely from the IFW, and must complete an order in part by
copying paper files or compact discs, the fees of Sec. 1.19(b)(2)(i)
for pages over 400 will apply to any copies made from paper files,
except those provided for under Sec. 1.19(g) (e.g., blueprints), in
which case the fee of Sec. 1.19(g) will apply, and the fee for compact
disc copies under Sec. 1.19(b)(3) will apply to the copies of compact
discs.
Patent applications and patents will normally reference any compact
discs that are a part of the application specification. The public
should therefore review the specification to determine if an order for
compact discs should be included with an order to obtain the contents
of an application or file wrapper. Other materials associated with a
file wrapper (e.g., blueprints, video cassettes, compact discs exhibits
not part of the specification) are not referenced in the specification
of an application or patent. The Office does not maintain an index of
other materials associated with any specific file wrapper.
Accordingly, the public should carefully review the contents of a
file wrapper to determine if other materials associated with a file
wrapper need to be separately ordered.
Customers will not be able to select the source for documents under
Secs. 1.19(b)(1) and (2) for filling an order.
The Office's experience with providing copies from an image system
is that it is faster than providing copies from paper and it allows the
Office to provide copies for regular orders with the same speed as
expedited service. The service is also cheaper for the public so that
excess page fees can be eliminated in most cases. The Office is
considering charging a single fee for copies made from the IFW to
recover an average cost and limiting the additional fee of Sec.
1.19(b)(2)(ii) to paper copy non-IFW documents rather than actual cost
depending on size, if public comment is favorable. The Office believes
public comment should be favorable because it will result in lower
overall costs to the public and faster service. Lowered costs to the
public and the Office occur because there will not need to be separate
analysis and billing of the number of pages and excess pages copied.
Faster service will occur because the Office will not have to delay
orders while additional charges for excess pages are processed. Also,
since the Office can provide the copies within a short period of time
which would be faster than a seven-day service, at the same fee, it is
proposed to remove the references to the slower non-expedited service,
i.e., "seven-day."
Section 1.19(b)(3) is proposed to be amended by revising "on
compact disc" to "in electronic form on a physical media" so that
documents submitted on electronic forms other than compact discs may be
made available on compact disc for the same fee as documents submitted
on compact disc.
Section 1.19(g) is proposed to be added to provide for copying
material that is not image scanned. Materials such as large blueprints,
microfiche, and video cassettes cannot be scanned as electronic image
equivalents, and an average cost for pricing cannot be computed in
advance, because the demand for such copies is so infrequent. The
Office proposes to charge the actual cost of copying of these
materials.
Section 1.19(h) is proposed to provide for a mechanism for
requesting copies of documents in a form other than that normally
provided by the Office. The copies would be provided at cost. For
example, a copy of an application so voluminous that it required many
boxes of compact discs might be requested under this part on some other
media such as DVD media instead of compact discs. Petitions would be
decided under this section based upon the ability of the Office to
provide the requested service and the adverse impact to the Office and
the public from diverting resources to fulfilling the order.
Section 1.27: Section 1.27 is proposed to be amended to make
certain clarifying changes. The proposed changes would clarify that:
(1) A security interest held by a large entity would not be a
sufficient interest to bar entitlement to small entity status; (2) the
requirements for small business concerns regarding transfer of rights
and the size standards of the Small Business Administration are
additive; and (3) business concerns are not precluded from claiming
small entity status merely because they are located in or operate
primarily in a foreign country.
Section 1.27 is proposed to be amended to revise paragraphs (a)(1),
(a)(2)(i), and (a)(3)(i) to change "obligation" to "currently enforceable
obligation." Questions have arisen as to whether a security interest
in an application or patent held by a large entity is a sufficient
interest to prohibit claiming small entity status. For example, an
applicant or patentee may take out a loan from a banking institution
and the loan may be secured with rights in a patent application or
patent of the applicant or patentee, respectively. The granting of such
a security interest to the banking institution is not a currently
enforceable obligation to assign, grant, convey, or license any rights
in the invention to the banking institution. Only if the loan is
defaulted upon will the security interest cause a transfer of rights in
the application or patent to the banking institution. Thus, where the
banking institution is a large entity, the applicant or patentee would
not be prohibited from claiming small entity status merely because the
banking institution has been granted a security interest, but if the
loan is defaulted upon, there would be a loss of entitlement to small
entity status. Pursuant to Sec. 1.27(g), notification of the loss of
entitlement would need to be filed in the application or patent prior
to paying, or at the time of paying, the earliest of the issue fee or
any maintenance fee due after the date on which small entity status is
no longer appropriate. The proposed change to paragraphs (a)(1),
(a)(2)(i), and (a)(3)(i) is intended to clarify that the obligation to
assign, grant, convey, or license any rights in the invention must be a
currently enforceable obligation and thus a security interest in an
application or patent held by a large entity would not be a sufficient
interest to bar entitlement to small entity status. The proposed change
would not result in any change to the standards for determining
entitlement to small entity status.
A few additional examples will further clarify when small entity
status is or is not appropriate.
Example 1: On January 2, 2002, an application is filed with a
written assertion of small entity status and the small entity filing
fee is paid. Applicant is entitled to claim small entity status when
the application is filed. Thereafter, the application is allowed and
the small entity issue fee is timely paid on October 1, 2002. On
October 2, 2002, applicant signs a license agreement licensing
rights in the invention to a large entity. On October 1, 2002,
applicant had not transferred any rights in the invention, and was
under no obligation to transfer any rights in the invention, to any
other party who would not qualify for small entity status. The
payment of the small entity issue fee would be proper as long as the
applicant was under no obligation on October 1, 2002, to sign the
license agreement with the large entity.
Example 2: An applicant, who would otherwise qualify for small
entity status, executes an agreement with a large entity. The
agreement requires the applicant to assign a patent application to
the large entity sixty days after the application is filed.
Thereafter, the application is filed. Since the applicant is under
an existing obligation to assign the application to a large entity,
applicant would not be entitled to claim small entity status.
Applicant would need to pay the large entity filing fee even though
the actual assignment of the application to the large entity may not
occur until after the date of payment of the filing fee.
Furthermore, Sec. 1.27 is proposed to be amended to change the
period at the end of paragraph (a)(2)(i) to "; and" to clarify that
paragraphs (a)(2)(i) and (a)(2)(ii) are additive requirements and a
party seeking to qualify as a small business must meet both
requirements as to transfer of rights and Small Business Administration
requirements.
Section 1.27(a)(2)(ii) is proposed to be amended to change
"[m]eets the standards set forth in 13 CFR part 121" to "[m]eets the
size standards set forth in 13 CFR 121.801 through 121.805 to be
eligible for reduced patent fees."
Questions have also arisen as to whether a small business concern
must have a place of business located in the United States, and operate
primarily within the United States or make a significant contribution
to the United States economy through the payment of taxes or use of
American products, materials or labor (13 CFR 121.105) to be eligible
to pay reduced patent fees under 35 U.S.C. 41(h). When the provisions
of 35 U.S.C. 41(h) (Public Law 97-247, 96 Stat. 317 (1982)) were
implemented in 1982, a suggestion that foreign concerns not be eligible
to pay reduced patent fees under 35 U.S.C. 41(h) was considered and
rejected because excluding foreign concerns would violate United States
treaties in the patent area. See Definition of Small Business for
Paying Reduced Patent Fees Under Title 35, United States Code, 47 FR
43272 (Sept. 30, 1982), 1023 Off. Gaz. Pat. Office 27 (Oct. 19, 1982)
(final rule). Specifically, a provision that foreign concerns are not
eligible to pay reduced patent fees under 35 U.S.C. 41(h) would violate
Article 2 of the Paris Convention for the Protection of Industrial
Property, which provides that nationals of any Paris Convention country
shall, as regards the protection of industrial property, enjoy in all
the other Paris Convention countries the advantages that their
respective laws grant to nationals of that country. Therefore, a
business concern which meets the small business requirements set forth
in 13 CFR 121.801 through 121.805 and complies with applicable Office
procedures is and continues to be eligible to pay reduced patent fees
under 35 U.S.C. 41(h), even if the business concern is located in or
operates primarily in a foreign country.
Section 1.47: Section 1.47(a) and (b) are proposed to be amended to
refer to the petition fee set forth in Sec. 1.17(g) for consistency
with the change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.52: Section 1.52, paragraphs (b)(1)(ii), (b)(2)(ii),
(d)(1) and (e), are proposed to be amended.
Section 1.52, paragraphs (b)(1)(ii) and (d)(1) are proposed to be
amended to require that the statement that the translation is accurate
be signed by the individual who made the translation. The Office has
received a number of inquiries as to who may sign the statement, and
has decided that it is appropriate to include the requirement that the
signature required is that of the translator into the rules of
practice. See also the proposed amendments to Secs. 1.55(a)(4),
1.69(b) and 1.78(a)(5)(iv). The requirement that the person who made
the translation sign the statement that the translation is accurate is
consistent with current Sec. 3.26. Currently, anyone, including
practitioners, who would have sufficient knowledge concerning the
accuracy of the translation to comply with the averments of Secs.
1.4(d)(2) and 10.18 may sign the accuracy statement regarding the
translation. As a result, translations are being received by the Office
accompanied by statements signed by practitioners stating that the
translations are believed to be accurate "based on information and
belief." Such type of qualification by a party unrelated and several
parties removed from the one doing the translation does not lend itself
to confidence by the Office that care has been taken with the
translation. Accordingly, the Office believes it to be appropriate to
require the party doing the actual translation to make the statement of
accuracy, particularly to ensure that the translator is covered by
Secs. 1.4(d)(2) and 10.18.
Section 1.52(b)(2)(ii) is proposed to be revised to recommend that
the font size of text be at least a font size of 12, which is
approximately 0.166 inches or 0.422 cm. high. Section 1.52(b)(2)(ii)
currently requires that the text be in a lettering style that is at
least 0.08 inches high, which is the font size set forth in Patent
Cooperation Treaty (PCT) Rule 11.9. A font size of only 0.08 inches
leads to difficulty in capturing text with optical character
recognition technology and may not be reproducible as required by Sec.
1.52(a)(1)(v) (and PCT Rule 11.2(a)). A
font size of 12 (0.422 cm. or 0.166 inch high) is significantly more
reproducible. Accordingly, Sec. 1.52(b)(2)(ii) is proposed to be
amended to indicate a preference for a larger font size. See Sec.
1.58(c) for a similar change.
Further, Sec. 1.52 is proposed to be amended to allow greater
flexibility in filing tables on compact disc, so that compact disc
files may be used instead of paper where the total number of pages
collectively occupied by all the tables in an application exceeds 100.
Also, Sec. 1.52 is proposed to be clarified to be consistent with
tables submitted on paper as to what constitutes a page. Section 1.52
is proposed to be amended to recite that CD-R discs should be finalized
so that they are closed to further writing.
Section 1.52(e)(1)(iii) is proposed to be amended to allow tables
of any size on compact disc if the total number of pages of tables
exceeds 100 pages. Since permitting the filing of tables on compact
disc, the Office has received voluminous applications having large
numbers of tables that were under 50 pages in length. Applicants have
indicated that it would be less burdensome filing these small tables on
compact disc. Accordingly, the rule is being liberalized while
balancing the convenience of the Office and the public to view the
document with the least burden imposed by dual media.
Section 1.52(e)(1)(iii) is also proposed to be amended to clarify
what constitutes an electronic page so as to determine compliance with
the 50- and 100-page requirement for submission of tables on compact
disc.
Further clarification is proposed to be provided in Sec.
1.52(e)(3)(i) as to what is a permanent compact disc. Recordable
compact discs can be made for recording in a single recording session
or in multiple recording sessions. To further assure the archival
nature of the discs, the requirement that recordable discs be finalized
so that they are closed to further recording is proposed to be added to
Sec. 1.52. Further, many older CD-ROM drives and audio CD players have
compatibility problems with un-finalized CDs. This proposed change will
ensure that the public and the Office will be able to use identical
copies of any CDs filed with older CD-ROM drives.
The Office is actively investigating allowing the submission of
other file formats, such as the Continuous Acquisition and Life Cycle
Support (CALS) XML format, in addition to the current ASCII format.
Before allowing the use of a file format, the Office must verify that
applicants will have the tools to create files easily that are
archivable and can be rendered to be viewable both by the Office users
and later by the public when the application is published. Problems
involving file size limitations, software display, and availability of
adequate table creation software are delaying implementation at this
time. The Office intends to broaden Sec. 1.52 to allow at least CALS
format tables when these problems are resolved. Technical
specifications and a discussion of operability issues for the CALS
table format may be found at the OASIS, i.e., Organization for the
Advancement of Structured Information Standards, Web site pages
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&
log=linklog&to=http://ww-w.oasis-open.org/cover/tr9502.html and
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&
log=linklog&to=http://www.oasis-open.org/specs/a501.htm.
The Office is also reviewing the acceptability of DVD media. At
present, there are several different types of recordable DVD media and
it is unclear which if any will become a standard archivable format.
Also, the Office is upgrading its capabilities to include the ability
to read at least some types of DVD media. However, it does not appear
that any DVD readers can be procured that will be able to read all of
the different types of DVD media that are now in the marketplace. The
Office is considering allowing submissions on at least some types of
DVD media when it becomes clear which types of DVD media are recognized
as of archivable quality and are compatible with Office hardware and
software.
Section 1.53: Section 1.53(e)(2) is proposed to be amended to refer
to the petition fee set forth in Sec. 1.17(f) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.55: Section 1.55(a)(1)(ii) is proposed to be amended to
replace "an application that entered the national stage from an
international application after compliance with 35 U.S.C. 371" with
"an international application designating the United States" (any
application that enters the national stage from an international
application after compliance with 35 U.S.C. 371 is also an
"international application designating the United States"). While
section 4508 of the American Inventors Protection Act of 1999 (AIPA) as
originally enacted did not make the eighteen-month publication
amendments to 35 U.S.C. 119 and 120 applicable to an international
application unless and until it enters the national stage under 35
U.S.C. 371 (see Public Law 106-113, 113 Stat. 1501, 1501A-566 through
1501A-567 (1999)), section 13205 of Public Law 107-273 amended section
4508 of the AIPA to make the eighteen-month publication amendments to
35 U.S.C. 119 and 120 in the AIPA also applicable during the
international stage of an international application. See 116 Stat.
1758, 1903 (2002).
Section 1.55(a)(1) is also proposed to be amended to add a
paragraph (a)(1)(iii) to provide that if an application claiming the
benefit of a prior foreign application meets the twelve-month filing
period requirement in 35 U.S.C. 119(a) only through one or more prior-
filed nonprovisional applications or international applications
designating the United States for which a benefit is claimed under 35
U.S.C. 120, 121, or 365(c) and Sec. 1.78(a), each such prior-filed
application must also contain a claim for priority in compliance with
Sec. 1.55 to the prior foreign application. 35 U.S.C. 119(b)(1)
provides that an application for patent is not entitled to priority
under 35 U.S.C. 119(a)-(d) unless a claim is filed in the Office at
such time during the pendency of the application as required by the
Director. 35 U.S.C. 119(b)(2) also provides that the Director may
consider the failure of the applicant to file a timely claim for
priority as a waiver of any such claim, and that the Director may
establish procedures, including the payment of a surcharge, to accept
an unintentionally delayed claim under 35 U.S.C. 119(a)-(d). This time
period requirement is to ensure that priority claims under 35 U.S.C.
119(a)-(d) are presented in sufficient time to permit publication of
the application at eighteen months from the earliest claimed priority
date under 35 U.S.C. 119(a)-(d). See 145 Cong. Rec. S14,708, S14,719
(1999) (daily ed. Nov. 17, 1999) (the Conference Report for H.R. 3194,
106th Cong., 1st. Sess. (1999), which resulted in Public Law 106-113,
does not contain any discussion (other than the incorporated language)
of S. 1948; however, a section-by-section analysis of S. 1948 was
printed in the Congressional Record at the request of Senator Lott). In
addition, priority claims must be presented in a timely manner in a PCT
international application filed under 35 U.S.C. 363 to determine (among
other things) the time limit for national stage entry. Therefore, the
Office is proposing to amend Sec. 1.55(a) to add a paragraph
(a)(1)(iii) to make clear that the first-filed application in a chain
of applications (as well as all intermediate applications) must contain
a claim for priority in compliance with Sec. 1.55 to a prior foreign
application for a subsequent application to claim the benefit of the
prior foreign application through the first-filed application (and all
intermediate applications).
In In re Tangsrud, 184 USPQ 746 (Comm'r Pat. 1973), the Office held
that a certified copy of a foreign priority document may be filed in a
continuation application under Sec. 1.60, rather than in its abandoned
parent application, to meet the requirements in 35 U.S.C. 119 for the
continuation application to claim the benefit of the foreign priority
application (through its abandoned parent application). The language of
Tangsrud, however, is broad enough to imply that neither the claim for
priority nor the certified copy of the foreign priority document must
be filed in the first-filed application for a subsequent application to
claim the benefit of the foreign priority application through the
first-filed application. This proposed change to Sec. 1.55(a) would
not affect the holding in Tangsrud that the certified copy of the
foreign priority document may be filed in a continuing application,
rather than in an abandoned first-filed application, provided that a
claim for priority in compliance with Sec. 1.55 to a prior foreign
application is presented in the first-filed application.
Section 1.55(a)(4) is proposed to be amended to require that the
statement that the translation is accurate be signed by the individual
who made the translation. The Office has received a number of inquiries
as to who may sign the statement, and has decided that it is
appropriate to include the requirement that the signature required is
that of the translator into the rules of practice. See also the
proposed amendments to Secs. 1.52(b)(1)(ii), 1.52(d)(1), 1.69(b)
and 1.78(a)(5)(iv). The requirement that the person who made the
translation sign the statement that the translation is accurate is
consistent with current Sec. 3.26.
Section 1.55(c) is proposed to be amended to change "365(a)" to
"365(a)-(b)" such that the procedures for acceptance of delayed
priority claims under Sec. 1.55(c) also apply to delayed priority
claims under 35 U.S.C. 365(b) in international applications.
Section 1.57: Section 1.57 is proposed to be added to provide for
incorporation by reference. Section 1.57(a) as proposed provides that,
if all or a portion of the specification or drawings is inadvertently
omitted from an application, but the application contains a claim under
Sec. 1.55 for priority of a prior-filed foreign application, or Sec.
1.78 for the benefit of a prior-filed provisional, nonprovisional, or
international application, that was present on the date of receipt of
the application, and the omitted portion of the specification or
drawings is completely contained in the prior-filed application, the
claim would be considered an incorporation by reference of the prior-
filed application. Sections 1.57(b) through (f) as proposed treat
incorporation by reference into an application of essential and
nonessential material by: (1) Providing a definition of essential and
nonessential material; (2) defining specific language that must be used
to trigger an incorporation by reference; (3) codifying current
practice as set forth in MPEP Sec. 608.01(p) (Incorporation by
Reference), updated to reflect the publication of applications; and (4)
codifying treatment of improper incorporation by reference.
Currently, the mere reference to another application is not an
incorporation of anything therein into the application containing such
reference for the purpose of the disclosure under 35 U.S.C. 112, para. 1.
See MPEP Secs. 201.06(c) and 608.01(p), and In re de Seversky, 474
F.2d 671, 177 USPQ 144 (CCPA 1973). The proposed rule would allow all
or a portion of the specification or drawings that is inadvertently
omitted from an application containing a priority claim for a prior-
filed foreign application, or a benefit claim for a prior-filed
provisional, nonprovisional, or international application, to be added
to the application by way of an amendment if the omitted portion of the
specification or drawings is completely contained in the prior-filed
application even though there is no explicit incorporation by reference
of the prior-filed application. The phrase "completely contained" in
Sec. 1.57(a) requires that the material to be added to the application
under Sec. 1.57(a) must be expressly (as opposed to implicitly)
disclosed in the prior application. Cf. PLT Rule 2(4)(iv). The claim
for priority or benefit would have to be present on the date of receipt
of the application in order for it to be considered an incorporation by
reference of the prior-filed application. The nonprovisional
application claiming benefit could be a continuation, divisional, or
continuation-in-part of the prior application for which benefit is
claimed. The purpose of the proposed rule is to provide a safeguard for
applicants when a page(s) of the specification, or a portion thereof,
or a sheet(s) of the drawings, or a portion thereof, is inadvertently
omitted from an application.
If all or a portion of the specification or drawings is
inadvertently omitted from an application and applicant wants to rely
on the incorporation by reference provided by the proposed rule, the
application would need to be amended to include the omitted portion of
the specification or drawings within the time period set by the Office,
but in no case later than the close of prosecution as defined by Sec.
1.114. In order for the omitted material to be included in the
application, the application must be amended to include it. The
incorporation by reference provided by the proposed rule requires an
applicant to timely amend the application to include the omitted
material in order for this material to be considered part of the
disclosure. The proposed rule gives the examiner the authority to
require the applicant to supply a copy of the prior-filed application,
to supply an English-language translation of any prior-filed
application that is in a language other than English, and to identify
where the omitted portion of the specification or drawings can be found
in the prior-filed application.
Any amendment to an international application pursuant to the
proposed rule would be effective only as to the United States. See
proposed Sec. 1.57(a)(2). In addition, no request to add the missing
part of the description or the missing drawing in an international
application designating the United States will be acted upon by the
Office prior to the expiration of the applicable time limit under PCT
Article 22(1) or (2), or Article 39(a).
If an application is not entitled to a filing date under Sec.
1.53(b) or under PCT Article 11, the amendment must be by way of a
petition accompanied by the fee set forth in Sec. 1.17(f). See
proposed Sec. 1.57(a)(3).
The proposed rule is similar to the current practice under MPEP
Sec. 201.06(c) where there is an explicit incorporation by reference
of the prior U.S. application contained in the specification or in the
application transmittal letter of a continuation or divisional
application filed under Sec. 1.53(b). See MPEP Sec. 201.06(c)
(Incorporation by Reference). The proposed rule is also consistent with
the PLT Article 5(6)(b) and Rule 2(3) and (4).
Of course, whether the proposed rule is adopted or not, applicants
may continue to explicitly incorporate by reference a prior application
or applications by including, in the body of the specification as
filed, a statement that the prior application or applications is
"hereby incorporated by reference." Such an explicit incorporation by
reference would not be limited to inadvertent omissions as in the
proposed rule. Accordingly, applicants are encouraged to explicitly
incorporate by reference a prior application or applications by
including such a statement in the body of the specification, if
appropriate.
Sometimes applicants intentionally omit material from a prior-filed
application when filing an application claiming priority to, or benefit
of, a prior-filed application. As discussed, the incorporation by
reference would only permit material that was inadvertently omitted
from the application to be added to the application if the omitted
material is completely contained in the prior-filed application.
Therefore, if the proposed rule were adopted, applicants would still be
able to intentionally omit material contained in the prior-filed
application from the application containing the priority or benefit
claim without the material coming back in by virtue of the
incorporation by reference. Applicants would be able to maintain their
intent by simply not amending the application to include the
intentionally omitted material. Thus, there should be no impact from
the proposed rule in continuing applications where material from the
prior application has been intentionally omitted. Therefore, the
proposed rule has been drafted such that the application claiming
benefit of a prior U.S. application could be a continuation-in-part
application (as well as a continuation or divisional).
The proposed rule would not apply to any applications filed before
the effective date of the rule. The proposed rule would be prospective
only since to apply the rule retroactively would result in changing the
expectations regarding incorporation by reference by applicants when
the applications were filed.
The Office is interested in comments from the public regarding
proposed Sec. 1.57(a), whether there is support or opposition for the
proposed rule, and whether there is any desire to limit the proposed
rule to continuation or divisional applications and not have it apply
to continuation-in-part applications.
Section 1.57(b) clarifies what is acceptable language that
identifies an incorporation by reference for essential and non-
essential matter as opposed to incorporation by reference of material
in a prior application as is proposed in Sec. 1.57(a). Applicants
sometimes refer to other applications, patents, and publications,
including patent application publications using language which does not
clearly indicate whether what is being referred to is incorporated by
reference or is just an informational reference. The Office is
proposing to limit incorporation by reference (except as provided in
Sec. 1.57(a)) to instances only where the words "incorporated by
reference" appear. The Office is attempting to bring greater clarity
to the record and provide a bright line test as to where something
being referred to is an incorporation by reference. The Office
considered the alternative of making any mention of a document an
automatic incorporation by reference of the document. Patent
applications frequently contain a discussion of prior art documents
when discussing the background of the invention, which prior art
documents are not intended to be incorporated by reference. The
necessity for Sec. 1.57(b) is that applicants who fail to clearly link
certain disclosures to means-plus-function language risk having their
claims interpreted too narrowly or held unenforceable. Clarifying when
material is incorporated by reference during examination by use of
specific trigger language is considered an aid to applicants when they
invoke 35 U.S.C. 112, para. 6. Applicants would be aided by avoiding
narrowed claim construction as a result of a number of court decisions
which would not look for equivalents outside of the application. See
Atmel Corp. v. Info. Storage Devices Inc., 198 F.3d 1374, 53 USPQ2d
1225 (Fed. Cir. 1999), and B. Braun Medical Inc. v. Abbott Lab, 124
F.2d 1419, 43 USPQ2d 1896 (Fed. Cir. 1997). Treating these documents as
automatically incorporated might result in unintended consequences such
as when a means-plus-function claim is presented under 35 U.S.C. 112,
para. 6.
Similarly, applicants would be aided by not having their claims
found unpatentable by a mere reference to outside material
unintentionally incorporating material that contained equivalents that
would broaden their claims to encompass the prior art. Automatic
incorporation by reference would create a trap for applicants and
practitioners by creating unintentional equivalents for 35 U.S.C. 112,
p. 6, language broadening claims to be unpatentable. Additionally, as
claims are generally read in light of the specification, what is
actually incorporated into the specification can affect the scope of
the claims independent of 35 U.S.C. 112, para. 6.
Accordingly, comments are desired identifying alternative language
to that proposed in paragraph (b) or why requiring this specific
language would be a problem.
A patent application incorporating by reference other material
must, as described in paragraph (b), include an identification of the
referenced patent, application, or publication pursuant to Sec.
1.98(b)(1) through (b)(5). The Office recommends that particular
attention be directed to specific portions of referenced documents
where the subject matter incorporated may be found if large amounts of
material are incorporated. Guidelines for situations where applicant is
permitted to fill in a number for Application No. ____ left blank in
the application as filed can be found in In re Fouche, 439 F.2d 1237,
169 USPQ 429 (CCPA 1971). Commonly assigned abandoned applications less
than 20 years old can be incorporated by reference to the same extent
as copending applications; both types are open to the public upon the
referencing application issuing as a patent. See MPEP Sec. 103.
Section 1.57(c) codifies current practice in MPEP Sec. 608.01(p)
(Incorporation by Reference), except that Sec. 1.57(c) as proposed is
limited to U.S. patent or U.S. patent application publications (i.e.,
the Office proposes to eliminate the practice of incorporating by
reference essential material in unpublished patents in which the issue
fee for an application has been paid but the application has not yet
issued as a patent). Delays in issuance or the withdrawal from issue of
an allowed application put in doubt that an application incorporated by
reference will be available to the public when a patent incorporating
the other application issues. Similarly, this provision permitting only
the incorporation of the publication document of an application is
intended to preclude incorporation by reference of material found only
in the redacted portion of a published patent application.
Section 1.57(c) updates current practice to reflect publication of
applications in two areas. Current practice permits holding in abeyance
correction of material incorporated by reference from unpublished U.S.
applications that have not issued as patents until allowance of the
application making the incorporation by reference. Publication of the
applications which contain an incorporation by reference means that the
public will need access to the material incorporated by reference prior
to an application being issued as a patent. Where the incorporation is
to an unpublished application that has not issued as a patent, such
application is not readily available. Therefore, holding the correction
of an incorporation by reference in abeyance in this situation will
materially impair the public's access to the invention that is
disclosed by the published application that incorporates an unpublished
application.
The Office considered but rejected including unpublished abandoned
applications (which are otherwise open to the public under Sec.
1.14(a)(iv)) as acceptable documents for incorporation by reference
since the text of abandoned applications is not published after
abandonment on the Internet at this time. The Office is considering how
to make previously unpublished material to which the public is
currently permitted access pursuant to Sec. 1.14(a)(iv) (e.g.,
unpublished incorporated by reference applications) available on the
Internet. The Office may reconsider this position when its electronic
file wrapper permits access to the text of unpublished abandoned
applications on the Internet.
Section 1.57(c)(1) through (c)(3) defines essential material as
those items required by 35 U.S.C. 112, para. 1, 2, and 6.
Section 1.57(d) defines the scope of incorporation by reference
practice for nonessential subject matter. As discussed with respect to
Sec. 1.57(c), the Director has considerable discretion in determining
what may or may not be incorporated by reference in a patent
application. Through the Office's incorporation by reference policy,
the Office ensures that reasonably complete disclosures are published
as U.S. patents and U.S. application publications.
Section 1.57(e) is added so that it is clear that a copy of the
incorporated by reference material may be required to be submitted to
the Office even if the material is properly incorporated by reference.
The examiner may require a copy of the incorporated material simply to
review it and understand what is being incorporated or to put the
description of the material in its proper context. Another instance
where a copy of the reference may be required is where the material is
being inserted by amendment into the body of the application to replace
the incorporation by reference statement.
Section 1.57(f) addresses corrections of incorporation by
reference. Section 1.57(f) provides that improper incorporation by
reference statements may be corrected with a timely filed amendment.
Nothing in Sec. 1.57(f) authorizes the insertion of new matter into an
application. The Office is concerned that improper incorporation by
reference statements and late corrections thereof require the
expenditure of unnecessary examination resources and slow the
prosecution process. By treating improper incorporation by reference
statements as not incorporating any material (until the incorporation
by reference is corrected), the Office and applicants will avoid
expending unnecessary resources and delays in prosecution occasioned by
the many references to extraneous material that are often found in
patent applications. Applicants know whether they want material
incorporated by reference, and must timely correct any incorporation by
reference errors.
Section 1.58: Section 1.58(a) is proposed to be amended to provide
that a table not be included in both the drawings and in the body of
the specification of an application. Section 1.58(b) is also proposed
to be amended to clarify that correct visual alignment of rows and
columns of chemical and mathematical formulae and tables is retained
when the electronic file is rendered by opening and displaying the
electronic file at the Office using a text viewer program. Section
1.58(c) is additionally proposed to be amended to recommend that the
font size of text be at least 0.166 inches or 0.422 cm. and to
eliminate a reference to elite type font.
Section 1.58(a) is proposed to be amended because applicants have
been making voluminous applications even larger by including the same
table as both a drawing figure and as text in the body of an
application. Filing duplicate tables requires additional review by the
Office to determine if the drawing table and the text table are
duplicates and to identify differences if any differences exist.
Moreover, the number of pages is effectively increased, causing
increased scanning, storage and reproduction costs. In addition, the
burden on the public to copy and review a published application or
patent is also increased. See Sec. 1.83 for a similar proposed change
involving tables and sequence listings.
Section 1.58(b) is proposed to be amended adding "visually" so
that it is clear that the data in the electronic file are appropriately
formatted so that the alignment of rows and columns is maintained in
the table when the file is opened to view at the Office. The Office has
found that some filers have only been providing markers to identify
rows and columns in table data. When the table is viewed at the Office
the markers do not cause the rows and columns of data to be visually
aligned. Unless each entry in a table is surrounded with an appropriate
number of spaces the visual spatial alignment of the table is not
maintained: i.e., the rows and cells are mis-aligned. A way to provide
the proper alignment is to insert space characters in each cell so that
the overall number of characters in each cell is the same, and to
maintain a constant font width for all characters.
Many programs that are used to generate tables allow the user to
provide additional spaces manually when typing data. Many of these
programs also provide an automated way to pad the cells with space
characters, and create an ASCII file with spatially aligned data. This
feature is generally invoked by a command that is often called printing
to a "formatted text" format or "prn" file. The program formats the
table as it would appear on paper padding the cells with spaces to
provide proper alignment of the cell entries.
A review of different versions of the same software product and of
different software products showed no consistency in the menu language
used for the formatting command noted above. With the constant change
in software versions, the Office is not able to provide a list of all
the menu variations. However, a person knowledgeable with the software
used to create tabular data should be able to find the commands to
invoke this feature in the software.
Section 1.58(c) is proposed to be amended for the same reason that
Sec. 1.52(b)(2)(ii) is proposed to be amended. Section 1.58(c)
currently requires that the text be in a lettering style that is at
least 0.08 inches high, which is the minimum font size set forth in
Patent Cooperation Treaty (PCT) Rule 11.9. Text having a font size only
0.08 inches high is difficult to capture with optical character
recognition technology and may not be reproducible as required by Sec.
1.52(a)(1)(v) (and PCT Rule 11.2(a)). A font size of 12 (12/72 inch or
0.166 inch (0.422 cm.) high) is significantly more reproducible than a
font size of 6 (6/72 inch or 0.08 inch (0.211 cm.) high). Accordingly,
Sec. 1.58(c) is proposed to be amended to indicate a preference for a
larger font size. In addition, the reference to elite type is proposed
to be deleted as it was inconsistent with the size given. Elite type is
a typewriter type that runs 12 characters to the inch. Instead of
referencing elite type, the rule is proposed to reference a font size
of 6 which should be more meaningful to most patent applicants (most
word processing software programs have an option to choose a font and a
font size).
Section 1.59: Section 1.59 is proposed to be amended to refer to
the petition fee set forth in Sec. 1.17(g) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.69: Section 1.69(b) is proposed to be amended by deleting
the words "or approved" as unnecessary, and possibly leading to
confusion and the mistaken assumption that the Office has a procedure
for the approval of applicant generated forms, where no such procedure
exists. See Changes to Implement the Patent Business Goals,
64 FR 53771, 53777 (Oct. 4, 1999), 1228 Off. Gaz. Pat. Office 15, 20
(Nov. 2, 1999) (proposed rule) (declining to adopt a review service for
applicant-created forms). In addition, paragraph (b) of Sec. 1.69 is
proposed to be amended to require that the statement that the
translation is accurate be signed by the individual who made the
translation. The Office has received a number of inquiries as to who
may sign the statement required by the current rule and how the
statement must be signed. The Office has decided to clarify that the
signature required is that of the translator. See also the proposed
amendments to Secs. 1.52(b)(1)(ii), 1.52(d)(1), 1.55(a)(4) and
1.78(a)(5)(iv). The requirement that the person who made the
translation sign the statement that the translation is accurate is
consistent with current Sec. 3.26.
Section 1.76: Section 1.76(a) is proposed to be amended to require
that any application data sheet (ADS) contain the seven headings listed
in Sec. 1.76(b) and all of the appropriate data for each section
heading. The proposed amendment would also require that the ADS be
titled "Application Data Sheet." Any label (e.g., the label "Given
Name" in the "Applicant Information" heading) that does not contain
any corresponding data will be interpreted by the Office to mean that
there is no corresponding data for that label anywhere in the
application. By requiring an ADS to contain all seven section headings,
and any appropriate data for the sections, the accuracy of
bibliographic data in patent applications will be enhanced and the need
for corrected filing receipts related to Office errors will be reduced.
Section 1.76(c)(2) is proposed to be amended to require a
supplemental application data sheet to be labeled "Supplemental
Application Data Sheet" and to also contain all of the headings listed
in Sec. 1.76(b) with any appropriate data for each heading, rather
than only identifying the information that is being changed (added,
deleted, or modified) in the supplemental ADS. Requiring a supplemental
ADS to contain all of the information from the ADS with the changes
indicated is consistent with the ADS guide posted on the Office's
Internet Web site at: http://frwebgate.access.gpo.gov/cgi-bin/leaving.
cgi?from=leavingFR.html&log=linklog&to=http://www.uspto.gov/web/offices/
pac/dapp/sir/doc/payappde.html.
A supplemental ADS containing only new or changed
information is likely to confuse the record, create unnecessary work
for the Office, and would not comply with Sec. 1.76 if amended as
proposed. When submitting an ADS after the initial filing of the
application to correct, modify, or augment the original application
data included in an ADS, the following applies: (1) The supplemental
application data sheet must be labeled "Supplemental Application Data
Sheet"; (2) the "Supplemental Application Data Sheet" is a full
replacement copy of the original application data sheet, with each of
the seven section headings, and with any appropriate data for the
section headings; and (3) the "Supplemental Application Data Sheet"
must be submitted with any changes or additions underlined (for
deletions without replacement data, use strike-through or brackets).
When submitting an ADS to correct, modify, or augment application
data (see Sec. 1.76(d)), when an ADS has not been previously filed,
the first-filed ADS is not considered a supplemental ADS even if such
is filed subsequent to the initial filing of the oath or declaration.
When submitting such an ADS: (1) The application data sheet must be
labeled "Application Data Sheet"; and (2) a complete application data
sheet including all appropriate information for each heading must be
submitted.
Section 1.78: Section 1.78(a)(1) is proposed to be amended to
delete an unnecessary alternate condition to permit a claim for the
benefit of a prior-filed application. Sections 1.78(a)(2) and (a)(5)
are proposed to be amended to permit the required reference to the
prior application(s) to be in multiple sentences at the beginning of
the specification, rather than being limited to the first sentence of
the specification.
Section 1.78(a)(1) sets forth the conditions under which a
nonprovisional application may claim the benefit of one or more prior-
filed copending U.S. nonprovisional applications or international
applications designating the United States of America. Where the prior-
filed application is a nonprovisional application (filed under 35
U.S.C. 111(a)), one of the conditions under Sec. 1.78(a)(1) is met
when the prior-filed application satisfied any one of paragraphs (ii),
(iii) or (iv) of Sec. 1.78(a)(1). To satisfy paragraph (ii), the
prior-filed application must be "[c]omplete as set forth in Sec.
1.51(b)." To satisfy paragraph (iii), the prior-filed application must
be "[e]ntitled to a filing date as set forth in Sec. 1.53(b) or Sec.
1.53(d) and include the basic filing fee set forth in Sec. 1.16."
Considering that paragraph (iii) is less restrictive than paragraph
(ii), it is proposed to delete paragraph (ii) (and redesignate
paragraphs (iii) and (iv) as paragraphs (ii) and (iii), respectively)
as it is unnecessary because any prior-filed application that would
satisfy paragraph (ii) would also satisfy paragraph (iii).
Sections 1.78(a)(2)(iii) and (a)(5)(iii) are proposed to be amended
to change the word "sentence" to "sentence(s)". The proposed change
would permit the required reference to the prior application(s) to be
in more than one sentence at the beginning of the specification. In
some situations, it would be easier and clearer to set forth the
relationship between prior applications if more than one sentence were
permitted. For example, where there is a provisional application and
multiple intermediate nonprovisional applications, the required
identification in the latest nonprovisional application as to which
intermediate nonprovisional application(s) claims benefit to the
provisional application (i.e., is within one year of the provisional
application's filing date), could be set forth in a clearer manner
using multiple sentences.
Section 1.78(a)(5)(iv) is proposed to be amended to require that
the statement that the translation is accurate be signed by the
individual who made the translation. The Office has received a number
of inquiries as to who may sign the statement, and has decided that it
is appropriate to include the requirement that the signature required
is that of the translator into the rules of practice. See also the
proposed amendments to Secs. 1.52(b)(1)(ii) and (d)(1), 1.55(a)(4)
and 1.69(b). The requirement that the person who made the translation
sign the statement that the translation is accurate is consistent with
current Sec. 3.26.
Section 1.78(c) is proposed to be amended to clarify that the prior
art exception under 35 U.S.C. 103(c) does not apply to double patenting
rejections by the addition of the last sentence, which states "Even if
the claimed inventions were commonly owned, or subject to an obligation
of assignment to the same person, at the time the later invention was
made, the conflicting claims may be rejected under the doctrine of
double patenting in view of such commonly owned or assigned
applications or patents under reexamination." Therefore, Sec. 1.78(c)
emphasizes that double patenting rejections should still be made, when
appropriate, even if a reference is disqualified from being used in a
rejection under 35 U.S.C. 103(a) via the prior art exclusion under 35
U.S.C. 103(c). This clarification codifies patent policy regarding
double patenting rejections and the prior art exclusion under 35 U.S.C.
103(c) as set forth in the notice Guidelines Concerning the
Implementation of Changes to 35 U.S.C. 102(g) and 103(c) and the
Interpretation of the Term "Original Application" in
the American Inventors Protection Act of 1999, 1233 Off. Gaz. Pat.
Office 54 (Apr. 11, 2000)) and MPEP Sec. 706.02(l)(1). Additionally,
the first sentence of Sec. 1.78(c) is proposed to be amended by
changing the word "party" to "person" in order to use terminology
consistent with 35 U.S.C. 103(c).
Section 1.83: Section 1.83(a) is proposed to be amended to provide
that tables and sequence listings that are in the specification are not
permitted to also be included in the drawings. Applicants should not be
obliged to include tables or the sequence listing in the drawings due
to the current requirement of Sec. 1.83(a) that all claimed features
must be shown in the drawings. Under the proposed amendment, if the
specification includes a sequence listing or a table, such a sequence
listing or table would not be permitted to be repeated in the drawings.
See Sec. 1.58(a) for a similar proposed change to require that
tables be included in only one of the drawings and the specification.
Section 1.84: Section 1.84 is proposed to be amended by revising
Sec. 1.84(a)(2)(iii) to remove the requirement for submission of a
black and white copy of any color drawings or photographs. Section
1.84(a)(2)(iv) is proposed to be amended to become (a)(2)(iii). Section
1.84(c) is proposed to be amended to clarify that identification
(labeling) of the drawings is recommended, but not required, and to
change the recommended location of any identification of the drawings.
Section 1.84(a)(2) is proposed to be amended to remove the
requirement for a black and white copy of a color drawing or
photograph. This requirement has already been waived. See Interim
Waiver of Parts of 37 CFR 1.84 and 1.165, and Delay in the Enforcement
of the Change in 37 CFR 1.84(e) to No Longer Permit Mounting of
Photographs, 1246 Off. Gaz. Pat. Office 106 (May 22, 2001).
Section 1.84(c) is proposed to be amended to remove the requirement
that the identification of drawings must be placed on the front of each
sheet of drawing, if the information is provided. The Office prefers
that the identification of drawings be placed on the front of each
sheet of drawing so that photocopies and scanned images of the drawings
will be properly identified with the application. The Office has new
scanners that will endorse in the top margin starting 3.5 inch from the
right edge and ending 1 inch from the right edge of the paper.
Therefore, applicants are strongly encouraged to place the information
on the front of each sheet, to the left of the center on the top margin
so that the identification does not overlap the endorsement, and so
that the identification will be included in any photocopies of the
drawings. The Office, however, recognizes that some applications have
long titles or identification that could not be placed completely on
the front within the top margin. In such a situation, the
identification of drawings may be placed on the back of each sheet
(understanding that the backs of drawing sheets will not be scanned),
but placing part of the identification (e.g., the application number
and the first inventor's name) on the front is recommended. If the
identification of drawings is placed on the front of each sheet, the
identification must be placed to the left of center within the top
margin.
Section 1.91: Section 1.91 is proposed to be amended to add a
paragraph (c), which provides that a model or exhibit must be
accompanied by photographs that show multiple views of the material
features of the model or exhibit and that substantially conform to the
requirements of Sec. 1.84. Material features are considered to be
those features which represent that portion(s) of the model or exhibit
forming the basis for which the model or exhibit has been submitted.
Since the Office generally returns or otherwise disposes of models or
exhibits when they are no longer necessary for the conduct of business
before the Office (Sec. 1.94), such photographs are necessary for the
file of the application or proceeding to contain an adequate record of
the model or exhibit submitted to the Office. Section 1.91(c) would
also provide that this requirement does not apply if the model or
exhibit substantially conforms to the requirements of Sec. 1.52 or
Sec. 1.84, since a model or exhibit that substantially conforms to the
requirements of Sec. 1.52 or Sec. 1.84 can itself be retained in the
file wrapper of the application or proceeding.
In applications where the exhibit is not intended to display the
medium of submission (e.g., video tapes, DVDs, and compact discs) but
the content of the submission, the requirement that the photographs be
of the substantive content is included in this paragraph. Video tapes,
DVDs, and compact discs are usually submitted with movies or multimedia
images. The requirement that the photographs submitted should show the
material features that were being exhibited is intended to require that
the photograph be that of the content of the material, not a photograph
of the medium of submission. Hence, if video or multimedia submission
is contained on a tape or disc, the corresponding photograph should be
a still image single frame of a movie, and not a submission of a
photograph of a video cassette, DVD disc or compact disc.
A video or DVD is not the type of model or exhibit that would
substantially conform to the requirements of Secs. 1.52 or 1.84.
The Office does not intend to store bulky items, such as videos,
particularly as the Office is moving toward an Image File Wrapper. See
Changes To Implement Electronic Maintenance of Official Patent
Application Records, 68 FR 38611 (June 30, 2003). Accordingly, where a
video or DVD or similar item is submitted as a model or exhibit, the
requirement of Sec. 1.91(c) for supplying photographs of what is
depicted in the video or DVD, pursuant to Sec. 1.84, would need to be
met.
The Office is interested in comments as to whether the requirement
for supplying photographs, particularly for a video or DVD, is overly
broad and an adequate description could be presented by some other type
of description, such as a written statement.
Section 1.94: Section 1.94 is proposed to be amended to be divided
into paragraphs (a) through (c). Paragraph (a) provides that once
notification is sent to applicant, arrangements must be made by
applicant for the return of the model, exhibit, or specimen at
applicant's expense, in response to such notification. Where the model,
exhibit or specimen is a perishable, it will be presumed that the
Office has permission to dispose of the item without notice to
applicant, unless applicant notifies the Office upon submission of the
item that a return is desired and arrangements are promptly made for
its return upon notification by the Office.
Paragraph (b) provides that applicant is responsible for retaining
the actual model, exhibit, or specimen for the enforceable life of any
patent resulting from the application. Section 1.94 would also provide
that its provisions do not apply: (1) If the model or exhibit
substantially conforms to the requirements of Sec. 1.52 or Sec. 1.84,
since a model or exhibit that substantially conforms to the
requirements of Sec. 1.52 or Sec. 1.84 can itself be retained in the
file wrapper of the application or proceeding; (2) where a model,
exhibit, or specimen has been described by photographs that conform to
Sec. 1.84, or (3) where the model, exhibit, or specimen is a
perishable.
Paragraph (c) provides that the notification to applicant will set
a period of time within which applicant must make arrangements for a
return of a model, exhibit, or specimen, with
extensions of time available under Sec. 1.136, except in the case of
perishables. The Office intends to set a one-month period of time from
the mailing date of the notification for applicant to make arrangements
for a return, unless the item is a perishable, in which case the time
period will be shorter. Failure by applicant to establish that
arrangements for the return of a model, exhibit or specimen have been
made within the time period set in the notice, will result in the item
being discarded by the Office.
Section 1.98: Section 1.98(a) is proposed to be amended by revising
paragraph (a)(1) to require a specified format/identification for each
page of an IDS, and that U.S. patents and U.S. patent application
publications be listed in a section separately from citations of other
documents. Section 1.98(a)(1) is specifically proposed to be amended to
require that U.S. patents and U.S. patent application publications must
be listed separately from the citations of other documents. This will
permit the Office to optical character recognition (OCR) scan the U.S.
patent numbers and the U.S. patent application publication numbers such
that the document could be made available electronically to the
examiner to facilitate searching and retrieval of U.S. patents and U.S.
patent application publications on the Office's search databases.
Applicants will comply with this proposed requirement if they use forms
PTO/SB/08A and 08B (or the more commonly used PTO-1449), which provide
a separate section for listing U.S. patents and U.S. patent application
publications. Applicants who do not use these forms for submitting an
IDS must make sure that the U.S. patents and U.S. patent application
publications are listed in a separate section from citations of other
documents.
Current Sec. 1.98(a)(1) does not require the use of a form such as
the PTO/SB/08A and 08B because the Office wishes to provide applicants
the flexibility to use other types of lists. The Office, however,
experiences problems associated with lists that do not properly
identify the application in which the IDS is being submitted: e.g.,
when applicants submit a list that includes copies of PTO-1449 or PTO-
892 forms from other applications. Even though the IDS transmittal
letter has the proper application number, each page of the list does
not include the proper application number, but instead has the
application numbers of the other applications. Should the pages of the
list become separated, the Office cannot associate the pages with the
proper application. Therefore, the rule is proposed to be amended to
require that each page of the list must clearly identify the
application number of the application in which the IDS is being
submitted.
Section 1.98(a)(1) is also proposed to be amended to require that a
list must include a column that provides a space next to each document
listed in order to permit the examiner to enter his or her initials
next to the citations of the documents that have been considered by the
examiner. This provides a notification to the applicant and a clear
record in the application to indicate which documents have been
considered by the examiner for the application. Applicants are strongly
discouraged from submitting a list that includes copies of PTO/SB/08
(PTO-1449) or PTO-892 forms from other applications. A completed PTO/
SB/08 or PTO-1449 form from another application may already have
initials of another examiner and the application number of another
application. The burden is then on the Office to correct the incorrect
information. Furthermore, when the spaces provided on the form have
initials of another examiner, there are no spaces available next to the
documents listed for the examiner of the subsequent application to
provide his or her initials.
Section 1.98(a)(1) is also proposed to be amended to require that
each page of the list includes a heading that clearly indicates that
the list is an information disclosure statement. Since the Office
treats an IDS submitted by the applicant differently than information
submitted by a third-party (e.g., the Office may discard any non-
compliant third-party submission under Sec. 1.99), a heading on each
page of the list to indicate that the list is an IDS would promote
proper treatment of the IDS submitted by the applicant and reduce
handling errors.
Section 1.98(e) is proposed to be amended to provide that the
requirement in Sec. 1.98(a)(2) for a copy of the U.S. patents or U.S.
patent application publications listed in an information disclosure
statement does not apply: (1) In any national patent application filed
after June 30, 2003; (2) in any international application that has
entered the national stage under 35 U.S.C. 371 and Sec. 1.495 after
June 30, 2003; or (3) in any information disclosure statement submitted
in compliance with the Office's electronic filing system. See
Information Disclosure Statements May Be Filed Without Copies of U.S.
Patents and Published Applications in Patent Applications filed after
June 30, 2003, 1273 Off. Gaz. Pat. Office 55 (Aug. 5, 2003).
Section 1.102: Section 1.102(c) would be amended to provide by rule
for a petition to make an application special without a fee when the
application relates to a counter-terrorism invention. The Office
currently accords "special" status to patent applications relating to
counter-terrorism technology so long as the fee under Sec. 1.17(h) is
included with the petition. Amending Sec. 1.102(c) to cover
applications relating to counter-terrorism inventions will eliminate
the requirement for a fee.
Under current Sec. 1.102(c), there are two types of inventions
that qualify as a basis for making an application special without a fee
(other than on the basis of an applicant's age or health), namely: (1)
Inventions that will materially enhance the quality of the environment;
and (2) inventions that will materially contribute to the development
or conservation of energy resources. It is proposed that inventions
that will materially contribute to countering terrorism be added as a
third type of invention for making an application special without a fee
under Sec. 1.102(c). As set forth in MPEP Sec. 708.02, XI (Inventions
For Countering Terrorism), the types of technology for countering
terrorism include, but are not limited to, systems for detecting/
identifying explosives, aircraft sensors/security systems, and
vehicular barricades/disabling systems. This is appropriate considering
that such inventions may help maintain homeland security. In view of
this proposed amendment, the basis for making applications relating to
counter-terrorism technology special would be transferred from Sec.
1.102(d) to Sec. 1.102(c).
Pursuant to the proposed amendment, Sec. 1.102(c) sets forth two
bases for making an application special: (1) Applicant's age or health;
or (2) that the invention is one of the three qualifying types of
inventions (i.e., the invention is one that will materially enhance the
quality of the environment, materially contribute to the development or
conservation of energy resources, or materially contribute to
countering terrorism). In view of the divergent subject matter covered
by Sec. 1.102(c)(1) and (c)(2), a petition under Sec. 1.102(c)(1) or
(c)(2) must identify the particular basis under which applicant is
petitioning for special status so that the Office can determine how to
evaluate an application's entitlement to special status. In addition,
MPEP Sec. 708.02 indicates that a "petition for special status should
be accompanied by a statement explaining how the invention contributes
to countering terrorism" as defined in MPEP Sec. 708.02, XI,
Inventions For Countering Terrorism. Applicants are reminded that any
identification of a basis for requesting special status and a statement of
compliance with the technology specific requirement for special status must
be based upon a good faith belief that the invention in fact qualifies for
special status. See Secs. 1.56 and 10.18.
Section 1.103: Section 1.103(a) is proposed to be amended to refer
to the petition fee set forth in Sec. 1.17(g) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.105: Section 1.105(a) is proposed to be amended to
redesignate paragraph (a)(3) as paragraph (a)(4) and add new paragraphs
(a)(1)(viii) and (a)(3). Sections 1.105(a)(1)(viii) and (a)(3) contain
additional examples of information requirements and set forth exemplary
formats to portray the use of Sec. 1.105 to seek stipulations, for
example, as to the knowledge of those of ordinary skill in the art, and
to require responses to interrogatories, for example, as to applicant's
understanding of the knowledge of persons of ordinary skill in the
relevant art.
This proposal sets forth a practice for soliciting applicant's
knowledge, such as stipulations to clarify the record by removing
uncontroverted assertions from further consideration, or for soliciting
the applicant's response to specific questions based on the applicant's
knowledge to resolve outstanding issues. The requirement for
information provisions of Sec. 1.105(a)(1) contain several examples,
not by any means exhaustive, of the types of information that may be
required from applicants under Sec. 1.105. The Office is proposing to
add the following examples to Sec. 1.105(a)(1): Technical information
known to applicant concerning the interpretation of the related art,
the disclosure, the claimed subject matter, other information pertinent
to patentability, or the accuracy of the examiner's stated
interpretation of such items. The format of such a requirement would
differ markedly from the format of the existing examples, which
generally require specific documents. New paragraph (a)(3) provides
examples of formats for requirements for information: (1) a requirement
for documents; (2) interrogatories in the form of specific questions
seeking applicant's knowledge; or (3) stipulations in the form of
statements with which the applicant may agree or disagree. The existing
provisions of paragraph (a)(3) would be included in paragraph (a)(4),
which would also recognize that information in the form of opinion
might not be held, and permit a reply to a requirement for opinion to
be considered complete where it is stated that an opinion is not held.
35 U.S.C. 101, 102, 103 and 112 require that claimed subject matter
be among those eligible for patentability, provide utility that is
substantial, credible and specific, be supported by a written
disclosure that teaches how to make and use the invention and be
definite in characterization, and be novel and non-obvious to a person
of ordinary skill in the art. Evidentiary issues surrounding these
patentability conditions frequently arise that require applicant reply
for resolution.
In particular, the knowledge and skill of a person of ordinary
skill in the art is highly pertinent to the resultant utility, to the
degree of disclosure required, and to the degree to which prior art
reads on claimed subject matter in view of inherent aspects and
standard practices and knowledge in the art. However, evidence of what
the indicia would be for that knowledge and skill may be highly
burdensome to collect, and may be particularly wasteful of examiner
resources for certain elementary issues, such as in common matters of
scientific and engineering practice.
The Office is considering the use of stipulations and
interrogatories relating to elements of the prior art, recognitions of
problems to be solved, and rationales for combinations.
Applicant and the examiner may agree on the knowledge exhibited by
persons of ordinary skill in the art, and this may be documented by
formal stipulation. Alternatively, the examiner may articulate specific
questions for applicant response in the form of an interrogatory
designed to elicit the aspects of the knowledge of persons of ordinary
skill in the art pertinent to analyzing patentability arising from the
art of record.
Additional instances where stipulations and interrogatories may be
used to elicit information reasonably necessary to examination include
eliciting: (1) Applicant's interpretation of the distinctions among
claims; (2) applicant's interpretation of the common technical features
shared among all claims, or admission that certain groups of claims do
not share any common technical features; (3) applicant's intention for
the scope of structural and procedural support found in the disclosure
for means or step plus function claims; (4) applicant's interpretation
for precisely which portions of the disclosure provide the written
description and enablement support for each claim element; (5)
applicant's interpretation for the intended breadth of claim terms,
particularly where those terms are not used per se in the
specification; (6) applicant's interpretation of which portions of each
claim correspond to the admitted prior art in the specification; (7)
applicant's interpretation of the specific utility provided by the
claimed subject matter; and (8) applicant's identification of new
subject matter in a continuation-in-part.
All requirements for information under Sec. 1.105 must be
reasonably necessary to treating a matter in an application. As such,
requirements for information must be specific in the articulation of
what is required and must exhibit a reasonable likelihood of being
readily fulfilled by the applicant. The Office's policy of compact
prosecution requires that both examiners and applicants provide the
information necessary to raise and resolve the issues related to
patentability expeditiously. Where information highly pertinent to
patentability determination may be required in a form that is readily
responded to, such as with solicitations of stipulations or
interrogatories directly related to the issues on the record, such a
requirement is consistent with the policies of compact prosecution and
reasonable necessity for making requirements.
Section 1.111: Section 1.111(a)(2) is proposed to be amended to
provide that a supplemental reply to a non-final Office action will not
be entered as a matter of right, with the exception that a supplemental
reply will be entered if it is filed within the period when action by
the Office is suspended under Sec. 1.103(a) through (c) (suspensions
requested by the applicant). The proposed amendment to Sec.
1.111(a)(2) would also provide that the Office may enter a supplemental
reply that is filed before the expiration of the statutory period
(i.e., within six months from the mailing date of the non-final Office
action) if the supplemental reply is clearly limited to: (1)
Cancellation of a claim(s); (2) adoption of an examiner suggestion(s);
or (3) placement of the application in condition for allowance. The
proposed amendment to Sec. 1.111(a)(2) would replace the current
procedures for disapproving a second or subsequent supplemental reply
set forth in Sec. 1.111(a)(2).
The proposed amendment to Sec. 1.111(a)(2) would encourage
applicants to utilize the Office's resources more efficiently, by
filing a complete first reply to a non-final Office action, thus
assisting the Office in reducing pendency. Supplemental replies cause
significant material delays in the examination and processing of
applications, and place a significant burden on the Office's resources.
An examiner's workload is increased by a supplemental reply received
after the examiner has already conducted an updated prior art search
and drafted the next Office action in response to the first reply.
Beyond the additional time to read and consider the supplemental reply,
the examiner may need to redraft the next Office action and frequently
may need to conduct a further search. Pendency of the application is
also increased when a first complete reply is filed to toll the period
for reply and then a supplemental reply is filed beyond the statutory
period set forth in the non-final Office action. Applicants are
therefore strongly encouraged to file a reply to an Office action that
represents a thorough consideration of all pending claims, the art of
record, and the preceding Office action, and as well represents the
full communication between applicants, any assignees and any legal
representative mailing the reply. This would greatly reduce the need to
file a supplemental reply. A single reply, absent supplements, would
save examiners' time on rework. Cross-mailings between a new Office
action and any supplemental reply would be significantly reduced.
Applicant's patent term adjustment reductions (under Sec. 1.704(c)(8))
would also be minimized, and the Office would save processing time and
resources on patent term adjustment calculations. The changes to Sec.
1.111(a)(2) would affect a very small percentage of applicants because
only about 5.6% of all applications have one or more supplemental
amendments. These supplemental amendments do, however, represent a
significant burden on the Office from a small group of applicants. The
burden would be effectively reduced by the instant proposed change.
After filing a reply to a non-final Office action, applicants would
not be able in a supplemental reply, as a matter of right, to: (1)
Further amend any claims; (2) add new claims; (3) reinstate previously
canceled claims; (4) present evidence; or (5) submit arguments. The
Office may enter any supplemental reply that is filed before the
expiration of the statutory period (i.e., within six months from the
mailing date of the non-final Office action) if the supplemental reply
is limited to: (1) Cancellation of a claim(s); (2) adoption of an
examiner suggestion(s); or (3) placement of the application in
condition for allowance. Any supplemental reply filed after the
expiration of the statutory period would not be entered even if the
supplemental reply meets one of the conditions since such reply would
not be evaluated for entry. IDSs, or supplemental IDSs are not
considered replies except when they are submitted pursuant to a
requirement under Sec. 1.105. IDSs filed with a non-compliant
supplemental reply would be considered separately according to the
requirements of Secs. 1.97 and 1.98.
The proposed amendment to Sec. 1.111(a)(2) would replace the
procedures currently set forth in Sec. 1.111(a)(2). The current
disapproval procedures were meant to provide the Office with latitude
to refuse entry of supplemental replies that unduly interfere with the
preparation of an Office action. See Changes to Implement the Patent
Business Goals, 65 FR 54604 (Sept. 8, 2000), 1238 Off. Gaz. Pat. Office
77 (Sept. 19, 2000). The disapproval procedures, however, did not
address the pendency problems associated with first supplemental
replies. The Office receives a significantly larger number of first
supplemental replies than second (or subsequent) supplemental replies.
Furthermore, the procedures for disapproving a second (or subsequent)
supplemental reply are too time consuming for examiners and Office
technical support staff. The proposed amendment to Sec. 1.111(a)(2)
would provide a single simplified procedure for handling all
supplemental replies, which would reduce processing delays and save
Office resources.
If a supplemental reply is denied entry, such reply would be
assigned a paper number and placed in the application file, with no
further action taken. To have any of the arguments or amendments
contained in an unentered supplemental reply considered by the
examiner, applicants may request the entry of the supplemental reply,
or resubmit the contents of supplemental reply, in a proper reply to
the next Office action, if the next Office action is a non-final
action. If the next Office action is a final rejection or a notice of
allowance, applicants may file a request for continued examination
(RCE) in compliance with Sec. 1.114 (i.e., a request accompanied by a
submission and a fee) and request the entry of the supplemental reply,
or resubmit the contents of such reply, in the RCE submission, to have
such reply considered by the examiner. If an RCE is filed after a final
Office action, to have a previously filed supplemental reply
considered, the RCE must be accompanied by a reply to the outstanding
Office action. See Sec. 1.114(c).
If an applicant cannot file a first reply to a non-final Office
action that is to his or her satisfaction (e.g., an affidavit is being
prepared under Sec. 1.131), applicant may consider filing a continuing
application, such as a continuation application under Sec. 1.53(b) (as
an RCE would not be permitted because the Office action is non-final,
see Sec. 1.114(b)).
A supplemental reply would be entered if it is filed within the
period during which action by the Office is suspended under Sec.
1.103(a) through (c). If a supplemental reply is filed during a
suspension of action that was granted by the Office for a petition,
with a showing of good and sufficient cause for suspension, the
supplemental reply would be entered. For example, if test data is
required to overcome a rejection under 35 U.S.C. 103(a) and the
applicant needs more time to conduct an experiment and collect the test
data, the applicant may file a first reply to the Office action (as the
Office will not grant a suspension of action if there is an outstanding
Office action awaiting a reply by the applicant) and a petition for
suspension of action with a showing of good cause under Sec. 1.103(a).
If the suspension is granted by the Office, applicant may submit the
test data in a supplemental reply during the suspension period. In
addition, if an applicant is filing an RCE after a final rejection
accompanied by a reply to the final Office action and needs more time
to prepare a supplemental reply (e.g., an affidavit), applicant may
consider filing a request for suspension of action under Sec. 1.103(c)
with the RCE. The proposed Sec. 1.111(a)(2)(ii) would permit the
affidavit (which is supplemental to the reply to the final Office
action) to be entered. A supplemental reply, however, would not be
entered if it is filed during a suspension of action initiated by the
Office under Sec. 1.103(e).
The proposed amendment to Sec. 1.111(a)(2) would not change the
impact of the submission of a supplemental reply on patent term
adjustment, in that the submission of any supplemental reply will cause
a reduction of any accumulated patent term adjustment under Sec.
1.704(c)(8).
Section 1.115: Section 1.115 is proposed to be amended by adding a
new paragraph (b) to treat all preliminary amendments filed on or prior
to (where a filing date being accorded application papers is later than
the original receipt date of the application papers) the application
filing date as being part of the original disclosure. Current
paragraphs (b) and (c) of Sec. 1.115 would be redesignated (c) and
(d), respectively. If a preliminary amendment is determined to contain
matter not otherwise included in the
contents of the originally filed specification, including claims, and
drawings, and the preliminary amendment is not specifically referred to
in the oath or declaration under Sec. 1.63, a new oath or declaration
in compliance with Sec. 1.63 and referencing such preliminary
amendment(s) will be required. Further, the Office proposes to amend
current section 1.115(b)(1), as proposed new paragraph (c)(1)(i), to
allow the Office to disapprove entry of any amendment, whether
submitted prior to, on or after the filing date of an application,
which seeks cancellation of all claims without presenting any new or
substitute claims, except that the Office would treat a preliminary
amendment canceling all of the claims and presenting no new or
substitute claims procedurally as preserving a claim (the first
independent claim) for filing and fee calculation purposes only.
Preliminary Amendment Submitted on or Prior to the Filing Date as
Part of the Original Disclosure: It has long been the practice that a
preliminary amendment filed on or prior to the filing date of an
application may be considered a part of the original disclosure if it
is referred to in a first filed oath or declaration in compliance with
Sec. 1.63. The first filed oath or declaration may have been filed
prior to, on or after the application filing date. If the preliminary
amendment is not referred to in the oath or declaration, any request to
treat the preliminary amendment as a part of the original disclosure is
by way of petition under Sec. 1.182 requesting that the original oath
or declaration be disregarded and that the application be treated as an
application filed without an executed oath or declaration under Sec.
1.53(f). Any such petition must be accompanied by the $130.00 petition
fee, a newly executed oath or declaration (which identifies the
application and refers to the preliminary amendment), and the requisite
surcharge under Sec. 1.16(e).
All application papers, including preliminary amendments, located
in the application file on the application filing date are currently
scanned by the Office of Initial Patent Examination (OIPE) into an
electronic image format. Therefore, the treatment of a preliminary
amendment as being part of the original disclosure by the newly
proposed practice of automatically treating all preliminary amendments
filed on or prior to the filing date of an application as being part of
the original disclosure would add no additional scanning work to OIPE.
The proposed practice, however, would provide a consistent way of
treating preliminary amendments and eliminate the need for filing a
petition. As a result, valuable processing time would be saved. No
change in practice is contemplated regarding inclusion of preliminary
amendments in a published application, as only preliminary amendments
submitted by EFS (electronic system for submitting patent applications)
will be included in a published application. See Sec. 1.215(c).
A preliminary amendment seeking cancellation of all claims, but not
presenting any new or substitute claims, would be part of the original
disclosure, but would be entered only in part in conformance with the
practice set forth below.
All preliminary amendments filed on or prior to the filing date of
an application are proposed to be treated as part of the original
disclosure. These preliminary amendments would be entered into the
application. Thereafter, the application, including the preliminary
amendments, would be forwarded to an examiner for examination in due
course. During examination, the examiner would make a determination as
to whether the preliminary amendments contain matter not in the
originally filed specification, including claims and any drawings. If
the examiner determines that the preliminary amendments filed on or
prior to the filing date of an application contains only subject matter
disclosed in the contents of the originally filed specification,
including claims and any drawings, no reference to the preliminary
amendments in the oath or declaration would be necessary and, thus,
would not be required. If, however, it is determined by the examiner
that the amendments filed on or prior to the filing date of an
application do contain matter not in the originally filed
specification, including claims and any drawings, and the preliminary
amendments are not referred to in a first filed oath or declaration (or
a later submitted one), then a new oath or declaration in compliance
with Sec. 1.63 and referencing such preliminary amendment(s) would be
necessary and, thus, would be required by the examiner. The oath or
declaration filed in such an application must identify the preliminary
amendment adding matter not in the originally filed specification,
including claims and any drawings as one of the papers which the
inventor(s) has "reviewed and understands" in order to comply with
Sec. 1.63(b)(2) (the surcharge under Sec. 1.16(e) would not be
required).
Preliminary amendments filed after the filing date of an
application are not considered as part of the original disclosure and
are not subject to a determination of whether the preliminary
amendments must be referred to in an oath or declaration (if they
contain subject matter not disclosed in the contents of the originally
filed specification, including claims and any drawings) but will be
reviewed by the examiner for new matter. Preliminary amendments filed
prior to or on the filing date of the application by definition cannot
contain new matter whether or not they are referred to in a first filed
oath or declaration because they would be considered part of the
application as originally filed.
The appropriate provisions of the MPEP will be modified
accordingly, if the proposed amendment to Sec. 1.115 is adopted.
It is recognized that the requirement for a new oath or declaration
when the originally filed application papers include preliminary
amendments which have been determined by an examiner to contain matter
not in the originally filed specification, including claims and any
drawings and are not referred to in the originally filed oath or
declaration (or a later submitted one) may present a hardship in
acquiring the requisite signatures of all the inventors. The treatment,
however, of such a preliminary amendment as being part of the original
disclosure and the elimination of the current petition practice are
believed to outweigh such hardship.
A good practice to follow, when at all possible, is to refer to all
preliminary amendments filed on or prior to the filing date of an
application, in an oath or declaration filed under Sec. 1.63 whenever
the oath or declaration is first filed. Following this practice will
avoid the necessity for filing a new oath or declaration referencing
the preliminary amendments.
It should be noted that no oath or declaration filed under Sec.
1.63 would be determined to be defective under this section if it makes
reference to a preliminary amendment filed on or prior to the filing
date of an application, which is determined by the Office to contain
only subject matter disclosed in the contents of the originally filed
specification, including claims and any drawings.
Preliminary Amendment Filed Prior to the Filing Date of an Application
Example A: An example of a preliminary amendment filed prior to the
filing date of an application is a preliminary amendment filed with the
original application papers, wherein the original application papers
did not include a specification in compliance
with 35 U.S.C. 112. Accordingly, the application papers, as filed, were
not entitled to a filing date under 35 U.S.C. 111(a)(2)(A). Thereafter,
a specification in compliance with 35 U.S.C. 112 was filed in the
application, and the application was entitled to a filing date as of
the date of submission of the specification in compliance with 35
U.S.C. 112.
Preliminary Amendment Not Desired To Be Part of the Original Disclosure
Example B1: If a preliminary amendment is not desired to be a part
of the original disclosure, then such preliminary amendment must be
filed in the application on a date later than the application filing
date. Such a situation could occur if a practitioner drafts a
preliminary amendment, which he believes contains only subject matter
disclosed in the contents of the originally filed specification,
including claims and any drawings, after a declaration was signed by
all the inventors executing the application papers without the
preliminary amendment being before them and it would be very difficult
to obtain a new oath or declaration in compliance with Sec. 1.63
executed by all the inventors referring to the preliminary amendment.
Example B2: Where it is determined by an examiner that a
preliminary amendment filed on or prior to the filing date of an
application (including an executed declaration) contains additional
subject matter not disclosed in the contents of the originally filed
specification, including claims and any drawings, a practitioner may
determine that the preliminary amendment does not need to be a part of
the original disclosure (e.g., to support the particular invention
being claimed) and therefore it would be easier to cancel the
preliminary amendment rather than obtain a new oath or declaration in
compliance with Sec. 1.63 executed by all the inventors referring to
the preliminary amendment.
Preliminary Amendment Adding a Benefit Claim to a Prior Application
Example C1: An application was filed under Sec. 1.53(b) as a
continuation application of a prior filed (parent) application
including a specification (including claims) and drawings updated with
all desired amendments (without adding any new matter (Sec.
1.63(d)(1)(iii))) from a prior filed (parent) application, a copy of a
signed declaration used in the prior application (Sec.
1.63(d)(1)(iv)), and a preliminary amendment adding a benefit claim.
The preliminary amendment adds only a specific reference to the prior
filed (e.g., parent) application to the first line of the
specification. As the preliminary amendment was submitted on filing, it
is part of the original disclosure. Question: Does the oath or
declaration need to refer to this preliminary amendment? Answer: No. As
the application submitted on filing is an updated version of the
specification of the prior application (without adding new matter)
including the benefit claim, the oath or declaration does not need to
include a reference to the preliminary amendment. Thus, the preliminary
amendment is not adding additional subject matter not disclosed in the
contents of the originally filed specification of the continuation
application, including claims and drawings.
Example C2: In addition to the facts set forth in Example C(1), the
specification submitted on filing inadvertently omitted a copy of page
5 of the specification, however, the transmittal letter (PTO/SB/05)
submitted on filing stated the following:
For CONTINUATION OR DIVISIONAL APPS only: The entire disclosure of
the prior application, from which an oath or declaration is supplied
under Box 5b, is considered a part of the disclosure of the
accompanying continuation or divisional application and is hereby
incorporated by reference. The incorporation can only be relied upon
when a portion has been inadvertently omitted from the submitted
application parts.
Thereafter, the omitted page 5 from the prior application, that was
intended to be submitted with the new application on filing but was
not, is then submitted. Question: Is a new oath or declaration
required? Answer: No. While the continuation application did not
include all the subject matter of the prior application which was
intended to be submitted on filing, the application did include a
limited incorporation by reference. See MPEP Sec. 201.06(c). As the
material of page 5 of the prior application was inadvertently omitted
on filing, the incorporation by reference would permit the entry of the
subject matter of page 5 of the prior application into the continuation
application. See also proposed Sec. 1.57(a).
Preliminary Amendment Adding New Matter to a Continuation Application
Example D: An application was filed under Sec. 1.53(b) as a
continuation application of a prior filed (parent) application
including an updated specification (including claims) and drawings from
a prior filed (parent) application, a copy of the signed declaration
from the prior application, and a preliminary amendment. The
preliminary amendment included a benefit claim and also a new matter
amendment of the specification, which new matter was not disclosed in
the contents of the originally filed specification, including claims
and drawings. As the preliminary amendment was submitted on filing, it
is part of the original disclosure. Question: Does the oath or
declaration need to refer to this preliminary amendment? Answer: Yes.
As the application includes new matter, the application cannot be a
continuation application. The application is a continuation-in-part
application. An examiner would equire that the application be
redesignated as a continuation-in-part application, and require a new
oath or declaration in compliance with Sec. 1.63 and referencing the
preliminary amendment(s).
The Office is particularly interested in comments from our
customers regarding whether the benefits of the proposed change in
Office policy (elimination of the current petition practice and
treatment of preliminary amendments filed on or prior to the filing
date of an application as part of the original disclosure) outweighs
the attendant hardship (reexecution of the oath or declaration).
This change to Sec. 1.115 would not be retroactive to any
applications filed before the effective date of the rule change. The
proposed change would be prospective only since to apply the change
retroactively would result in changing the expectations regarding
treatment of preliminary amendments filed on or prior to the filing
date of an application by the Office.
Preliminary Amendment Cancelling All Claims: Current paragraph (b)
of Sec. 1.115 is proposed to be redesignated as paragraph (c) based on
the above new proposed paragraph (b) and would be reformatted to
accommodate the addition of new paragraph (c)(1)(i) as is being
proposed to treat a preliminary amendment seeking to cancel all claims.
Before June of 1998, it was the practice of the Office to treat an
application filed with an amendment (preliminary amendment) canceling
all of the claims and presenting no new or substitute claims by denying
entry of the amendment. See MPEP Secs. 711.01 and 714.19. In
Baxter Int'l Inc. v. McGaw Inc., 149 F.3d 1321, 47 USPQ2d 1225 (Fed.
Cir. 1998), the Federal Circuit held that a divisional application that
included instructions to cancel all of the claims in the specification,
without presenting any new claims, and did not contain at least one
claim as required by 35 U.S.C. 112, para. 2, was not entitled to a filing
date under 35 U.S.C. 111(a) until the
date an amendment including at least one claim was filed in the
application. Following Baxter, the Office changed its practice and no
longer accorded a filing date to any application that was accompanied
by a preliminary amendment which canceled all claims and failed to
simultaneously submit any new claims. See Any Application Filed With
Instructions to Cancel All of the Claims in the Application is Not
Entitled to a Filing Date, 1216 Off. Gaz. Pat. Office 46 (Nov. 10,
1998).
Subsequently, in Exxon Corp. v. Phillips Petroleum Co., 265 F.3d
1249, 60 USPQ2d 1368 (Fed. Cir. 2001), the Federal Circuit affirmed
that the Office may refuse to enter an improper amendment that would
cancel all of the claims in an application to avert harm (loss of a
filing date) to an applicant. The Federal Circuit distinguished its
decision in Baxter since in Baxter the Office did enter the amendment
that canceled all of the claims in the application, thus resulting in
the application not being entitled to a filing date. In contrast, in
Exxon the Office refused to enter the amendment cancelling all the
claims. The Office did, however, cancel all the dependent claims and
preserve one claim for filing purposes only. Thus, all the claims were
never canceled.
Consistent with Exxon Corp. v. Phillips Petroleum Co. and MPEP
Secs. 711.01 and 714.19, paragraph (H), (8th ed. 2001), the Office
would disapprove entry of any amendment (whether submitted prior to, on
or after the filing date of the application) that seeks cancellation of
all claims but does not present any new or substitute claims. For
filing purposes, that is, fee calculation purposes, the Office would
treat such an application as containing a single claim, which would be
the first independent claim, claim 1, wherein such claim would be the
only claim that would be considered part of the original disclosure.
See Example A above for an illustration of a preliminary amendment
filed prior to the filing date of an application.
The proposed amendment to Sec. 1.115(c)(1) would be a codification
of the Office's current practice as set forth in MPEP Secs. 711.01
and 714.19, paragraph (H). In addition, the provision in MPEP Sec.
601.01(e) concerning the treatment of a nonprovisional application
accompanied by a preliminary amendment which cancels all claims and
fails to simultaneously submit any new claim(s) would be revised to be
in conformance with current practice. See Treatment of Amendments that
if Entered Would Cancel All of the Claims in an Application, 1255 Off.
Gaz. Pat. Office 827 (Feb. 5, 2002).
This change to Sec. 1.115 (if adopted) would apply to any
applications filed before the effective date of the rule change, as it
is a codification of current Office practice.
Section 1.116: Section 1.116(b) is proposed to be revised to make
it clear that the reexamination proceeding is not terminated under
Secs. 1.550(d) or 1.957(b), but rather the prosecution of the
reexamination is concluded under Secs. 1.550(d) or 1.957(b). See
the discussion below as to the amendment of Sec. 1.550 for the
rationale for this change. See also Secs. 1.502, 1.570, 1.902,
1.953, 1.957, 1.958, 1.979, and 1.997.
It is further proposed that Sec. 1.116(b) be revised to more
appropriately set forth the Sec. 1.957(c) consequences of a failure to
respond in an inter partes reexamination. The inter partes
reexamination prosecution is neither terminated nor concluded where the
patent owner fails to timely respond to an Office action, and claims in
the proceeding remain patentable. Rather, an Office action is issued to
thereby permit the third party requester to challenge the claims found
patentable.
Section 1.131: Section 1.131(b) is proposed to be amended for
correction of a typographical error that was inadvertently introduced
in the final rule Miscellaneous Amendments of Patent Rules, 53 FR 23728
(June 23, 1988) (final rule). The typographical error to be corrected
is contained in the text at the end of the second (and last) sentence
of Sec. 1.131(b), which pertains to exhibits or records needed to
substantiate an oath or declaration of prior invention swearing behind
a reference applied in a rejection of a claim. Specifically, the text
"of their absence satisfactorily explained" should read "or their
absence satisfactorily explained" (emphasis added). Thus, Sec.
1.131(b) would be amended to clarify that for any oath or declaration
under Sec. 1.131 lacking original exhibits of drawings or records in
support thereof, the absence of such original exhibits of drawings or
records must be satisfactorily explained.
Section 1.136: Section 1.136(b) is proposed to be amended to add a
petition fee requirement. Paragraph 1.136(a)(2), for example,
specifically refers to Sec. 1.136(b) for extensions of time to file
replies under Secs. 1.193(b), 1.194, 1.196 or 1.197 after a notice
of appeal is filed. For such replies on appeal Sec. 1.136(a) is not
available for extending the time period for reply, and applicants may
be able to make the Sec. 1.136(b) "sufficient cause" showing. To
evaluate whether a showing of "sufficient cause" exists, decisions on
Sec. 1.136(b) requests require a thorough evaluation of facts and
circumstances on a case-by-case basis. Furthermore, requests under
Sec. 1.136(b) are generally treated expeditiously by the deciding
official. At MPEP Sec. 710.02(e), it is recommended that requests
under Sec. 1.136(b) be filed in duplicate with a stamped return-
address envelope to assist the Office in processing these requests with
special dispatch. To reflect the Office's cost of deciding requests
under Sec. 1.136(b), it is proposed that a requirement for a petition
fee be added to Sec. 1.136(b). Evaluation of a request for an
extension of time under Sec. 1.136(b) for sufficient cause is
analogous to evaluation of a request for the Office to suspend action
for sufficient cause pursuant to Sec. 1.103(a). See discussion of
Sec. 1.17.
Section 1.137: Sections 1.137(a), (b) and (e) are proposed to be
amended to clarify that the reexamination proceedings under Sec.
1.957(c) referred to in Secs. 1.137(b) and (c) are "limited as to
further prosecution." Section 1.137(d) is also proposed to be amended
to clarify that when reviving a reissue application pursuant to Sec.
1.137 a terminal disclaimer is not required.
Sections 1.137(a), (b) and (e) are proposed to be amended to more
appropriately set forth the consequences of a failure to respond when
governed by Sec. 1.957(c). An inter partes reexamination prosecution
is neither terminated nor concluded where the patent owner fails to
timely respond to an Office action and claims in the proceeding remain
patentable. An Office action is issued instead to thereby permit the
third party requester to challenge the claims found patentable. As set
forth in Sec. 1.957(c), "[i]f claims are found patentable and the
patent owner fails to file a timely and appropriate response to any
Office action in an inter partes reexamination proceeding, further
prosecution will be limited to the claims found patentable at the time
of the failure to respond, and to any claims added thereafter which do
not expand the scope of the claims which were found patentable at that
time." The proposed revision refers accordingly to "revival" of an
inter partes reexamination prosecution which has been "limited" under
Sec. 1.957(c).
Section 1.137(d)(3) is proposed to be amended to clarify that the
terminal disclaimer requirements of paragraph (d)(1) do not apply to
reissue applications.
Pursuant to 35 U.S.C. 251, a patent is reissued "for the unexpired
part of the term of the original patent." Hence, any
period of abandonment of a reissue application, should the reissue
application become revived and serve to reissue the patent, will result
in a loss of patent term for the period that the reissue application
was abandoned. Accordingly, there is no need to impose an additional
penalty on patentee to terminally disclaim the entire period of
abandonment of a reissue application. This rationale accords with the
exclusion of the terminal disclaimer requirement when petitioning for
revival of nonprovisional applications filed on or after June 8, 1995,
pursuant to Sec. 1.137(d)(1).
Current Office practice does not require a terminal disclaimer as a
condition precedent for revival of an abandoned reissue application, no
matter when the application was filed, where revival is otherwise
appropriate.
In order to codify current practice, Sec. 1.137(d)(3) is proposed
to be amended by inserting "to reissue applications" to provide a
blanket exception for reissue applications. Regardless of when the
reissue application was filed, applicant is not required to file an
accompanying terminal disclaimer with a petition to revive under Sec.
1.137.
Section 1.165: Section 1.165(b) is proposed to be amended to remove
the requirement for a black and white copy of a color drawing or
photograph. This requirement has already been waived. See Interim
Waiver of Parts of 37 CFR 1.84 and 1.165, and Delay in the Enforcement
of the Change in 37 CFR 1.84(e) to No Longer Permit Mounting of
Photographs, 1246 Off. Gaz. Pat. Office 106 (May 22, 2001).
Section 1.173: Section 1.173(b) is amended to clarify that
paragraphs (b)(1), (b)(2) and (b)(3) are directly related to, and
should be read with, paragraph (b).
Section 1.175: Section 1.175 is proposed to be amended by adding a
new paragraph (e) requiring a new oath or declaration for continuing
reissue applications, which must identify an error not corrected in an
earlier reissue application.
Section 1.175 is currently interpreted to require any continuing
reissue application whose parent application has not been abandoned to
include an oath or declaration identifying at least one error being
corrected, which error is different from the error(s) being corrected
in the parent reissue (or an earlier reissue). Ordinarily, a single
reissue application is filed to replace a single original patent and
corrects all of the errors recognized by the applicant at the time of
filing of the (single) reissue. If, during the prosecution of the
reissue application, applicant (patentee) recognizes additional errors
needing correcting, such corrections could, and should, be made in the
same application. If, however, after the close of prosecution and up
until the time that the first reissue issues, applicant recognizes a
further error which needs correction and files a continuing reissue
application, Sec. 1.175(e) would now explicitly require applicant to
include an oath or declaration which identifies an error which was not
corrected in the parent reissue application or in an earlier reissue
application, e.g., a grandparent reissue application.
Section 1.178: Section 1.178 is proposed to be amended to eliminate
the requirement for physical surrender of the original letters patent
(i.e., the "ribbon copy" of the original patent) in a reissue
application, and to make surrender of the original patent automatic
upon the grant of the reissue patent. The reissue statute provides in
part that:
Whenever any patent is, through error without any deceptive
intention, deemed wholly or partly inoperative or invalid, by reason
of a defective specification or drawing, or by reason of the
patentee claiming more or less then he had a right to claim in the
patent, the Director shall, on the surrender of such patent and the
payment of the fee required by law, reissue the patent for the
invention disclosed in the original patent, and in accordance with a
new and amended application, for the unexpired part of the term of
the original patent.
See 35 U.S.C. 251, para. 1 (emphasis added).
While the statutory language requires a "surrender" of the
original patent, it does not require a physical surrender of the actual
letters patent, nor even a statement that the patent owner surrenders
the patent. Physical surrender by submission of the letters patent
(i.e., the copy of the original patent grant) is currently required by
rule via Sec. 1.178; however, such submission is only symbolic, since
the patent right exists independently of physical possession of the
letters patent.
It is the right to the original patent that must be surrendered
upon grant of the reissue patent, rather than any physical document.
Thus, where the letters patent is not submitted during the prosecution
of the reissue application because it is stated in the reissue that the
letters patent copy of the patent is lost or inaccessible, there is no
evidence that any stigma is attached to the reissue patent by the
public. Further, there is no case law treating such a reissue patent
adversely due to the failure to submit the letters patent. In fact,
there is no legal reason to retain the requirement for physical
surrender of the letters patent. On the other hand, there is much
benefit for eliminating the requirement for physical surrender of the
letters patent.
It would be beneficial to both the Office and the public to
recognize and provide that the surrender of the original patent is
automatic upon the grant of the reissue patent to thereby eliminate the
requirement for a physical submission of the letters patent, and to
eliminate even the need for filing a paper offering to physically
surrender the letters patent (Sec. 1.178(a)).
The current requirement for submission of the patent document
requires the patent owner (seeking reissue) to try to obtain the
letters patent copy of the patent. If the document was lost or
misplaced, the patent owner must search for it. If it is in the hands
of a former employee, the patentee must make an effort to secure it
from that employee (who might not be on friendly terms with the
patentee). If the letters patent can be obtained, it must then be
physically submitted without losing or destroying it. If the letters
patent cannot be obtained, the patent owner must make a statement of
loss (Form PTO/SB/55) or explain that it cannot be obtained from the
party having physical possession of it. The proposed revision of Sec.
1.178 would eliminate these burdens, and the requirement for use of
form PTO/SB/55 or its equivalent.
At present, the requirement for submission of the letters patent
copy of the patent provides an unnecessary drain on Office processing
and storage resources in dealing with the submitted letters patent
document. Further, in the event the reissue is not granted, the Office
must return the letters patent to the applicant where such is
requested. The proposed revision would do away with the burden on the
Office of processing, storing, and returning letters patent.
The current requirement for submission of the original patent (the
letters patent), or a statement as to its loss, results in a "built
in" delay in the prosecution while the Office awaits submission of the
letters patent or the statement of loss, which is often submitted only
after an indication of allowance of claims. The proposed revision would
reduce reissue application pendency, since the Office would no longer
need to delay prosecution while waiting for the letters patent or the
statement of loss.
As a final point, the complete elimination of the requirement for
an affirmative act (of surrender) by the patent owner would put reissue
in step with other post patent proceedings for change of patent which
have no requirement for even a statement of surrender (e.g.,
reexamination certificate, certificate of correction).
Section 1.179: Section 1.179 would be removed and reserved as no
longer being necessary. The information provided by this rule, i.e.,
notification to the public in the patent file that a reissue
application has been filed for a particular patent, is now available
through other means, such as public PAIR on the Office's Internet home
page. This source of information can be entered through the Office's
Internet Web site at http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi
?from=leavingFR.html&log=linklog&to=http://pair.uspto.gov/cgi-bin/final/
home.pl wherein the user can enter the original patent number, click on
"Search," and then click on "Continuity Data." Any post-issuance
filings (e.g., reissues, reexamination proceedings) will be identified
by scrolling to "Child Continuity Data." To identify an application
under "Child Continuity Data" as a reissue, the user simply clicks on
the desired application number and searches through the file contents
screen for "Notice of Reissue Published in Official Gazette." The
Patent Assistance Center (PAC) Helpdesk (telephone number: 800-786-
9199) can also provide information to the public on reissue filings.
Removal of the provision that the Office place a separate paper in the
patent file stating that a reissue has been filed would therefore
eliminate several processing steps within the Office and contribute to
overall efficiency. Similarly, public PAIR will indicate termination of
the reissue examination, and placing a second separate paper notice to
that effect in the patent file would be unnecessary.
The Office, through recent rule changes, has removed other language
directed solely to internal instructions or directions to itself, and
which do not directly impact patent applicants or the public. See,
e.g., Changes to Implement the Patent Business Goals, 65 FR 54603,
54644, 54676 (Sept. 8, 2000), 1238 Off. Gaz. Pat. Office 77 (Sept. 19,
2000) (revised Sec. 1.176 to eliminate instructions providing for a
two-month delay of examination following the notice of reissue filing
in the Official Gazette). Additionally, Office personnel can internally
through the PALM database access information regarding reissue filings
and do not rely on the presence or absence of the notice in the patent
file as determinative of reissue status.
Section 1.182: Section 1.182 is proposed to be amended to refer to
the petition fee set forth in Sec. 1.17(f) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.183: Section 1.183 is proposed to be amended to refer to
the petition fee set forth in Sec. 1.17(f) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.213: Section 1.213(a) is proposed to be amended to add a
provision that the certification under Sec. 1.213(a)(3) is not
appropriate unless the person signing the request has made an actual
inquiry consistent with the requirements of Sec. 10.18(b) of this
chapter with respect to the application to which the request and
certification pertains to determine that: (1) The application has not
been the subject of an application filed in another country, or under a
multilateral international agreement, that requires publication of
applications at eighteen months after filing; and (2) the applicant's
intent at the time the nonpublication request is being filed is that
the application will not be the subject of an application filed in
another country, or under a multilateral international agreement, that
requires publication of applications at eighteen months after filing.
The Office has received inquiries which make it apparent that a number
of practitioners consider a certification under 35 U.S.C.
122(b)(2)(B)(i) and Sec. 1.213(a) appropriate so long as the applicant
has not filed, and has not yet made a decision whether to file, a
counterpart application in a foreign country, or under a multilateral
international agreement, that requires publication of applications at
eighteen months after filing ("a counterpart application subject to
eighteen-month publication"). Thus, Sec. 1.213(a) is proposed to be
amended to more clearly place persons signing nonpublication requests
under Sec. 1.213(a) on notice as to what a certification under 35
U.S.C. 122(b)(2)(B)(i) and Sec. 1.213(a) entails.
A nonpublication request must contain a certification that "the
invention disclosed in the application has not and will not be the
subject of an application filed in another country, or under a
multilateral international agreement, that requires publication of
applications 18 months after filing" (emphasis added). See 35 U.S.C.
122(b)(2)(B)(i). A certification under 35 U.S.C. 122(b)(2)(B)(i) and
Sec. 1.213(a) is not appropriate unless the applicant's intent at the
time the nonpublication request is being filed is not to file a
counterpart application that would be subject to eighteen-month
publication for the particular application with which the
nonpublication request is filed. That is, the applicant must have an
affirmative intent not to file a counterpart application that would be
subject to eighteen-month publication, and not just the absence of any
intent or plan concerning the filing of any counterpart application
that would be subject to eighteen-month publication. In addition, a
certification on the basis of a lack of knowledge of the applicant's
plans concerning the filing of any counterpart application that would
be subject to eighteen-month publication or the applicant's past
practices or tendencies with respect to the filing of foreign
counterpart applications would not meet the requirement that the person
signing the request make an "actual inquiry" "with respect to the
application to which the request and certification pertains."
Obviously, that a particular applicant has a tendency to file
counterpart applications for fewer than fifty percent of its U.S.
applications is not alone an adequate basis for filing all or any of
the U.S. applications with a nonpublication request under Sec.
1.213(a).
Section 1.213(b) (and Sec. 1.213(c)) is proposed to be amended to
incorporate into the rules of practice the Office's interpretation of
the interplay between the provision in 35 U.S.C. 122(b)(2)(B)(ii) for
rescission of a previously filed nonpublication request and the notice
requirement of 35 U.S.C. 122(b)(2)(B)(iii). The Office published a
notice advising practitioners that the requirement in 35 U.S.C.
122(b)(2)(B)(iii) (and Sec. 1.213(c)) for a notice of the foreign
filing is in addition to any rescission of the nonpublication request
under 35 U.S.C. 122(b)(2)(B)(ii) (and Sec. 1.213(b)). See Reminder
that Rescission of a Nonpublication Request is Not Itself a Notice of
Foreign Filing, 1270 Off. Gaz. Pat. Office 20 (May 6, 2003). The
inquiries in response to that notice revealed that many practitioners
were unaware of this information. These inquiries also revealed that
many practitioners who filed a counterpart application subject to
eighteen-month publication after filing a nonpublication request in a
U.S. application rescinded the nonpublication request by filing a
nonpublication request rescission form that did not also contain a
foreign filing notice (in many situations because the foreign filing
notice included on the Office pre-printed form was removed). In view of
these inquiries, the Office published a notice further clarifying the
Office's interpretation of the provisions of 35 U.S.C.
122(b)(2)(B)(ii)-(iv). See Clarification of the United States Patent
and Trademark Office's Interpretation of the Provisions of 35 U.S.C.
122(b)(2)(B)(ii)-(iv), 1272 Off. Gaz. Pat. Office 22 (July 1, 2003).
Section 1.213(b) is specifically proposed to be amended to indicate
that the mere filing of a request under Sec. 1.213(b) to rescind a
previously filed nonpublication request does not comply with the notice
requirement of 35 U.S.C. 122(b)(2)(B)(iii) and Sec. 1.213(c) (for
applicants who submitted a nonpublication request under Sec. 1.213(a),
but before filing the request under Sec. 1.213(b) to rescind the
previously filed nonpublication request, also filed an application
directed to the invention disclosed in the application in which the
nonpublication request was submitted in another country, or under a
multilateral international agreement, that requires publication of
applications eighteen months after filing). See Clarification of the
United States Patent and Trademark Office's Interpretation of the
Provisions of 35 U.S.C. 122(b)(2)(B)(ii)-(iv), 1272 Off. Gaz. Pat. Office
at 23. Section 1.213(b) is also proposed to be amended to indicate that
the provisions of Sec. 1.8 do not apply in determining whether such an
application has been filed before filing a request under Sec. 1.213(b) to
rescind a previously filed nonpublication request. See Clarification of
the United States Patent and Trademark Office's Interpretation of the
Provisions of 35 U.S.C. Sec. 122(b)(2)(B)(ii)-(iv), 1272 Off. Gaz.
Pat. Office at 23-24.
Section 1.213(b) is also proposed to be amended to provide that a
request under Sec. 1.213(b) to rescind a nonpublication request is not
appropriate unless the person signing the request has made an inquiry
consistent with the requirements of Sec. 10.18(b) of this chapter and
determined that a nonpublication request under Sec. 1.213(a) was
previously filed in the application in which the request to rescind a
nonpublication request is directed. A number of practitioners have
developed the practice of filing a request under Sec. 1.213(b) to
rescind a nonpublication request in all applications for which a
counterpart application subject to eighteen-month publication is filed,
regardless of whether a nonpublication request was filed in the
application. Processing a request under Sec. 1.213(b) to rescind a
nonpublication request in an application in which a nonpublication
request was not previously filed in the application is burdensome on
the Office. This is because the filing of a nonpublication request in
an application for which a nonpublication request is not entered in the
Office's computer system generally results in a search of the
application file to determine whether the Office failed to record a
nonpublication request in the Office's computer system. The filing of a
request under Sec. 1.213(b) to rescind a nonpublication request in an
application in which a nonpublication request was not previously filed
is unwarranted and results in an unnecessary delay and a needless
increase in the cost of processing the application. Thus, the Office
considers this course of conduct to be in violation of Sec. 10.18(b).
Therefore, the Office is proposing to amend Sec. 1.213(b) to place
persons signing a request under Sec. 1.213(b) to rescind a
nonpublication request on notice that such a request is not appropriate
unless the person signing the request has made an inquiry consistent
with the requirements of Sec. 10.18(b) of this chapter and determined
that a nonpublication request under Sec. 1.213(a) was previously filed
in the application in which the request to rescind a nonpublication
request is directed. Practitioners who continue to engage in the
practice of filing a request under Sec. 1.213(b) to rescind a
nonpublication request in applications for which a nonpublication
request was never filed may be subject to sanctions, disciplinary
action, or both (see Secs. 10.18(c) and (d)).
Section 1.213(c) is (as discussed above with respect to Sec.
1.213(b)) proposed to be amended to incorporate into the rules of
practice the Office's interpretation of the interplay between the
provision in 35 U.S.C. 122(b)(2)(B)(ii) for rescission of a previously
filed nonpublication request and the notice requirement of 35 U.S.C.
122(b)(2)(B)(iii). Section 1.213(c) is specifically proposed to be
amended to provide that an applicant who has submitted a nonpublication
request under Sec. 1.213(a), but before filing a request under Sec.
1.213(b) to rescind the previously filed nonpublication request, files
an application directed to the invention disclosed in the application
in which the nonpublication request was submitted in another country,
or under a multilateral international agreement, that requires
publication of applications eighteen months after filing, must notify
the Office of such filing within forty-five days after the date of the
filing in another country, or under a multilateral international
agreement. Section 1.213(c) is also proposed to be amended to provide
that the provisions of Sec. 1.8 do not apply in determining whether
such an application has been filed before filing a request under Sec.
1.213(b) to rescind a previously filed nonpublication request. Section
1.213(c) is also proposed to be amended to provide that the mere filing
of a request under Sec. 1.213(b) to rescind a previously filed
nonpublication request does not comply with the notice requirement of
35 U.S.C. 122(b)(2)(B)(iii) and Sec. 1.213(c). Section 1.213(c) is
also proposed to be amended to recite "of the filing in another
country, or under a multilateral international agreement," rather than
"of the filing of such foreign or international application" to more
accurately track the language of 35 U.S.C. 122(b)(2)(B)(iii).
Section 1.213(d) is proposed to be added to provide that if an
applicant who has submitted a nonpublication request under Sec.
1.213(a), subsequently files a request under Sec. 1.213(b) to rescind
a nonpublication request or files a notice of a filing in another
country, or under a multilateral international agreement, under Sec.
1.213(c), the application shall be published as soon as is practical
after the expiration of a period of eighteen months from the earliest
filing date for which a benefit is sought under title 35, United States
Code. 35 U.S.C. 122(b)(2)(B)(iv) provides that if an applicant rescinds
a request made under 35 U.S.C. 122(b)(2)(B)(i) or notifies the Director
that an application was filed in a foreign country or under a
multilateral international agreement specified in 35 U.S.C.
122(b)(2)(B)(i), the application shall be published in accordance with
the provisions of 35 U.S.C. 122(b)(1) on or as soon as is practical
after the date that is specified in 35 U.S.C. 122(b)(2)(B)(i).
Notwithstanding this provision in 35 U.S.C. 122(b)(2)(B), the Office
has also received inquiries as to whether an application will be
published if a request under Sec. 1.213(b) to rescind a nonpublication
request or a notice of foreign or international filing under Sec.
1.213(c) is filed.
Section 1.215: Section 1.215(a) is proposed to be amended to permit
submission of paper replacement drawings with a processing fee pursuant
to Sec. 1.17(i) (to replace the requirement for a petition) within the
same time frame as is being proposed in Sec. 1.215(c). Additionally,
Sec. 1.215(c) is proposed to be amended to provide a time frame of one
month from the mailing date of the first Office communication that
includes a confirmation number for the application for the submission
of an amended version of an application through EFS (as well as
providing the same time frame for replacement drawings submitted
pursuant to Sec. 1.215(a)).
Section 1.215(a) is proposed to be amended to refer to the
processing fee set forth in Sec. 1.17(i), and to provide that paper
replacement drawings received before the Office has begun to process
the patent application publication will be included in any patent
application publication. Replacement paper drawings may currently be
included in any patent application publication, so long as the drawings
are accompanied by a petition under Sec. 1.182 and a petition fee set
forth in Sec. 1.17(h) and are timely received. Deletion of the
requirement for a petition and replacement of the petition fee set
forth in Sec. 1.17(h) with a processing fee set forth in Sec. 1.17(i)
will reduce burdens upon applicants, while retaining the ability of the
Office to recover the costs associated with processing the replacement
drawings that have not been required by the Office. See Drawings in
Patent Application Publications and Patents, 1242 Off. Gaz. Pat. Office
114 (Jan. 16, 2001).
Section 1.215(c) is proposed to be amended to provide that
applicant has until the later of: (1) A month after the mailing date of
the first Office communication that includes a confirmation number for
the application; or (2) fourteen months after the earliest filing date
claimed under title 35, United States Code, to file an amended version
of an application through EFS, for publication purposes. This new time
frame is also being applied to submission of replacement paper drawings
pursuant to Sec. 1.215(a). This change has already been implemented.
See Assignment of Confirmation Number and Time Period for Filing a Copy
of an Application by EFS for Eighteen-Month Publication Purposes, 1241
Off. Gaz. Pat. Office 97 (Dec. 26, 2000).
Section 1.291: Section 1.291 is proposed to be amended to require
that when a protest under Sec. 1.291 is filed in an application, the
real party in interest that files the protest must be named; i.e., the
naming of the real party in interest would be a requirement of the
filing of a proper protest. An exception to this requirement would be
provided in that a protester desiring anonymity could submit a
statement (together with a processing fee under Sec. 1.17(i)) that the
protest being submitted is the first protest submitted in the
application by the real party in interest on behalf of whom the protest
is being submitted. Additionally, Sec. 1.291, as it is proposed to be
amended, is reformatted for clarity.
Currently, a protest may be submitted without identification of the
real party in interest on behalf of whom the protest is being
submitted. Further, there is no explicit bar in the rule against
multiple piecemeal protest submissions (raising a slightly different
issue in each of multiple protest submissions) other than that they
should be submitted before prosecution closes in an application. Thus,
Sec. 1.291, as it currently exists, is subject to abuse by, for
example, the filing of multiple protests in a single application by
practitioners of the same firm, with a different practitioner signing
each protest, and additionally, by any of the inventors and/or
assignees, where essentially the same grounds of protest are presented
in each of the protests. In order to eliminate such potential for
harassment of the prosecution process via multiple filings of protests
in an application by persons serving the same interest, it is proposed
that Sec. 1.291 be amended to require the naming of the real party in
interest, or privy thereof, when a protest is filed.
The party on whose behalf the protest is being filed is required to
be identified by either: (1) The name of the business or other
organizational entity (e.g., name of corporation) and its principal
address, its place of formation (e.g., incorporation) and any other
name under which the business or other organizational entity is doing
business (d/b/a) or conducting operations; or (2) the name and
residence of the individual who is directing the submission of the
protest.
The concept of identifying the "real party in interest" is not
new to the Office; it is required by statute (35 U.S.C. 311) and by
rule (Sec. 1.915) in inter partes reexamination practice with respect
to identifying the inter partes third party reexamination requester. It
is to be noted that the term "privy" is construed to include any
party related to the real party in interest (filing the protest) as
employer, employee, co-employee of the same employer, assignee, legal
representative, licensee or hired contractor of the assignee or
employer.
Where a genuine reason for not identifying the real party in
interest exists (such as concern by an employee as to retaliation by
his/her employer which is the assignee of the application), Sec.
1.291(b)(3) would permit a statement in substitution for identifying
the real party in interest. The Sec. 1.291(b)(3) substitute statement
must aver that the protest being submitted is, to the best of the
knowledge of the submitting party, the first protest submitted by the
real party in interest. A processing fee under Sec. 1.17(i) must be
included with the Sec. 1.291(b)(3) substitute statement.
While an examiner is always free to look at or consider any
documents submitted in an application, under Sec. 1.291 as it is
proposed to be amended, there would be no requirement that an examiner
consider a second protest filed on behalf of the same real party in
interest, unless: (1) The second protest submission (a) includes
additional art directed to the patentability of the claims, or (b)
otherwise raises new issues substantially different from issues earlier
presented and affecting the patentability of the claims, which could
not have been earlier presented; and (2) the second protest submission
includes an explanation of what is added by the additional art or new
issue(s) raised, and why such could not have been earlier presented.
Finally, once a protest has been matched with an application, the
examiner is always free to look at, or consider, any document(s) or
other information submitted in that protest whether or not the protest
complies with Sec. 1.291. This is true both for Sec. 1.291 as it
presently exists, and Sec. 1.291 as it would be revised via the
present proposal. Section 1.291 exists as a matter of administrative
convenience for the Office, and a third party's failure to comply with
any of the requirements of Sec. 1.291 does not vest the applicant with
any "right" to preclude consideration of information in a non-
compliant protest by the examiner.
Section 1.291(a): In order for a protest submission to be matched
with an application, it must include sufficient information to
adequately identify the application for which the submission is being
made.
Where possible, the protest should specifically identify the
application to which the protest is directed by application number and
filing date. If, however, the protestor is unable to specifically
identify the application to which the protest is directed by
application number and filing date, but, nevertheless, believes such an
application to be pending, the protest should be directed to the
attention of the Office of Petitions, along with as much identifying
data for the application as is possible. If sufficient information is
provided in the protest to match it to an application, it will be
matched. If not, the protest submission will be returned to the party
that submitted it.
Section 1.291(b): Section 1.291(b) is proposed to be amended to
provide that a protest may be filed "[a]t any time if it is
accompanied by the written consent of the applicant to the filing of
the protest being submitted." 35 U.S.C. 122(c) prohibits the filing of
a protest in an application after the application has been published
without the express written consent of the applicant. In order to
provide for the filing of protests after publication of patent
applications, Sec. 1.291(b)(2) requires that a filing of a protest
after publication (of an application) be accompanied by a written statement
of consent of the applicant to the filing of the protest. The written
statement must indicate that applicant is consenting to the specific
protest being submitted. A blanket consent upon publication of an
application would not be sufficient to permit admission of the subsequently
filed individual protests; applicant's consent must be specifically
directed to the protest being filed. It should be noted, however, that
applicant's consent need not be directed to a document that applicant
has already looked at or reviewed, but rather may be directed to the
"protest that party Smith has informed me that he will be submitting
during the week of November 26th."
Where the protest can be "matched" with an application, it will
be "entered" into the file (i.e., it has an entry right), if the
protest: (1) Is timely filed; (2) indicates that it has been served on
the applicant, and (3) properly identifies the real party in interest,
or contains the statement pursuant to paragraph (b)(3) of the section.
If the protest is not entered, it will be so marked, and it may be
returned to the protestor.
Section 1.291(c): Where the protest is "entered" into the
application, the items of information submitted with the protest, and
the argument directed to the items of information, will be
"considered" by the examiner, if the protest includes: (1) A listing
of patents, publications, or other information relied upon; (2) a
concise explanation of the relevance of each listed patent, publication
and other item of information; (3) a copy of each listed patent,
publication, or other item of information in written form, or at least
pertinent portions thereof; (4) an English language translation of all
the necessary and pertinent parts of any non-English language patent,
publication, or other item of information relied upon; and (5) if a
second or subsequent protest in the case, an explanation why the
additional art or other item(s) of information presented are
significantly different, and why they were not earlier presented. Any
item of information for which Sec. 1.291(c)(1) through (c)(5) is not
complied with would not be entitled to "consideration."
Section 1.291(e): This paragraph is proposed to be added to
reiterate and confirm the Office's long-standing practice to enter
protests raising inequitable conduct issues without comment on such
issues. See MPEP Sec. 1901.02.
Section 1.295: Section 1.295(a) is proposed to be amended to refer
to the petition fee set forth in Sec. 1.17(g) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.296: Section 1.296 is proposed to be amended to refer to
the petition fee set forth in Sec. 1.17(g) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.311: Section 1.311(b) is proposed to be amended to
provide that the submission after the mailing of a notice of allowance
of either: (1) An incorrect issue fee or publication fee; or (2) a fee
transmittal form (or letter) for payment of issue fee or publication
fee, will operate as a valid request to charge the correct issue fee,
or any publication fee due, to any deposit account identified in a
previously filed authorization to charge such fees. Additionally, non-
Office provided issue and publication fee forms would now be permitted.
It is proposed to be clarified that for previous authorizations to be
effective under the exceptions provided for, the previous
authorizations must cover the issue and publication fees to be charged.
Current Sec. 1.311(b) sets forth that an authorization to charge
the issue fee or other post-allowance fees (such as any publication fee
due) to a deposit account may be filed only after the mailing of a
notice of allowance in part to encourage the use (return) of the PTOL-
85B form as that form contains important information, such as the name
of the assignee. The last sentence of Sec. 1.311(b), however, provides
an exception for charging the issue fee to a deposit account identified
in a previously filed authorization if the applicant submits either an
incorrect issue fee or an Office-provided fee transmittal form (i.e.,
Part B - Fee(s) Transmittal of a Notice of Allowance and Fee(s) Due,
form PTOL-85). The proposed amendment to Sec. 1.311(b) would extend
the exception to any publication fee due and expand the exception to
apply where an applicant's own fee transmittal form or letter for
submitting issue fee or publication fee is submitted. Further, the term
"such" is proposed to be added before "fees" in the last line of
section 1.311(b) to clarify that the previously filed authorization
must be an authorization to charge the appropriate fee due to an
identified deposit account. For example, if the previously filed fee
authorization only authorizes the Office to charge the issue fee, the
Office would not be able to charge any publication fee due to the
identified deposit account in the previously filed authorization even
when the applicant submitted an issue fee transmittal form. For such
authorization, the Office could only charge the correct issue fee to
the identified deposit account.
The phrase "A completed Office-provided issue fee transmittal form
(where no issue fee has been submitted)" in the last sentence of Sec.
1.311(b) is proposed to be changed to "A fee transmittal form (or
letter) for payment of issue fee or publication fee" to provide that a
submission of an Office-provided fee transmittal form (i.e., Part B of
the form PTOL-85), or applicant's own fee transmittal form or letter
for submitting issue fee or publication fee, (incomplete as well as a
complete, but for a fee authorization) would operate as a request to
charge the correct issue fee due, or any publication fee due, to any
deposit account identified in a previously filed authorization to
charge such fees, even if the issue fee has been previously submitted.
Where an issue fee has been previously submitted, and the
application is withdrawn from issue and is allowed again, since
November 13, 2001, the Notice of Allowance has indicated the current
amount due as the difference between the previously paid issue fee and
the current amount for an issue fee. In such situation, a payment of
only the difference, or a response to the notice where there is no
issue fee due (or only the return of the Part B - Fee(s) Transmittal of
form PTOL-85 as the current issue fee is the same amount as previously
paid), will be treated as a ratification of the Office's decision to
apply the previously paid issue fee. If the fee was paid in a different
application (e.g., the parent application of a continued prosecution
application under Sec. 1.53(d) (CPA)), the fee indicated in the notice
as due is the current issue fee. The issue fee paid in the parent
application cannot be refunded, or applied, to the notice of allowance
mailed in the CPA.
Section 1.324: Section 1.324(a) and (b) would be amended to provide
an informational reference to 35 U.S.C. 256 and to replace "petition"
with "request." Section 1.324(b) would be amended to alert patentees
to the availability of reissue to correct inventorship in a patent
where Sec. 1.324 is not available.
Section 1.324(a) is proposed to be amended by adding an explicit
reference to 35 U.S.C. 256 and its requirement in order to clarify that
the inventorship of a patent may be changed only by way of request from
all of the inventors together with assignees of the entire interest, or
on order of a court, and the Office will then issue a certificate
naming the correct inventors. 35 U.S.C. 256 requires that there be
agreement among all parties (inventors and existing assignees), or that
a court has issued an order so directing the inventorship change. The
current reference in Sec. 1.324 to a petition is being eliminated in
order to conform the rule language to earlier changes made to Sec.
1.20(a).
Section 1.377: Section 1.377 is proposed to be amended to refer to
the petition fee set forth in Sec. 1.17(g) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17. Section 1.377 will
retain the provision that the petition fee may be refunded if an Office
error created the need for the petition.
Section 1.378: Section 1.378(e) is proposed to be amended to refer
to the petition fee set forth in Sec. 1.17(f) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.502: Section 1.502 is proposed to be amended to make it
clear that it is the issuance and publication of the ex parte
reexamination certificate that terminates the reexamination proceeding.
The failure to timely respond, or the issuance of a Notice of Intent to
Issue Reexamination Certificate (NIRC), does not terminate the
reexamination proceeding. See the discussion below as to the amendment
of Sec. 1.550. See also Secs. 1.116, 1.570, 1.902, 1.953, 1.957,
1.958, 1.979, and 1.997.
Section 1.530: Section 1.530 is proposed to be amended to state
that proposed amendments in ex parte or inter partes reexamination are
not effective until the reexamination certificate is both "issued and
published" (emphasis added) to conform Sec. 1.530 for consistency
with the language of 35 U.S.C. 307 and 316.
Section 1.550: Section 1.550(c) is proposed to be amended to add a
$200 fee requirement pursuant to Sec. 1.17(g) in ex parte
reexamination proceedings for requests for extensions of time, which
requests are based upon sufficient cause. Extensions of time under
Sec. 1.136(a) are not permitted in ex parte reexamination proceedings
because the provisions of 35 U.S.C. 41(a)(8) and Sec. 1.136(a) apply
only to an "application" and not to a reexamination proceeding (ex
parte or inter partes). Additionally, 35 U.S.C. 305 requires that ex
parte reexamination proceedings "will be conducted with special
dispatch." Accordingly, extensions of time in inter partes
reexamination proceedings are provided for in Sec. 1.550(c) only "for
sufficient cause and for a reasonable time specified." To evaluate
whether a showing of "sufficient cause" exists and whether a
"reasonable time" is specified, decisions on Sec. 1.550(c) requests
require a thorough evaluation of facts and circumstances on a case-by-
case basis. Furthermore, requests under Sec. 1.550(c) are generally
treated expeditiously by the deciding official, especially so in
reexamination since the statute requires "special dispatch." To
reflect the Office's cost of deciding requests under Sec. 1.550(c),
i.e., the cost of evaluating whether a showing of "sufficient cause"
exists and whether a "reasonable time" is specified, it is proposed
that a requirement for a fee be added to Sec. 1.550(c).
The present proposal tracks the above discussed proposals to
require a fee for the decision on Sec. 1.136(b) and Sec. 1.956
extension of time requests, and the criteria for granting of an
extension of time under Sec. 1.550(c) is analogous to that for Sec.
1.136(b) and Sec. 1.956.
Section 1.550(d) is proposed to be amended to state that patent
owner's failure to file a timely response will result in the concluding
of prosecution of the reexamination proceeding, but will not conclude
or terminate the reexamination proceeding.
The patent owner's failure to file a timely response, and the
issuance of the Notice of intent to Issue Reexamination Certificate
(NIRC) concludes the prosecution in the reexamination proceeding. On
the other hand, the issuance and publication of a certificate
terminates the reexamination proceeding itself. This distinction is
important because prosecution which is concluded may be reopened at the
option of the Office where appropriate, and a rejection that was
withdrawn during the proceeding may be reinstated where the propriety
of that rejection has been reconsidered. In contrast, a reexamination
proceeding which has been terminated is not subject to being reopened.
After the reexamination proceeding has been terminated, it is not
permitted to reinstate the same ground of rejection in a reexamination
proceeding in accordance with In re Recreative Technologies, 83 F.3d
1394, 38 USPQ2d 1776 (Fed. Cir. 1996) (holding that a "substantial new
question of patentability" is not raised by prior art presented in a
reexamination request, if the Office has previously considered (in an
earlier examination of the patent) the same question of patentability
as to a patent claim favorable to the patent owner based on the same
prior art patents or printed publications.). But see Pub. L. 107-273,
Sec. 13105, 116 Stat. 1758, 1900 (2002) (overruling In re Portola
Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), by
amending 35 U.S.C. 303(a) and 312(a) to provide that "[t]he existence
of a substantial new question of patentability is not precluded by the
fact that a patent or printed publication was previously cited by or to
the Office, or considered by the Office").
This distinction between concluding the prosecution of the
reexamination proceeding, and termination of the reexamination
proceeding was highlighted by the Federal Circuit decision of In re
Bass, 314 F.3d 575, 65 USPQ2d 1156 (Fed. Cir. 2003), wherein the Court
opined that:
Until a matter has been completed, however, the PTO may
reconsider an earlier action. See In re Borkowski, 505 F.2d 713,
718, 184 USPQ 29, 32-33 (CCPA 1974). A reexamination is complete
upon the statutorily mandated issuance of a reexamination
certificate, 35 U.S.C. 307(a); the NIRC merely notifies the
applicant of the PTO's intent to issue a certificate. A NIRC does
not wrest jurisdiction from the PTO precluding further review of the
matter.
It is to be noted that both NIRC cover sheet forms, ex parte Form
PTOL 469 and inter partes Form PTOL 2068, specifically state (in their
opening sentences) that "[p]rosecution on the merits is (or remains)
closed in this * * * reexamination proceeding. This proceeding is
subject to reopening at the initiative of the Office, or upon
petition." This statement addresses the point that the NIRC concludes
the prosecution in the reexamination proceeding, but does not conclude
or terminate the reexamination proceeding itself. In this notice of
proposed rule making, it is proposed to amend the rules of practice to
also address the point. See also Secs. 1.116, 1.502, 1.570, 1.902,
1.953, 1.957, 1.958, 1.979, and 1.997.
Section 1.570: The heading of Sec. 1.570, and Sec. 1.570(a), are
proposed to be amended to make it clear that the grant of the ex parte
reexamination certificate terminates the reexamination proceeding. The
failure to timely respond, or the issuance of the NIRC does not
terminate the reexamination proceeding. See the discussion as to the
amendment of Sec. 1.550. See also Secs. 1.116, 1.502, 1.902,
1.953, 1.957, 1.958, 1.979, and 1.997.
Section 1.570 is also proposed to be amended in its heading and
paragraphs (b) and (d) to recite that the reexamination certificate is
both issued and published for consistency with the language of 35
U.S.C. 307.
Section 1.644: Section 1.644, paragraphs (e) and (f), are proposed
to be amended to refer to the petition fee set forth in Sec. 1.17(f)
for consistency with the change to Sec. 1.17. See discussion of Sec.
1.17.
Section 1.666: Section 1.666(b) and (c) are proposed to be amended
to refer to the petition fee set forth in Sec. 1.17(f) for consistency
with the change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.704(d): Section 1.704(d) is proposed to be amended to
change "cited in a communication" to "first cited in any
communication" in order to clarify that the item must have been first
cited in any communication from a foreign patent office in a
counterpart application instead of merely being cited in such a
communication.
An applicant who fails to cite an item, within thirty days of
receipt by an individual designated in Sec. 1.56(c) of a first
communication from a foreign patent office in a counterpart application
citing the item, and instead files an information disclosure statement,
within thirty days of a subsequent communication citing the item,
cannot be considered to have acted with reasonable efforts to conclude
prosecution of the application. The provisions of Sec. 1.704(d) do not
apply if the applicant does not submit the IDS within the thirty-day
window of a first communication including a citation of an item to a
party designated in Sec. 1.56(c). The proposed change to require the
thirty-day time frame to run from a first communication parallels the
requirement in Sec. 1.97(e)(1).
Section 1.705: Section 1.705(d) is proposed to be amended to
provide that a patentee may request reconsideration of the patent term
adjustment within thirty days of the date the patent issued if the
patent indicates a revised patent term adjustment. Currently, any
request for reconsideration of the patent term adjustment indicated in
the patent is limited to the situation where the patent issues on a
date other than the projected date of issue. If the patent indicates a
revised patent term adjustment due to the patent being issued on a date
other than the projected date of issue, applicant must file a request
for reconsideration within thirty days of the date the patent issued.
Section 1.705(d) as proposed would allow a patentee to file the request
for reconsideration for an event which occurs after the mailing of the
notice of allowance so long as the patentee files the request for
reconsideration within thirty days of the date the patent issues.
Events occurring after the mailing of the notice of allowance which
may result in a reduction of any patent term adjustment include
submissions of additional papers such as: (1) Request for refunds; (2)
status letter, (3) amendments under Sec. 1.312; (4) late priority
claims; (5) a certified copy of a priority document; (6) drawings; (7)
letters related to biological deposits; and (8) oaths or declarations.
See Sec. 1.704(c)(10). An additional event which may trigger the
revision of the patent term adjustment is receipt of the payment of the
issue fee more than 3 months after mailing of the notice of allowance.
See Sec. 1.704(b). Events occurring after the mailing of the notice of
allowance which may trigger an increase in the amount of patent term
adjustment include administrative delays caused by the Office's failure
to issue the application within four months after the date the issue
fee was paid under 35 U.S.C. 151 and all outstanding requirements were
satisfied. See Sec. 1.702(a)(4).
Section 1.705(d) is also proposed to be amended to provide that any
request for reconsideration under Sec. 1.705(d) that raises issues
that were raised, or could have been raised, in an application for
patent term adjustment under Sec. 1.704(b) may be dismissed as
untimely. The purpose of Sec. 1.705(d) is to provide patentees with an
avenue to obtain reconsideration of the patent term adjustment
indicated in the patent when the patent term adjustment indicated in
the patent differs from the patent term adjustment indicated in the
notice of allowance due to events occurring after the mailing of the
notice of allowance. Section 1.705(d) is not intended as an avenue for
patentees to seek review of issues that were raised, or could have been
raised, in an application for patent term adjustment under Sec.
1.704(b). Any request for reconsideration of the patent term adjustment
indicated in the patent on the basis of issues that were raised, or
could have been raised, in an application for patent term adjustment
under Sec. 1.704(b) is considered untimely if not filed within the
period specified in Sec. 1.705(b).
Section 1.741: Section 1.741(b) is proposed to be amended to refer
to the petition fee set forth in section 1.17(f) for consistency with
the change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.902: Section 1.902 is proposed to be amended to make it
clear that it is the issuance and publication of the inter partes
reexamination certificate that terminates the reexamination proceeding.
The failure to timely respond, or the issuance of the NIRC does not
terminate the reexamination proceeding. See the discussion as to the
amendment of Sec. 1.550. See also Secs. 1.116, 1.502, 1.570,
1.953, 1.957, 1.958, 1.979, and 1.997.
Section 1.953: Section 1.953(c) is proposed to be amended to state
that patent owner's failure to file a timely response will result in
the concluding of the prosecution of the reexamination proceeding, but
will not terminate the reexamination proceeding. See the discussion as
to the amendment of Sec. 1.550 for the rationale for this change. See
also Secs. 1.116, 1.502, 1.570, 1.902, 1.957, 1.958, 1.979, and
1.997.
The subheading preceding Sec. 1.956 is proposed to be amended to
refer to concluding of prosecution of the reexamination proceeding,
rather than conclusion or termination of the reexamination proceeding,
since that is what the sections which follow deal with. It is Sec.
1.997, Issuance of Inter Partes Reexamination Certificate, that deals
with termination of the reexamination proceeding. See the discussion
above as to the amendment of Sec. 1.550 for the rationale for this
change.
Section 1.956: Section 1.956 is proposed to be amended to add a
$200 fee requirement pursuant to Sec. 1.17(g) in inter partes
reexamination proceedings for requests for extensions of time, which
requests are based upon sufficient cause. Extensions of time under
Sec. 1.136(a) are not permitted in inter partes reexamination
proceedings because the provisions of 35 U.S.C. 41(a)(8) and Sec.
1.136(a) apply only to an "application" and not to a reexamination
proceeding (ex parte or inter partes). Additionally, 35 U.S.C. 314
requires that inter partes reexamination proceedings "will be
conducted with special dispatch." Accordingly, extensions of time in
inter partes reexamination proceedings are provided for in Sec. 1.956
only "for sufficient cause and for a reasonable time specified." To
evaluate whether a showing of "sufficient cause" exists and whether a
"reasonable time" is specified, decisions on Sec. 1.956 requests
require a thorough evaluation of facts and circumstances on a case-by-
case basis. Furthermore, requests under Sec. 1.956 are generally
treated expeditiously by the deciding official, especially so in
reexamination since the statute requires "special dispatch." To
reflect the Office's cost of deciding requests under Sec. 1.956, i.e.,
the cost of evaluating whether a showing of "sufficient cause" exists
and whether a "reasonable time" is specified, it is proposed that a
requirement for a fee be added to Sec. 1.956.
The present proposal tracks the above-discussed proposals to
require a fee for the decision on Sec. 1.136(b) and Sec. 1.550(c)
extension of time requests, and the criteria for granting of an
extension of time under Sec. 1.956 is analogous to that for Sec.
1.136(b) and Sec. 1.550(c).
Section 1.957: Section 1.957(b) is proposed to be amended to state
that patent owner's failure to file a timely response will result in the
concluding of prosecution of the inter partes reexamination proceeding,
but will not conclude or terminate the reexamination proceeding. See
the discussion as to the amendment of Sec. 1.550 for the rationale for
this change. See also Secs. 1.116, 1.502, 1.570, 1.902, 1.953,
1.958, 1.979, and 1.997.
Section 1.958: The heading of Sec. 1.958 is proposed to be amended
to state the concluding of prosecution of the reexamination proceeding,
rather than conclusion or termination of the reexamination proceeding,
since that is what the materials which follow deal with. See the
discussion above as to the amendment of Sec. 1.550 for the rationale
for this change. Note that both Sec. 1.957(b) and (c) result in the
concluding of reexamination prosecution. Under Sec. 1.957(b),
prosecution is concluded in toto; under Sec. 1.957(c), prosecution is
concluded as to the non-patentable claims. See also Secs. 1.116,
1.502, 1.570, 1.902, 1.953, 1.957, 1.979, and 1.997.
Section 1.979: Section 1.979(f) is proposed to be amended to state
that patent owner's failure to file a timely response will result in a
concluding of prosecution of the reexamination proceeding, but will not
conclude or terminate the reexamination proceeding, and that it is the
reexamination certificate under Sec. 1.997 that terminates the
reexamination proceeding. See the discussion as to the amendment of
Sec. 1.550 for the rationale for this change. See also Secs.
1.116, 1.502, 1.570, 1.902, 1.953, 1.957, 1.958, and 1.997.
Section 1.997: The heading of Sec. 1.997 is proposed to be amended
to refer to the issuance and publication of inter partes reexamination
certificates. The heading of Sec. 1.997 and Sec. 1.997(a) are
proposed to be amended to make it clear that the issuance and
publication of the inter partes reexamination certificate terminates
the reexamination proceeding. The failure to timely respond, or the
issuance of the NIRC does not terminate the reexamination proceeding.
See the discussion as to the amendment of Sec. 1.550. See also
Secs. 1.116, 1.502, 1.570, 1.902, 1.953, 1.957, 1.958, and 1.979.
Section 1.997(a) is also proposed to be revised to make its language
consistent with that of Sec. 1.570(a).
Section 1.997, paragraphs (b) and (d), are proposed to be amended
to recite that the reexamination certificate is both issued and
published for consistency with the language of 35 U.S.C. 316.
Section 5.12: Section 5.12(b) is proposed to be amended to refer to
the petition fee set forth in Sec. 1.17(g) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Section 5.15: Section 5.15(c) is proposed to be amended to refer to
the petition fee set forth in Sec. 1.17(g) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Section 5.25: Section 5.25 is proposed to be amended to refer to
the petition fee set forth in Sec. 1.17(g) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Rule Making Considerations
Regulatory Flexibility Act
The Deputy General Counsel for General Law, United States Patent
and Trademark Office certified to the Chief Counsel for Advocacy, Small
Business Administration, that the changes proposed in this notice (if
adopted) would not have a significant impact on a substantial number of
small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The
primary impact of the changes proposed in this notice are to: (1)
Permit electronic signatures on a number of patent-related submissions;
(2) streamline the requirements for incorporation by reference of
prior-filed applications; and (3) clarify the qualifications for
claiming small entity status for purposes of paying reduced patent
fees. These changes to the rules of practice (if adopted) will simplify
the patent application, and as such, will benefit all patent applicants
(including small entities).
The Office is also proposing to adjust certain petition fees that
are set under the Office's authority under 35 U.S.C. 41(d) to adjust
these petition fees to be in alignment with the actual average costs of
deciding such petitions. There are approximately 7,500 petitions filed
each year of the type that would be affected by the proposed patent fee
changes. Since the Office received over 400,000 applications
(provisional and nonprovisional) in fiscal year 2002, this proposed
change would impact relatively few (less than 2% of) patent applicants.
In addition, the petition fee amounts proposed by the Office for
petitions whose fees are set under the authority in 35 U.S.C. 41(d) are
comparable or lower than the petition fee amounts for petitions whose
fees are set by statute in 35 U.S.C. 41(a) ($110.00 to $1,970.00 for
extension of time petitions (35 U.S.C. 41(a)(8)), or $1,300.00 to
revive an unintentionally abandoned application (35 U.S.C. 41(a)(7)).
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: 0651-0016, 0651-0020, 0651-0031, 0651-0032, 0651-0033, 0651-
0034 and 0651-0036.
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: 0651-0016.
Title: Rules for Patent Maintenance Fees.
Form Numbers: PTO/SB/45/47/65/66.
Type of Review: Approved through May of 2006.
Affected Public: Individuals or Households, Business or Other
For-Profit Institutions, Not-For-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 348,110.
Estimated Time Per Response: Between 20 seconds and 8 hours.
Estimated Total Annual Burden Hours: 30,495 hours.
Needs and Uses: Maintenance fees are required to maintain a patent,
except for design or plant patents, in force under 35 U.S.C. 41(b).
Payment of maintenance fees are required at 3 1/2, 7 1/2 and 11 1/2
years after the grant of the patent. A patent number and application
number of the patent on which maintenance fees are paid are required in
order to ensure proper crediting of such payments.
OMB Number: 0651-0020.
Title: Patent Term Extension.
Form Numbers: None.
Type of Review: Approved through October of 2004.
Affected Public: Individuals or Households, Business or Other
For-Profit Institutions, Not-for-Profit Institutions, Farms, Federal
Government and State, Local and Tribal Governments.
Estimated Number of Respondents: 26,858.
Estimated Time Per Response: Between 1 and 25 hours.
Estimated Total Annual Burden Hours: 30,903 hours.
Needs and Uses: The information supplied to the United States
Patent and Trademark Office by an applicant requesting reconsideration
of a patent term adjustment determination under 35 U.S.C. 154(b) (Sec.
1.702 et seq.) is used by the United States Patent and Trademark Office
to determine whether its determination of patent term adjustment under
35 U.S.C. 154(b) is correct, and whether the applicant is entitled to
reinstatement of reduced patent term adjustment. The information
supplied to the United States Patent and Trademark Office by an
applicant seeking a patent term extension under 35 U.S.C. 156 (Sec.
1.710 et seq.) is used by the United States Patent and Trademark
Office, the Department of Health and Human Services, and the Department
of Agriculture to determine the eligibility of a patent for extension
and to determine the period of any such extension. The applicant can
apply for patent term and interim extensions, petition the Office to
review final eligibility decisions, withdraw patent term applications,
and declare his or her eligibility to apply for a patent term
extension.
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, PTOL-413A.
Type of Review: Approved through July of 2006.
Affected Public: Individuals or Households, Business or Other
For-Profit Institutions, Not-for-Profit Institutions, Farms Federal
Government and State, Local and Tribal Governments.
Estimated Number of Respondents: 2,208,339.
Estimated Time Per Response: 1 minute and 48 seconds to 8 hours.
Estimated Total Annual Burden Hours: 830,629 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
and 29A, PTO/SB/101-110.
Type of Review: Approved through July of 2006.
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: 454,287.
Estimated Time Per Response: 22 minutes to 10 hours and 45 minutes.
Estimated Total Annual Burden Hours: 4,171,568 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: 1.8 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.
OMB Number: 0651-0034.
Title: Secrecy and License to Export.
Form Numbers: None.
Type of Review: Approved through March 2004.
Affected Public: Individuals or Households, Business or Other
For-Profit Institutions, Not-For-Profit Institutions, Farms, Federal
Government, and State, Local, or Tribal Governments.
Number of Respondents: 2,194.
Estimated Time Per Response: Between 30 minutes and 4 hours.
Estimated Total Annual Burden Hours: 1,523 hours.
Needs and Uses: When disclosure of an invention may be detrimental
to national security, the Director of the USPTO must issue a secrecy
order and withhold the publication of the application or grant of a
patent for such period as the national interest requires. The USPTO is
also required to grant foreign filing licenses in certain circumstances
to applicants filing patent applications in foreign countries. This
collection is used by the public to petition the USPTO to allow
disclosure, modification, or rescission of a secrecy order, or to
obtain a general or group permit. Applicants may also petition the
USPTO for a foreign filing license or a retroactive license.
OMB Number: 0651-0036.
Title: Statutory Invention Registration.
Form Numbers: PTO/SB/94.
Type of Review: Approved through April of 2006.
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: 73.
Estimated Time Per Response: 24 minutes.
Estimated Total Annual Burden Hours: 29 hours.
Needs and Uses: This collection of information is necessary to
ensure that the requirements of 35 U.S.C. 157 and 37 CFR 1.293 through
1.297 are met. The public uses form PTO/SB/94, Request for Statutory
Invention Registration, to request and authorize publication of a
regularly filed patent application as a statutory invention
registration, to waive the right to receive a United States patent on
the same invention claimed in the identified patent application, and to
agree that the waiver will be effective upon publication of the
statutory invention registration. The Office uses form PTO/SB/94,
Request for a Statutory Invention Registration, to review, grant, or
deny a request for a statutory invention registration. No forms are
associated with the petition to review final refusal to publish a
statutory invention registration or the petition to withdraw a
publication request. The petition to review final refusal to publish a
statutory invention registration is used by the public to petition the
Office's rejection of a request for a statutory invention registration.
The Office uses the petition to withdraw a publication request to
review requests to stop publication of a statutory invention
registration.
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
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and record keeping
requirements, Small businesses.
37 CFR Part 5
Classified information, foreign relations, inventions and patents.
For the reasons set forth in the preamble, 37 CFR parts 1 and 5 are
proposed to be amended as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.4 is amended by adding paragraphs (d)(1)(iv) and (h)
to read as follows:
Sec. 1.4 Nature of correspondence and signature requirements.
* * * * *
(d)(1) * * *
(iv)(A) Where correspondence for a patent application, patent file,
or a reexamination proceeding is printed on paper for hand or mail
delivery, or is submitted via the Office's Electronic Filing System, or
facsimile transmission (pursuant to Sec. 1.6(d) of this part), it may
be electronically signed. The electronic signature must consist only of
numbers and/or letters, with punctuation and spaces (e.g., Jane DOE-
JONES, James JONES, Jr., and Dr. James JONES). The person signing the
correspondence must personally insert the electronic signature between
two forward slash marks. The signature must be the signer's actual
name, except as provided by paragraph (d)(1)(iv)(B) of this section,
including the given name, middle name or initial, and family name and,
optionally, a title. The actual name must be presented with only the
family name being entirely in capital letters. A practitioner, signing
pursuant to Secs. 1.33(b)(1) or 1.33(b)(2) of this part, must use
his/her complete name as registered as his or her electronic signature,
and the signer's registration number must be supplied, either as part
of the electronic signature, or adjacent the electronic signature. If
part of the electronic signature, the number () character may
be used when appearing before a practitioner's registration number;
otherwise the number character may not be used in an electronic
signature.
(B) Where a person's electronic signature as set forth in paragraph
(d)(1)(iv)(A) of this section is not the person's actual name, the
correspondence must include the person's actual name in printed or
typed form immediately below the electronic signature, and clearly
indicate that it is the signer's actual name, with only the family name
being presented entirely in capital letters.
* * * * *
(h) The Office may require ratification or confirmation of a
signature, or a resubmission of a document, such as when the Office has
reasonable doubt as to the authenticity (veracity) of the signature,
e.g., where there are variations of a signature, or where the signature
and the complete typed or printed name, if any, does not clearly
identify the person signing, or where more than one person has used the
same signature (with a different typed or printed name below the
signature).
3. Section 1.6 is amended by removing and reserving paragraph (e)
and revising paragraph (d)(4) to read as follows:
Sec. 1.6 Receipt of correspondence.
* * * * *
(d) * * *
(4) Drawings submitted under Secs. 2.51, 2.52, or 2.72, and
color drawings submitted under Secs. 1.81, 1.83 through 1.85,
1.152, 1.165, 1.173, or 1.437;
* * * * *
(e) [Reserved]
* * * * *
4. Section 1.8 is amended by revising the introductory text of
paragraph (a) and the introductory text of paragraph (b) to read as
follows:
Sec. 1.8 Certificate of mailing or transmission.
(a) Except in the situations enumerated in paragraph (a)(2) of this
section or as otherwise expressly excluded in this chapter,
correspondence required to be filed in the Patent and Trademark Office
within a set period of time will be considered as being timely filed if
the procedure described in this section is followed. The actual date of
receipt will be used for all other purposes.
* * * * *
(b) In the event that correspondence is considered timely filed by
being mailed or transmitted in accordance with paragraph (a) of this
section, but not received in the Patent and Trademark Office after a
reasonable amount of time has elapsed from the time of mailing or
transmitting the correspondence, or after the application is held to be
abandoned, or after the proceeding is dismissed or decided with prejudice,
or the prosecution of a reexamination proceeding is concluded (Secs.
1.550(d), 1.957(b)) or limited (Secs. 1.957(a), 1.957(c)), the
correspondence will be considered timely if the party who forwarded
such correspondence:
* * * * *
5. Section 1.10 is amended by adding new paragraphs (g), (h), and
(i) to read as follows:
Sec. 1.10 Filing of papers and fees by "Express Mail."
* * * * *
(g) Any person attempting to file correspondence under this section
that was returned by the USPS may petition the Director to consider
such correspondence as filed on a particular date in the Office,
provided that:
(1) The petition is filed promptly after the person becomes aware
of the return of the correspondence;
(2) The number of the "Express Mail" mailing label was placed on
the paper(s) or fee(s) that constitute the correspondence prior to the
original mailing by "Express Mail';
(3) The petition includes the original correspondence or a copy of
the original correspondence showing the number of the "Express Mail"
mailing label thereon and a copy of the "Express Mail" mailing label
showing the "date-in" and
(4) The petition includes a statement which establishes, to the
satisfaction of the Director, the original deposit of the
correspondence and that the correspondence or copy of the
correspondence is the original correspondence or a true copy of the
correspondence originally deposited with the USPS on the requested
filing date.
(h) Any person attempting to file correspondence under this section
that was refused by the USPS may petition the Director to consider such
correspondence as filed on a particular date in the Office, provided
that:
(1) The petition is filed promptly after the person becomes aware
of the refusal of the correspondence;
(2) The number of the "Express Mail" mailing label was placed on
the paper(s) or fee(s) that constitute the correspondence prior to the
attempted mailing by "Express Mail';
(3) The petition includes the original correspondence or a copy of
the original correspondence showing the number of the "Express Mail"
mailing label thereon; and
(4) The petition includes a statement by the person who originally
attempted to deposit the correspondence with the USPS which
establishes, to the satisfaction of the Director, the original attempt
to deposit the correspondence and that the correspondence or copy of
the correspondence is the original correspondence or a true copy of the
correspondence originally attempted to be deposited with the USPS on
the requested filing date.
(i) Any person attempting to file correspondence under this section
that was unable to be deposited with the USPS due to an interruption or
emergency in "Express Mail" service which has been so designated by
the Director, may petition the Director to consider such correspondence
as filed on a particular date in the Office, provided that:
(1) The petition is filed in a manner designated by the Director
promptly after the person becomes aware of the designated interruption
or emergency in "Express Mail" service;
(2) The petition includes the original correspondence or a copy of
the original correspondence; and
(3) The petition includes a statement which establishes, to the
satisfaction of the Director, that the correspondence would have been
deposited with the USPS but for the designated interruption or
emergency in "Express Mail" service, and that the correspondence or
copy of the correspondence is the original correspondence or a true
copy of the correspondence originally attempted to be deposited with
the USPS on the requested filing date.
6. Section 1.14 is amended by revising paragraph (h)(1) as follows:
Sec. 1.14 Patent applications preserved in confidence.
* * * * *
(h) * * *
(1) The fee set forth in Sec. 1.17(g); and
* * * * *
7. Section 1.17 is amended by adding paragraphs (f) and (g) and
revising (h), (i), (l), and (m) to read as follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(f) For filing a petition under one of the following sections which
refers to this paragraph - $400.00
Sec. 1.53(e) - to accord a filing date.
Sec. 1.57(a) - to accord a filing date.
Sec. 1.182 - for decision on a question not specifically provided
for.
Sec. 1.183 - to suspend the rules.
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.
(g) For filing a petition under one of the following sections which
refers to this paragraph - $200.00
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. 1.59 - for expungement of information.
Sec. 1.103(a) - to suspend action in an application.
Sec. 1.136(b) - for review of a request for extension of time when
the provisions of section 1.136(a) are not available.
Sec. 1.138(c) - to expressly abandon an application to avoid
publication.
Sec. 1.295 - for review of refusal to publish a statutory invention
registration.
Sec. 1.296 - to withdraw a request for publication of a statutory
invention registration filed on or after the date the notice of intent
to publish issued.
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. 1.550(c) - for patent owner requests for extension of time in
ex parte reexamination proceedings.
Sec. 1.956 - for patent owner requests for extension of time in
inter partes reexamination proceedings.
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.
(h) For filing a petition under one of the following sections which
refers to this paragraph - $130.00
Sec. 1.19(h) - to request documents in a form other than that
provided in this part.
Sec. 1.84 - for accepting color drawings or photographs.
Sec. 1.91 - for entry of a model or exhibit.
Sec. 1.102(d) - to make an application special.
Sec. 1.313 - to withdraw an application from issue.
Sec. 1.314 - to defer issuance of a patent.
Sec. 104.3 - for a waiver of a rule in part 104 of this title.
(i) Processing fee for taking action under one of the following
sections which refers to this paragraph - $130.00
Sec. 1.28(c)(3) - for processing a non-itemized fee deficiency
based on an error in small entity status.
Sec. 1.41 - for supplying the name or names of the inventor or
inventors after the filing date without an oath or declaration as
prescribed by Sec. 1.63, except in provisional applications.
Sec. 1.48 - for correcting inventorship, except in provisional
applications.
Sec. 1.52(d) - for processing a nonprovisional application filed
with a specification in a language other than English.
Sec. 1.53(b)(3) - to convert a provisional application filed under
Sec. 1.53(c) into a nonprovisional application under Sec. 1.53(b).
Sec. 1.55 - for entry of late priority papers.
Sec. 1.99(e) - for processing a belated submission under Sec.
1.99.
Sec. 1.103(b) - for requesting limited suspension of action,
continued prosecution application (Sec. 1.53(d)).
Sec. 1.103(c) - for requesting limited suspension of action,
request for continued examination (Sec. 1.114).
Sec. 1.103(d) - for requesting deferred examination of an
application.
Sec. 1.215(a) - for processing of replacement drawings to include
the drawings in any patent application publication.
Sec. 1.217 - for processing a redacted copy of a paper submitted in
the file of an application in which a redacted copy was submitted for
the patent application publication.
Sec. 1.221 - for requesting voluntary publication or republication
of an application.
Sec. 1.291(b)(3) - for processing a substitute statement under
Sec. 1.291(b)(3).
Sec. 1.497(d) - for filing an oath or declaration pursuant to 35
U.S.C. 371(c)(4) naming an inventive entity different from the
inventive entity set forth in the international stage.
Sec. 3.81 - for a patent to issue to assignee, assignment submitted
after payment of the issue fee.
* * * * *
(l) For filing a petition for the revival of an unavoidably
abandoned application under 35 U.S.C. 111, 133, 364, or 371 for the
unavoidably delayed payment of the issue fee under 35 U.S.C. 151 or for
the revival of an unavoidably concluded or limited reexamination
prosecution under 35 U.S.C. 133 (Sec. 1.137(a)):
By a small entity (Sec. 1.27(a)) - $55.00
By other than a small entity - $110.00
(m) For filing a petition for the revival of an unintentionally
abandoned application, for the unintentionally delayed payment of the
fee for issuing a patent, or for the revival of an unintentionally
concluded or limited reexamination prosecution under 35 U.S.C. 41(a)(7)
(Sec. 1.137(b)):
By a small entity (Sec. 1.27(a)) - $665.00
By other than a small entity - $1,330.00
* * * * *
8. Section 1.19 is amended by revising paragraphs (b), (g), and (h)
to read as follows:
Sec. 1.19 Document supply fees.
* * * * *
(b) Certified and uncertified copies of Office documents:
(1) Certified or uncertified copy of the paper portion or the
electronic image equivalent to a paper portion of a patent application
as filed - $20.00
(2) Certified or uncertified copy on paper of the paper portion or
the electronic image equivalent of a patent-related file wrapper and
contents:
(i) Paper file wrapper with paper file wrapper contents of 400 or
fewer pages, or the entire electronic image contents portion, of a
patent application - $200.00
(ii) Additional fee for each additional 100 pages or portion
thereof of the paper contents of a paper file wrapper - $40.00
(iii) Additional fee for certification - $25.00
(3) Certified or uncertified copy on compact disc of patent-related
file wrapper contents:
(i) First compact disc in a single order - $55.00
(ii) Each additional compact disc in the single order of paragraph
(b)(3)(i) of this section - $15.00
(4) Certified or uncertified copy of Office records, per document
except as otherwise provided in this section - $25.00
(5) For assignment records, abstract of title and certification,
per patent - $25.00
* * * * *
(g) Copies of unscanned documents and documents on media not
permitted by Sec. 1.52(a) or (e) will be provided at cost.
(h) Requests for documents in a form other than that provided by
this part must be in writing in the form of a petition with the fee set
forth in Sec. 1.17(h) and will be provided at cost.
9. Section 1.27 is amended by revising paragraph (a) to read as
follows:
Sec. 1.27 Definition of small entities and establishing status as a
small entity to permit payment of small entity fees; when a
determination of entitlement to small entity status and notification of
loss of entitlement to small entity status are required; fraud on the
Office.
(a) Definition of small entities. A small entity as used in this
chapter means any party (person, small business concern, or nonprofit
organization) under paragraphs (a)(1) through (a)(3) of this section.
(1) Person. A person, as used in paragraph (c) of this section,
means any inventor or other individual (e.g., an individual to whom an
inventor has transferred some rights in the invention), who has not
assigned, granted, conveyed, or licensed, and is under no currently
enforceable obligation under contract or law to assign, grant, convey,
or license, any rights in the invention. An inventor or other
individual who has transferred some rights, or is under a currently
enforceable obligation to transfer some rights in the invention to one
or more parties, can also qualify for small entity status if all the
parties who have had rights in the invention transferred to them also
qualify for small entity status either as a person, small business
concern, or nonprofit organization under this section.
(2) Small business concern. A small business concern, as used in
paragraph (c) of this section, means any business concern that:
(i) Has not assigned, granted, conveyed, or licensed, and is under
no currently enforceable obligation under contract or law to assign,
grant, convey, or license, any rights in the invention to any person,
concern, or organization which would not qualify for small entity
status as a person, small business concern, or nonprofit organization;
and
(ii) Meets the size standards set forth in 13 CFR 121.801 through
121.805 to be eligible for reduced patent fees. Questions related to
standards for a small business concern may be directed to: Small
Business Administration, Size Standards Staff, 409 Third Street, SW.,
Washington, DC 20416.
(3) Nonprofit Organization. A nonprofit organization, as used in
paragraph (c) of this section, means any nonprofit organization that:
(i) Has not assigned, granted, conveyed, or licensed, and is under
no currently enforceable obligation under contract or law to assign,
grant, convey, or license, any rights in the invention to any person,
concern, or organization which would not qualify as a person, small
business concern, or a nonprofit organization; and
(ii) Is either:
(A) A university or other institution of higher education located
in any country;
(B) An organization of the type described in section 501(c)(3) of
the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from
taxation under section 501(a) of the Internal Revenue Code (26 U.S.C.
501(a));
(C) Any nonprofit scientific or educational organization qualified
under a nonprofit organization statute of a state of this country (35
U.S.C. 201(i)); or
(D) Any nonprofit organization located in a foreign country which
would qualify as a nonprofit organization under paragraphs
(a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it
were located in this country.
* * * * *
10. Section 1.47 is amended by revising paragraphs (a) and (b) to
read as follows:
Sec. 1.47 Filing when an inventor refuses to sign or cannot be
reached.
(a) If a joint inventor refuses to join in an application for
patent or cannot be found or reached after diligent effort, the
application may be made by the other inventor on behalf of himself or
herself and the nonsigning inventor. The oath or declaration in such an
application must be accompanied by a petition including proof of the
pertinent facts, the fee set forth in Sec. 1.17(g), and the last known
address of the nonsigning inventor. The nonsigning inventor may
subsequently join in the application by filing an oath or declaration
complying with Sec. 1.63.
(b) Whenever all of the inventors refuse to execute an application
for patent, or cannot be found or reached after diligent effort, a
person to whom an inventor has assigned or agreed in writing to assign
the invention, or who otherwise shows sufficient proprietary interest
in the matter justifying such action, may make application for patent
on behalf of and as agent for all the inventors. The oath or
declaration in such an application must be accompanied by a petition
including proof of the pertinent facts, a showing that such action is
necessary to preserve the rights of the parties or to prevent
irreparable damage, the fee set forth in Sec. 1.17(g), and the last
known address of all of the inventors. An inventor may subsequently
join in the application by filing an oath or declaration complying with
Sec. 1.63.
* * * * *
11. Section 1.52 is amended by revising the heading and paragraphs
(b)(1), (b)(2)(ii), (d)(1), (e)(1) and (e)(3)(i) to read as follows:
Sec. 1.52 Language, paper, writing, margins, compact disc
specifications.
* * * * *
(b) * * *
(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 that is signed by the individual who made the
translation.
(2) * * *
(ii) Text written in a nonscript type font (e.g., Arial, Times
Roman, or Courier, preferably a font size of 12) lettering style having
capital letters which should be at least 0.422 cm. (0.166 inch) high,
but may be no smaller than 0.21 cm. (0.08 inch) high; and
* * * * *
(d) * * *
(1) Nonprovisional application. If a nonprovisional application is
filed in a language other than English, an English language translation
of the non-English language application, a statement that the
translation is accurate that is signed by the individual who made the
translation, and the processing fee set forth in Sec. 1.17(i) are
required. If these items are not filed with the application, applicant
will be notified and given a period of time within which they must be
filed in order to avoid abandonment.
* * * * *
(e) * * *
(1) The following documents may be submitted to the Office on a
compact disc in compliance with this paragraph:
(i) A computer program listing (see Sec. 1.96);
(ii) A "Sequence Listing" (submitted under Sec. 1.821(c)); or
(iii) Any individual table (see Sec. 1.58) if the table is more
than 50 pages in length, or if the total number of pages of all of the
tables in an application exceeds 100 pages in length, where a table
page is a page printed on paper in conformance with paragraph (b) of
this section and Sec. 1.58(c).
(2) * * *
(3)(i) Each compact disc must conform to the International
Standards Organization (ISO) 9660 standard, and the contents of each
compact disc must be in compliance with the American Standard Code for
Information Interchange (ASCII). CD-R discs must be finalized so that
they are closed to further writing to the CD-R.
* * * * *
12. Section 1.53 is amended by revising paragraph (e)(2) to read as
follows:
Sec. 1.53 Application number, filing date, and completion of
application.
* * * * *
(e) * * *
(2) Any request for review of a notification pursuant to paragraph
(e)(1) of this section, or a notification that the original application
papers lack a portion of the specification or drawing(s), must be by
way of a petition pursuant to this paragraph accompanied by the fee set
forth in Sec. 1.17(f). In the absence of a timely (Sec. 1.181(f))
petition pursuant to this paragraph, the filing date of an application
in which the applicant was notified of a filing error pursuant to
paragraph (e)(1) of this section will be the date the filing error is
corrected.
* * * * *
13. Section 1.55 is amended by revising paragraphs (a)(1)(ii),
(a)(4), and (c) and adding paragraph (a)(1)(iii) to read as follows:
Sec. 1.55 Claim for foreign priority.
(a) * * *
(1) * * *
(ii) In an international application designating the United States,
the claim for priority must be made during the pendency of the
application and within the time limit set forth in the PCT and the
Regulations under the PCT.
(iii) If an application claiming the benefit of a prior foreign
application meets the twelve-month filing period requirement in 35
U.S.C. 119(a) only through one or more prior-filed nonprovisional
applications or international applications designating the United
States for which a benefit is claimed under 35 U.S.C. 120, 121, or
365(c) and 37 CFR 1.78(a), each such prior-filed application must also
contain a claim for priority in compliance with this section or the
Regulations under the PCT to the prior foreign application.
* * * * *
(4) An English language translation of a non-English language
foreign application is not required except when the application is
involved in an interference (Sec. 1.630), when necessary to overcome
the date of a reference relied upon by the examiner, or when
specifically required by the examiner. If an English language
translation is required, it must be filed together with
a statement that the translation of the certified copy is accurate that
is signed by the individual who made the translation.
* * * * *
(c) Unless such claim is accepted in accordance with the provisions
of this paragraph, any claim for priority under 35 U.S.C. 119(a)-(d),
365(a)-(b) not presented within the time period provided by paragraph
(a) of this section is considered to have been waived. If a claim for
priority under 35 U.S.C. 119(a)-(d), 365(a)-(b) is presented after the
time period provided by paragraph (a) of this section, the claim may be
accepted if the claim identifying the prior foreign application by
specifying its application number, country (or intellectual property
authority), and the day, month, and year of its filing was
unintentionally delayed. A petition to accept a delayed claim for
priority under 35 U.S.C. 119(a)-(d), 365(a)-(b) must be accompanied by:
(1) The claim under 35 U.S.C. 119(a)-(d), or 365(a)-(b) and this
section to the prior foreign application, unless previously submitted;
(2) The surcharge set forth in Sec. 1.17(t); and
(3) A statement that the entire delay between the date the claim
was due under paragraph (a)(1) of this section and the date the claim
was filed was unintentional. The Director may require additional
information where there is a question whether the delay was
unintentional.
14. A new Sec. 1.57 is added to read as follows:
Sec. 1.57 Incorporation by reference.
(a) Subject to the conditions and requirements of this paragraph,
if all or a portion of the specification or drawings is inadvertently
omitted from an application, but the application contains a claim under
Sec. 1.55 for priority of a prior-filed foreign application, or a
claim under Sec. 1.78 for the benefit of a prior-filed provisional,
nonprovisional, or international application, that was present on the
date of receipt of the application, and the omitted portion of the
specification or drawings is completely contained in the prior-filed
application, the claim under Secs. 1.55 or 1.78 shall also be
considered an incorporation by reference of the prior-filed
application.
(1) The application must be amended to include the omitted portion
of the specification or drawings within the time period set by the
Office, but in no case later than the close of prosecution as defined
by Sec. 1.114. The examiner may require the applicant to supply a copy
of the prior-filed application, to supply an English language
translation of any prior-filed application that is in a language other
than English, and to identify where the omitted portion of the
specification or drawings can be found in the prior-filed application.
(2) Any amendment to an international application pursuant to this
paragraph shall be effective only as to the United States. In addition,
no request to add the missing part of the description or the missing
drawing in an international application designating the United States
will be acted upon by the Office prior to the expiration of the
applicable time limit under PCT Article 22(1) or (2), or Article 39(a).
(3) If an application is not otherwise entitled to a filing date
under Sec. 1.53(b) or PCT Article 11, the amendment must be by way of
a petition pursuant to this paragraph accompanied by the fee set forth
in Sec. 1.17(f).
(b) Except as provided in paragraph (a) of this section, an
incorporation by reference must be identified by using the language
"incorporated by reference" and must identify the referenced patent,
application, or publication in the manner set forth in Sec. 1.98(b)(1)
through (b)(5).
(c) "Essential material" may be incorporated by reference, but
only by way of an incorporation by reference to a U.S. patent or U.S.
patent application publication, which patent or patent application
publication does not itself incorporate such essential material by
reference. "Essential material" is material that is necessary to:
(1) Provide a written description of the invention, and of the
manner and process of making and using it, in such full, clear,
concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make
and use the same, and set forth the best mode contemplated by the
inventor of carrying out the invention as required by the first
paragraph of 35 U.S.C. 112;
(2) Describe the claimed invention in terms that particularly point
out and distinctly claim the invention as required by the second
paragraph of 35 U.S.C. 112; or
(3) Describe the structure, material, or acts that correspond to a
means or step for performing a specified function as required by the
sixth paragraph of 35 U.S.C. 112.
(d) Other material ("Nonessential material") may be incorporated
by reference to domestic or foreign patents or published applications,
prior-filed commonly owned U.S. applications, or non-patent
publications. An incorporation by reference by hyperlink or other form
of browser executable code is not permitted.
(e) The examiner may require the applicant to supply a copy of the
material incorporated by reference. If the Office requires the
applicant to supply a copy of material incorporated by reference, the
material must be accompanied by a statement that the copy consists of
the same material incorporated by reference in the referencing
application.
(f) A purported incorporation of material by reference that does
not comply with the requirements of paragraphs (b) though (e) of this
section is not effective to incorporate such material by reference
unless corrected by the applicant in a timely manner.
15. Section 1.58 is revised to read as follows:
Sec. 1.58 Chemical and mathematical formulae and tables.
(a) The specification, including the claims, may contain chemical
and mathematical formulae, but shall not contain drawings or flow
diagrams. The description portion of the specification may contain
tables, if the tables are not also included in the drawings; claims may
contain tables either if necessary to conform to 35 U.S.C. 112 or if
otherwise found to be desirable.
(b) Tables that are submitted in electronic form (Secs.
1.96(c) and 1.821(c)) must maintain the spatial relationships (e.g.,
alignment of columns and rows) of the table elements when displayed so
as to visually preserve the relational information they convey.
Chemical and mathematical formulae must be encoded to maintain the
proper positioning of their characters when displayed in order to
preserve their intended meaning.
(c) Chemical and mathematical formulae and tables must be presented
in compliance with Sec. 1.52(a) and (b), except that chemical and
mathematical formulae or tables may be placed in a landscape
orientation if they cannot be presented satisfactorily in a portrait
orientation. Typewritten characters used in such formulae and tables
must be chosen from a block (nonscript) type font or lettering style
having capital letters which should be at least 0.422 cm. (0.166 inch)
(e.g., preferably Arial, Times Roman, or Courier with a font size of
12) high, but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a
font size of 6). A space at least 0.64 cm. (1/4 inch) high should be
provided between complex formulae and tables and the text. Tables
should have the lines and columns of data closely spaced to conserve
space, consistent with a high degree of legibility.
16. Section 1.59 is amended by revising paragraph (b) to read as
follows:
Sec. 1.59 Expungement of information or copy of papers in 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(g) 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.
* * * * *
17. Section 1.69 is amended by revising paragraph (b) to read as
follows:
Sec. 1.69 Foreign language oaths and declarations.
* * * * *
(b) Unless the text of any oath or declaration in a language other
than English is a form provided by the Patent and Trademark Office, it
must be accompanied by an English translation together with a statement
that the translation is accurate that is signed by the individual who
made the translation, except that in the case of an oath or declaration
filed under Sec. 1.63, the translation may be filed in the Office no
later than two months from the date applicant is notified to file the
translation.
18. Section 1.76 is amended by revising paragraphs (a) and (c)(2)
to read as follows:
Sec. 1.76 Application data sheet.
(a) Application data sheet. An application data sheet is a sheet or
sheets, that may be voluntarily submitted in either provisional or
nonprovisional applications, which contains bibliographic data,
arranged in a format specified by the Office. An application data sheet
must be titled "Application Data Sheet" and must contain all of the
section headings listed in paragraph (b) of this section, with any
appropriate data for each section heading. If an application data sheet
is provided, the application data sheet is part of the provisional or
nonprovisional application for which it has been submitted.
* * * * *
(c) * * *
(2) Must be titled "Supplemental Application Data Sheet," include
all of the section headings listed in paragraph (b) of this section,
include all appropriate data for each section heading, and identify the
information that is being changed (added, deleted, or modified).
* * * * *
19. Section 1.78 is amended by revising paragraph (a)(1),
(a)(2)(iii), (a)(5)(iii), (a)(5)(iv), and (c) to read as follows:
Sec. 1.78 Claiming benefit of earlier filing date and cross-
references to other applications.
(a)(1) A nonprovisional application or international application
designating the United States of America may claim an invention
disclosed in one or more prior-filed copending nonprovisional
applications or international applications designating the United
States of America. In order for an application to claim the benefit of
a prior-filed copending nonprovisional application or international
application designating the United States of America, each prior-filed
application must name as an inventor at least one inventor named in the
later-filed application and disclose the named inventor's invention
claimed in at least one claim of the later-filed application in the
manner provided by the first paragraph of 35 U.S.C. 112. In addition,
each prior-filed application must be:
(i) An international application entitled to a filing date in
accordance with PCT Article 11 and designating the United States of
America; or
(ii) Entitled to a filing date as set forth in Sec. 1.53(b) or
Sec. 1.53(d) and include the basic filing fee set forth in Sec. 1.16;
or
(iii) Entitled to a filing date as set forth in Sec. 1.53(b) and
have paid therein the processing and retention fee set forth in Sec.
1.21(l) within the time period set forth in Sec. 1.53(f).
(2) * * *
(iii) If the later-filed application is a nonprovisional
application, the reference required by this paragraph must be included
in an application data sheet (Sec. 1.76), or the specification must
contain or be amended to contain such reference in the first
sentence(s) following the title.
* * * * *
(5) * * *
(iii) If the later-filed application is a non-provisional
application, the reference required by this paragraph must be included
in an application data sheet (Sec. 1.76), or the specification must
contain or be amended to contain such reference in the first
sentence(s) following the title.
(iv) If the prior-filed provisional application was filed in a
language other than English and an English-language translation of the
prior-filed provisional application and a statement that the
translation is accurate that is signed by the individual who made the
translation were not previously filed in the prior-filed provisional
application or the later-filed nonprovisional application, applicant
will be notified and given a period of time within which to file an
English-language translation of the non-English-language prior-filed
provisional application and a statement that the translation is
accurate. In a pending nonprovisional application, failure to timely
reply to such a notice will result in abandonment of the application.
* * * * *
(c) If an application or a patent under reexamination and at least
one other application naming different inventors are owned by the same
person and contain conflicting claims, and there is no statement of
record indicating that the claimed inventions were commonly owned or
subject to an obligation of assignment to the same person at the time
the later invention was made, the Office may require the assignee to
state whether the claimed inventions were commonly owned or subject to
an obligation of assignment to the same person at the time the later
invention was made, and if not, indicate which named inventor is the
prior inventor. Even if the claimed inventions were commonly owned, or
subject to an obligation of assignment to the same person, at the time
the later invention was made, the conflicting claims may be rejected
under the doctrine of double patenting in view of such commonly owned
or assigned applications or patents under reexamination.
20. Section 1.83 is amended by revising paragraph (a) to read as
follows.
Sec. 1.83 Content of drawing.
(a) The drawing in a nonprovisional application must show every
feature of the invention specified in the claims. However, conventional
features disclosed in the description and claims, where their detailed
illustration is not essential for a proper understanding of the
invention, should be illustrated in the drawing in the form of a
graphical drawing symbol or a labeled representation (e.g., a labeled
rectangular box). In addition, tables and sequence listings that are
included in the specification are not permitted to be included in the
drawings.
* * * * *
21. Section 1.84 is amended by revising paragraphs (a)(2) and (c)
to read as follows:
Sec. 1.84 Standards for drawings.
(a) * * *
(2) Color. On rare occasions, color drawings may be necessary as
the only practical medium by which to disclose the subject matter sought
to be patented in a utility or design patent application or the subject
matter of a statutory invention registration. The color drawings must be
of sufficient quality such that all details in the drawings are
reproducible in black and white in the printed patent. Color drawings
are not permitted in international applications (see PCT Rule 11.13),
or in an application, or copy thereof, submitted under the Office
electronic filing system. The Office will accept color drawings in
utility or design patent applications and statutory invention
registrations only after granting a petition filed under this paragraph
explaining why the color drawings are necessary. Any such petition must
include the following:
(i) The fee set forth in Sec. 1.17(h);
(ii) Three (3) sets of color drawings; and
(iii) An amendment to the specification to insert (unless the
specification contains or has been previously amended to contain) the
following language as the first paragraph of the brief description of
the drawings:
The patent or application file contains at least one drawing
executed in color. Copies of this patent or patent application
publication with color drawing(s) will be provided by the Office upon
request and payment of the necessary fee.
* * * * *
(c) Identification of drawings. Identifying indicia should be
provided, and if provided, should include the title of the invention,
inventor's name, and application number, or docket number (if any) if
an application number has not been assigned to the application. If this
information is provided on the front of each sheet, it must be placed
to the left of the center within the top margin.
* * * * *
22. Section 1.91 is amended by adding paragraph (c) to read as
follows:
Sec. 1.91 Models or exhibits not generally admitted as part of
application or patent.
* * * * *
(c) Unless the model or exhibit substantially conforms to the
requirements of Sec. 1.52 or Sec. 1.84 under paragraph (a)(1) of this
section, it must be accompanied by photographs that show multiple views
of the material features of the model or exhibit and that substantially
conform to the requirements of Sec. 1.84.
23. Section 1.94 is revised to read as follows:
Sec. 1.94 Return of models, exhibits or specimens.
(a) Models, exhibits, or specimens may be returned to the applicant
if no longer necessary for the conduct of business before the Office.
When applicant is notified that a model, exhibit, or specimen is no
longer necessary for the conduct of business before the Office and will
be returned, applicant must arrange for the return of the model,
exhibit, or specimen at the applicant's expense. The Office will
dispose of perishables without notice to applicant unless applicant
notifies the Office upon submission of a perishable model, exhibit or
specimen that a return is desired and makes arrangements for its return
promptly upon notification by the Office that the perishable model,
exhibit or specimen is no longer necessary for the conduct of business
before the Office.
(b) Applicant is responsible for retaining the actual model,
exhibit, or specimen for the enforceable life of any patent resulting
from the application. The provisions of this paragraph do not apply to
a model or exhibit that substantially conforms to the requirements of
Sec. 1.52 or Sec. 1.84, where the model, exhibit or specimen has been
described by photographs that substantially conform to Sec. 1.84, or
where the model, exhibit or specimen is perishable.
(c) Where applicant is notified, pursuant to paragraph (a) of this
section, of the need to arrange for return of a model, exhibit or
specimen, applicant must arrange for the return within the period set
in such notice, to avoid disposal of the model, exhibit or specimen by
the Office. Extensions of time are available under Sec. 1.136, except
in the case of perishables. Failure to establish that the return of the
item has been arranged for within the period set or failure to have the
item removed from Office storage within a reasonable amount of time
notwithstanding any arrangement for return, will permit the Office to
dispose of the model, exhibit or specimen.
24. Section 1.98 is amended by revising paragraphs (a)(1), (a)(2),
and (e) to read as follows:
Sec. 1.98 Content of information disclosure statement.
(a) * * *
(1) A list of all patents, publications, applications, or other
information submitted for consideration by the Office. U.S. patents and
U.S. patent application publications must be listed in a section
separately from citations of other documents. Each page of the list
must include:
(i) The application number of the application in which the
information disclosure statement is being submitted;
(ii) A column that provides a space next to each document to be
considered for the examiner's initials; and
(iii) A heading that clearly indicates that the list is an
information disclosure statement.
(2) A legible copy of:
(i) Each patent;
(ii) Each publication or that portion which caused it to be listed;
(iii) For each cited pending unpublished U.S. application, the
application specification including the claims, and any drawing of the
application, or that portion of the application which caused it to be
listed including any claims directed to that portion; and
(iv) All other information or that portion which caused it to be
listed
* * * * *
(e) The requirement in paragraph (a)(2) of this section for a copy
of the U.S. patents or U.S. patent application publications listed in
an information disclosure statement does not apply:
(1) In any national patent application filed after June 30, 2003;
(2) In any international application that has entered the national
stage under 35 U.S.C. 371 after June 30, 2003; or
(3) In any information disclosure statement submitted in compliance
with the Office's electronic filing system.
25. Section 1.102 is amended by revising paragraph (c) to read as
follows:
Sec. 1.102 Advancement of examination.
* * * * *
(c) A petition to make an application special may be filed without
a fee if the basis for the petition is:
(1) The applicant's age or health; or
(2) That the invention will materially:
(i) Enhance the quality of the environment;
(ii) Contribute to the development or conservation of energy
resources; or
(iii) Contribute to countering terrorism.
* * * * *
26. Section 1.103 is amended by revising paragraph (a)(2) to read
as follows:
Sec. 1.103 Suspension of action by the Office.
(a) * * *
(2) The fee set forth in Sec. 1.17(g), unless such cause is the
fault of the Office.
* * * * *
27. Section 1.105 is amended by redesignating paragraph (a)(3) as
(a)(4) and revising it, and adding new paragraphs (a)(1)(viii) and
(a)(3) to read as follows:
Sec. 1.105 Requirements for information.
(a)(1) * * *
(viii) Technical information known to applicant. Technical
information known to applicant concerning the interpretation of the
related art, the disclosure, the claimed subject matter, other
information pertinent to patentability, or the accuracy of the
examiner's stated interpretation of such items.
* * * * *
(3) Requirements for information may be presented in any
appropriate form, for example:
(i) A requirement for documents;
(ii) Interrogatories in the form of specific questions seeking
applicant's knowledge; or
(iii) Stipulations in the form of statements with which the
applicant may agree or disagree.
(4) Any reply to a requirement for information, apart from
requirements for answers based on applicant's opinion, that states that
the information required to be submitted is unknown and/or is not
readily available to the party or parties from which it was requested
will be accepted as a complete reply. Any reply to a requirement for
answers based on applicant's opinion that states that an opinion is not
held by the party or parties from which it was requested will be
accepted as a complete reply.
* * * * *
28. Section 1.111 is amended by revising paragraph (a)(2) to read
as follows:
Sec. 1.111 Reply by applicant or patent owner to a non-final Office
action.
(a) * * *
(2) Supplemental replies. (i) A supplemental reply will not be
entered as matter of right except as provided in paragraph (a)(2)(ii)
of this section. The Office may enter a supplemental reply that is
filed before the expiration of the statutory period (i.e., within six
months from the mailing date of the non-final Office action) if the
supplemental reply is clearly limited to:
(A) Cancellation of a claim(s);
(B) Adoption of an examiner suggestion(s); or
(C) Placement of the application in condition for allowance.
(ii) A supplemental reply will be entered if the supplemental reply
is filed within the period during which action by the Office is
suspended under Sec. 1.103(a) through (c).
* * * * *
29. Section 1.115 is revised to read as follows:
Sec. 1.115 Preliminary amendments.
(a) A preliminary amendment is an amendment that is received in the
Office (see Sec. 1.6) on or before the mail date of the first Office
action under Sec. 1.104.
(b) A preliminary amendment submitted on or prior to the filing
date of an application is part of the original disclosure of the
application. If a preliminary amendment is determined to contain matter
not otherwise included in the contents of the originally filed
specification, including claims, and drawings, and the preliminary
amendment is not specifically referred to in the oath or declaration
under Sec. 1.63, a new oath or declaration in compliance with Sec.
1.63 will be required.
(c)(1) A preliminary amendment will be entered unless disapproved
by the Director.
(i) A preliminary amendment seeking cancellation of all the claims
without presenting any new or substitute claims will be disapproved.
However, for filing and fee calculation purposes, such an amendment
will cause the application to be treated as containing a single claim,
which would be the first independent claim.
(ii) A preliminary amendment may be disapproved if the preliminary
amendment unduly interferes with the preparation of a first Office
action in an application. Factors that will be considered in
disapproving a preliminary amendment include:
(A) The state of preparation of a first Office action as of the
date of receipt (see Sec. 1.6) of the preliminary amendment by the
Office; and
(B) The nature of any changes to the specification or claims that
would result from entry of the preliminary amendment.
(2) A preliminary amendment will not be disapproved under
(c)(1)(ii) of this section if it is filed no later than:
(i) Three months from the filing date of an application under Sec.
1.53(b);
(ii) The filing date of a continued prosecution application under
Sec. 1.53(d); or
(iii) Three months from the date the national stage is entered as
set forth in Sec. 1.491 in an international application.
(d) The time periods specified in paragraph (c)(2) of this section
are not extendable.
30. Section 1.116 is amended by revising paragraph (b) to read as
follows:
Sec. 1.116 Amendments after final action or appeal.
* * * * *
(b) After a final rejection or other final action (see Sec. 1.113)
in an application or in an ex parte reexamination filed under Sec.
1.510, or an action closing prosecution (see Sec. 1.949) in an inter
partes reexamination filed under Sec. 1.913, amendments may be made
canceling claims or complying with any requirement of form expressly
set forth in a previous Office action. Amendments presenting rejected
claims in better form for consideration on appeal may be admitted. The
admission of, or refusal to admit, any amendment after a final
rejection, a final action, an action closing prosecution, or any
related proceedings will not operate to relieve the application or
reexamination proceeding from its condition as subject to appeal or to
save the application from abandonment under Sec. 1.135, or the
reexamination prosecution from concluding under Sec. 1.550(d) or Sec.
1.957(b) or limitation of further prosecution under Sec. 1.957(c). No
amendment can be made in an inter partes reexamination proceeding after
the right of appeal notice under Sec. 1.953 except as provided for in
paragraph (d) of this section.
* * * * *
31. Section 1.131 is amended by revising paragraph (b) to read as
follows:
Sec. 1.131 Affidavit or declaration of prior invention.
* * * * *
(b) The showing of facts shall be such, in character and weight, as
to establish reduction to practice prior to the effective date of the
reference, or conception of the invention prior to the effective date
of the reference coupled with due diligence from prior to said date to
a subsequent reduction to practice or to the filing of the application.
Original exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their
absence must be satisfactorily explained.
32. Section 1.136 is amended by revising paragraph (b) to read as
follows:
Sec. 1.136 Extensions of time.
* * * * *
(b) When a reply cannot be filed within the time period set for
such reply and the provisions of paragraph (a) of this section are not
available, the period for reply will be extended only for sufficient
cause and for a reasonable time specified. Any request for an extension
of time under this paragraph must be filed on or before the day on
which such reply is due, but the mere filing of such a request will not
affect any extension under this paragraph. In no situation can any
extension carry the date on which reply is due beyond the maximum time
period set by statute. See Sec. 1.304 for extensions of time to appeal
to the U.S. Court of Appeals for the Federal Circuit or to commence a
civil action; Sec. 1.645 for extensions of time in interference
proceedings; Sec. 1.550(c) for extensions of time in ex parte
reexamination proceedings; and Sec. 1.956 for extensions of time in
inter partes reexamination proceedings. Any request under this section
must be accompanied by the petition fee set forth in Sec. 1.17(g).
* * * * *
33. Section 1.137 is amended by revising its heading, the
introductory text of paragraph (a), the introductory text of paragraph
(b), paragraphs (d)(3) and (e) to read as follows:
Sec. 1.137 Revival of abandoned application, concluded reexamination
prosecution, or lapsed patent.
(a) Unavoidable. If the delay in reply by applicant or patent owner
was unavoidable, a petition may be filed pursuant to this paragraph to
revive an abandoned application, a reexamination prosecution concluded
under Sec. 1.550(d) or Sec. 1.957(b) or limited as to further
prosecution under Sec. 1.957(c), or a lapsed patent. A grantable
petition pursuant to this paragraph must be accompanied by:
* * * * *
(b) Unintentional. If the delay in reply by applicant or patent
owner was unintentional, a petition may be filed pursuant to this
paragraph to revive an abandoned application, a reexamination
prosecution concluded under Sec. 1.550(d) or Sec. 1.957(b) or limited
as to further prosecution under Sec. 1.957(c), or a lapsed patent. A
grantable petition pursuant to this paragraph must be accompanied by:
* * * * *
(d) * * *
(3) The provisions of paragraph (d)(1) of this section do not apply
to applications for which revival is sought solely for purposes of
copendency with a utility or plant application filed on or after June
8, 1995, to lapsed patents, to reissue applications, or to
reexamination proceedings.
(e) Request for reconsideration. Any request for reconsideration or
review of a decision refusing to revive an abandoned application, a
concluded reexamination prosecution, or lapsed patent upon petition
filed pursuant to this section, to be considered timely, must be filed
within two months of the decision refusing to revive or within such
time as set in the decision. Unless a decision indicates otherwise,
this time period may be extended under:
(1) The provisions of Sec. 1.136 for an abandoned application or
lapsed patent;
(2) The provisions of Sec. 1.550(c) for a concluded ex parte
reexamination prosecution filed under Sec. 1.510; or
(3) The provisions of Sec. 1.956 for a concluded inter partes
reexamination prosecution or an inter partes reexamination limited as
to further prosecution filed under Sec. 1.913.
* * * * *
34. Section 1.165 is amended by revising paragraph (b) to read as
follows:
Sec. 1.165 Plant drawings.
* * * * *
(b) The drawings may be in color. The drawing must be in color if
color is a distinguishing characteristic of the new variety. Two copies
of color drawings or photographs must be submitted.
35. Section 1.173 is amended by revising paragraph (b) introductory
text to read as follows:
Sec. 1.173 Reissue specification, drawings, and amendments.
* * * * *
(b) Making amendments in a reissue application. An amendment in a
reissue application is made either by physically incorporating the
changes into the specification when the application is filed, or by a
separate amendment paper. If amendment is made by incorporation,
markings pursuant to paragraph (d) of this section must be used. If
amendment is made by an amendment paper, the paper must direct that
specified changes be made, as follows:
* * * * *
36. Section 1.175 is amended by adding a new paragraph (e) to read
as follows:
Sec. 1.175 Reissue oath or declaration.
* * * * *
(e) The filing of any continuing reissue application which does not
replace its parent reissue application must include an oath or
declaration which, pursuant to paragraph (a)(1) of this section,
identifies at least one error in the original patent which has not been
corrected by the parent reissue application or an earlier reissue
application. All other requirements relating to an oath or declaration
must also be met.
37. Section 1.178 is amended by revising paragraph (a) to read as
follows:
Sec. 1.178 Original patent; continuing duty of applicant.
(a) The application for reissue of a patent shall constitute an
offer to surrender that patent, and the surrender shall take effect
upon reissue of the patent. Until a reissue application is granted, the
original patent shall remain in effect.
* * * * *
Sec. 1.179 [Removed and Reserved].
38. Section 1.179 is removed and reserved.
39. Section 1.182 is revised to read as follows:
Sec. 1.182 Questions not specifically provided for.
All situations not specifically provided for in the regulations of
this part will be decided in accordance with the merits of each
situation by or under the authority of the Director, subject to such
other requirements as may be imposed, and such decision will be
communicated to the interested parties in writing. Any petition seeking
a decision under this section must be accompanied by the petition fee
set forth in Sec. 1.17(f).
40. Section 1.183 is revised to read as follows:
Sec. 1.183 Suspension of rules.
In an extraordinary situation, when justice requires, any
requirement of the regulations in this part which is not a requirement
of the statutes may be suspended or waived by the Director or the
Director's designee, sua sponte, or on petition of the interested
party, subject to such other requirements as may be imposed. Any
petition under this section must be accompanied by the petition fee set
forth in Sec. 1.17(f).
41. Section 1.213 is revised to read as follows:
Sec. 1.213 Nonpublication request; rescission of a nonpublication
request; notice of subsequent foreign filing.
(a) Nonpublication request and certification. If the invention
disclosed in an application has not been and will not be the subject of
an application filed in another country, or under a multilateral
international agreement, that requires publication of applications
eighteen months after filing, the application will not be published
under 35 U.S.C. 122(b) and Sec. 1.211 provided that:
(1) A request (nonpublication request) is submitted with the
application upon filing;
(2) The request states in a conspicuous manner that the application
is not to be published under 35'U.S.C. 122(b);
(3) The request contains a certification that the invention
disclosed in the application has not been and will not be the subject
of an application filed in another country, or under a multilateral
international agreement, that requires publication of applications at
eighteen months after filing; and
(4) The request is signed in compliance with Sec. 1.33(b). The
certification under 35 U.S.C. 122(b)(2)(B)(i) and paragraph (a)(3) of
this section is not appropriate unless the person signing the request
has made an actual inquiry consistent with the requirements of
Sec. 10.18(b) of this chapter with respect to the application to which
the request and certification pertains to determine that:
(i) The application has not been the subject of an application
filed in another country, or under a multilateral international
agreement, that requires publication of applications at eighteen months
after filing; and
(ii) The applicant's intent at the time the nonpublication request
is being filed is that the application will not be the subject of an
application filed in another country, or under a multilateral
international agreement, that requires publication of applications at
eighteen months after filing.
(b) Rescission of a nonpublication request. The applicant may
rescind a previously filed nonpublication request at any time. The mere
filing of a request under 35 U.S.C. 122(b)(2)(B)(ii) and this paragraph
to rescind a previously filed nonpublication request does not comply
with the notice requirement of 35 U.S.C. 122(b)(2)(B)(iii) and
paragraph (c) of this section. The provisions of Sec. 1.8 do not apply
in determining whether such an application has been filed before filing
a request under this paragraph to rescind a previously filed
nonpublication request. A request to rescind a nonpublication request
under paragraph (a) of this section must:
(1) Identify the application to which it is directed;
(2) State in a conspicuous manner that the request that the
application is not to be published under 35 U.S.C. 122(b) is rescinded;
and
(3) Be signed in compliance with Sec. 1.33(b). A request under
paragraph (b) of this section to rescind a nonpublication request is
not appropriate unless the person signing the request has made an
inquiry consistent with the requirements of Sec. 10.18(b) of this
chapter and determined that a nonpublication request under paragraph
(a) of this section was previously filed in the application in which
the request to rescind a nonpublication request is directed.
(c) Notification of subsequent foreign filing. An applicant who has
submitted a nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) and
paragraph (a) of this section, but before filing a request under 35
U.S.C. 122(b)(2)(B)(ii) and paragraph (b) of this section to rescind
the previously filed nonpublication request, files an application
directed to the invention disclosed in the application in which the
nonpublication request was submitted in another country, or under a
multilateral international agreement, that requires publication of
applications eighteen months after filing, must notify the Office of
such filing within forty-five days after the date of the filing in
another country, or under a multilateral international agreement. The
provisions of Sec. 1.8 do not apply in determining whether such an
application has been filed before filing a request under paragraph (b)
of this section to rescind a previously filed nonpublication request.
The mere filing of a request under 35 U.S.C. 122(b)(2)(B)(ii) and
paragraph (b) of this section to rescind a previously filed
nonpublication request does not comply with the notice requirement of
35 U.S.C. 122(b)(2)(B)(iii) and this paragraph. The failure to timely
notify the Office of the filing in another country, or under a
multilateral international agreement, shall result in abandonment of
the application in which the nonpublication request was submitted
(35'U.S.C. 122(b)(2)(B)(iii)).
(d) Publication after rescission or notice of foreign filing. If an
applicant who has submitted a nonpublication request under 35 U.S.C.
122(b)(2)(B)(i) and paragraph (a) of this section, subsequently files a
request under 35 U.S.C. 122(b)(2)(B)(ii) and paragraph (b) of this
section to rescind the nonpublication request or files a notice of a
filing in another country, or under a multilateral international
agreement, under 35 U.S.C. 122(b)(2)(B)(iii) and paragraph (c) of this
section, the application shall be published as soon as is practical
after the expiration of a period of eighteen months from the earliest
filing date for which a benefit is sought under title 35, United States
Code (35 U.S.C. 122(b)(2)(B)(iv)).
42. Section 1.215 is amended by revising paragraphs (a) and (c) to
read as follows:
Sec. 1.215 Patent application publication.
(a) The publication of an application under 35 U.S.C. 122(b) shall
include a patent application publication. The date of publication shall
be indicated on the patent application publication. The patent
application publication will be based upon the application papers
deposited on the filing date of the application, as well as the
executed oath or declaration submitted to complete the application, any
application papers or drawings submitted in reply to a preexamination
notice requiring a title and abstract in compliance with Sec. 1.72,
application papers in compliance with Sec. 1.52, drawings in
compliance with Sec. 1.84, or a sequence listing in compliance with
Secs. 1.821 through 1.825, and any replacement drawings received
with the processing fee set forth in Sec. 1.17(i) within the period
set forth in paragraph (c) of this section, except as otherwise
provided in this section. The patent application publication will not
include any amendments, including preliminary amendments, unless
applicant supplies a copy of the application containing the amendment
pursuant to paragraph (c) of this section.
* * * * *
(c) At applicant's option, the patent application publication will
be based upon the copy of the application (specification, drawings, and
oath or declaration) as amended during examination, provided that
applicant supplies such a copy in compliance with the Office electronic
filing system requirements within one month of the mailing date of the
first Office communication that includes a confirmation number for the
application, or within fourteen months of the earliest filing date for
which a benefit is sought under title 35, United States Code, whichever
is later.
* * * * *
43. Section 1.291 is revised to read as follows:
Sec. 1.291 Protests by the public against pending applications.
(a) A protest may be filed by a member of the public against a
pending application, and will be matched with the application file if
it adequately identifies the patent application to the extent that the
Office can timely match it. A protest which does not adequately
identify a pending patent application will not be considered by the
Office other than to return it to the protestor.
(b) Where the protest adequately identifies the patent application
to the extent that the Office can timely match it with an application,
the protest will be entered into the record of the application if it:
(1) Is submitted:
(i) Prior to the date the application was published under Sec.
1.211, or the notice of allowance under Sec. 1.311 was mailed,
whichever occurs first; or
(ii) At any time if it is accompanied by the written consent of the
applicant to the filing of the protest being submitted;
(2) Is served upon the applicant in accordance with Sec. 1.248, or
filed with the Office in duplicate in the event service is not
possible; and
(3) Includes a statement identifying the real party in interest on
whose behalf the protest is being filed to the extent necessary for
determination of whether a party who may file a subsequent protest is
in privity with the
identified real party in interest. Where anonymity of the real party in
interest is desired, the protestor may provide, in place of the
statement identifying the real party in interest, a substitute
statement that the protest is, to the best of the knowledge of the
submitting party, the first protest being submitted by the real party
in interest. The substitute statement must be accompanied by a
processing fee under Sec. 1.17(i).
(c) Where the protest is entered into the record of the
application, the items of information submitted with the protest, and
the argument directed toward such items, will be considered by the
examiner, if the protest includes:
(1) A listing of the patents, publications, or other information
relied upon;
(2) A concise explanation of the relevance of each item listed
pursuant to paragraph (c)(1);
(3) A copy of each listed patent, publication, or other item of
information in written form, or at least the pertinent portions
thereof;
(4) An English language translation of all the necessary and
pertinent parts of any non-English language patent, publication, or
other item of information relied upon; and
(5) If a second or subsequent protest by the same party, an
explanation why the additional art issues are significantly different
and why they were not earlier presented.
(d) A member of the public filing a protest in an application under
this section will not receive any communication from the Office
relating to the protest, other than the return of a self-addressed
postcard which the member of the public may include with the protest in
order to receive an acknowledgment by the Office that the protest has
been received. The limited involvement of the member of the public
filing a protest pursuant to this section ends with the filing of the
protest, and no further submission on behalf of the protestor will be
considered, unless the submission is accompanied by an explanation
pursuant to paragraph (c)(5) of this section.
(e) Where a protest raising inequitable conduct issues satisfies
the provisions of this section for entry, it will be entered into the
application file, generally without comment on the inequitable conduct
issues raised in it.
(f) In the absence of a request by the Office, an applicant has no
duty to, and need not, reply to a protest.
(g) In order for a protest submitted after the application
publication date to be accepted, the protest must be accompanied by the
written consent of the applicant to the filing of the protest being
submitted.
44. Section 1.295 is amended by revising paragraph (a) to read as
follows:
Sec. 1.295 Review of decision finally refusing to publish a statutory
invention registration.
(a) Any requester who is dissatisfied with the final refusal to
publish a statutory invention registration for reasons other than
compliance with 35 U.S.C. 112 may obtain review of the refusal to
publish the statutory invention registration by filing a petition to
the Director accompanied by the fee set forth in Sec. 1.17(g) within
one month or such other time as is set in the decision refusing
publication. Any such petition should comply with the requirements of
Sec. 1.181(b). The petition may include a request that the petition
fee be refunded if the final refusal to publish a statutory invention
registration for reasons other than compliance with 35 U.S.C. 112 is
determined to result from an error by the Patent and Trademark Office.
* * * * *
45. Section 1.296 is revised to read as follows:
Sec. 1.296 Withdrawal of request for publication of statutory
invention registration.
A request for a statutory invention registration, which has been
filed, may be withdrawn prior to the date on which the notice of the
intent to publish a statutory invention registration issued pursuant to
Sec. 1.294(c) by filing a request to withdraw the request for
publication of a statutory invention registration. The request to
withdraw may also include a request for a refund of any amount paid in
excess of the application filing fee and a handling fee of $130.00
which will be retained. Any request to withdraw the request for
publication of a statutory invention registration filed on or after the
date on which the notice of intent to publish issued pursuant to Sec.
1.294(c) must be in the form of a petition accompanied by the fee set
forth in Sec. 1.17(g).
46. Section 1.311 is amended by revising paragraph (b) to read as
follows:
Sec. 1.311 Notice of allowance.
* * * * *
(b) An authorization to charge the issue fee or other post-
allowance fees set forth in Sec. 1.18 to a deposit account may be
filed in an individual application only after mailing of the notice of
allowance. The submission of either of the following after the mailing
of a notice of allowance will operate as a request to charge the
correct issue fee or any publication fee due to any deposit account
identified in a previously filed authorization to charge such fees:
(1) An incorrect issue fee or publication fee; or
(2) A fee transmittal form (or letter) for payment of issue fee or
publication fee.
47. Section 1.324 is amended by revising paragraph (a) and the
introductory text of paragraph (b) to read as follows:
Sec. 1.324 Correction of inventorship in patent, pursuant to 35
U.S.C. 256.
(a) Whenever through error a person is named in an issued patent as
the inventor, or through error an inventor is not named in an issued
patent and such error arose without any deceptive intention on his or
her part, the Director, pursuant to 35 U.S.C. 256, may, on application
of all the parties and assignees, or on order of a court before which
such matter is called in question, issue a certificate naming only the
actual inventor or inventors. A request to correct inventorship of a
patent involved in an interference must comply with the requirements of
this section and must be accompanied by a motion under Sec. 1.634.
(b) Any request to correct inventorship of a patent pursuant to
paragraph (a) of this section must be accompanied by:
* * * * *
48. Section 1.377 is amended by revising paragraph (b) to read as
follows:
Sec. 1.377 Review of decision refusing to accept and record payment
of a maintenance fee filed prior to expiration of patent.
* * * * *
(b) Any petition under this section must be filed within 2 months
of the action complained of, or within such other time as may be set in
the action complained of, and must be accompanied by the fee set forth
in Sec. 1.17(g). The petition may include a request that the petition
fee be refunded if the refusal to accept and record the maintenance fee
is determined to result from an error by the Patent and Trademark
Office.
* * * * *
49. Section 1.378 is amended by revising paragraph (e) to read as
follows:
Sec. 1.378 Acceptance of delayed payment of maintenance fee in
expired patent to reinstate patent.
* * * * *
(e) Reconsideration of a decision refusing to accept a maintenance
fee upon petition filed pursuant to paragraph (a) of this section may
be obtained by filing a petition for reconsideration within two months of,
or such other time as set in, the decision refusing to accept the
delayed payment of the maintenance fee. Any such petition for
reconsideration must be accompanied by the petition fee set forth in
Sec. 1.17(f). After decision on the petition for reconsideration, no
further reconsideration or review of the matter will be undertaken by
the Director. If the delayed payment of the maintenance fee is not
accepted, the maintenance fee and the surcharge set forth in Sec.
1.20(i) will be refunded following the decision on the petition for
reconsideration, or after the expiration of the time for filing such a
petition for reconsideration, if none is filed. Any petition fee under
this section will not be refunded unless the refusal to accept and
record the maintenance fee is determined to result from an error by the
Patent and Trademark Office.
50. Section 1.502 is revised to read as follows:
Sec. 1.502 Processing of prior art citations during an ex parte
reexamination proceeding.
Citations by the patent owner under Sec. 1.555 and by an ex parte
reexamination requester under either Sec. 1.510 or Sec. 1.535 will be
entered in the reexamination file during a reexamination proceeding.
The entry in the patent file of citations submitted after the date of
an order to reexamine pursuant to Sec. 1.525 by persons other than the
patent owner, or an ex parte reexamination requester under either Sec.
1.510 or Sec. 1.535, will be delayed until the reexamination
proceeding has been terminated by the issuance and publication of a
reexamination certificate. See Sec. 1.902 for processing of prior art
citations in patent and reexamination files during an inter partes
reexamination proceeding filed under Sec. 1.913.
51. Section 1.530 is amended by revising paragraph (k) to read as
follows:
Sec. 1.530 Statement by patent owner in ex parte reexamination;
amendment by patent owner in ex parte or inter partes reexamination;
inventorship change in ex parte or inter partes reexamination.
* * * * *
(k) Amendments not effective until certificate. Although the Office
actions will treat proposed amendments as though they have been
entered, the proposed amendments will not be effective until the
reexamination certificate is issued and published.
* * * * *
52. Section 1.550 is amended by revising paragraphs (c) and (d) to
read as follows:
Sec. 1.550 Conduct of ex parte reexamination proceedings.
* * * * *
(c) The time for taking any action by a patent owner in an ex parte
reexamination proceeding will be extended only for sufficient cause and
for a reasonable time specified. Any request for such extension must be
filed on or before the day on which action by the patent owner is due,
but in no case will the mere filing of a request effect any extension.
Any request for such extension must be accompanied by the petition fee
set forth in Sec. 1.17(g). See Sec. 1.304(a) for extensions of time
for filing a notice of appeal to the U.S. Court of Appeals for the
Federal Circuit or for commencing a civil action.
(d) If the patent owner fails to file a timely and appropriate
response to any Office action or any written statement of an interview
required under Sec. 1.560(b), the prosecution in the ex parte
reexamination proceeding will be concluded, and the Director will
proceed to issue and publish a certificate terminating the
reexamination proceeding under Sec. 1.570 in accordance with the last
action of the Office.
* * * * *
53. Section 1.570 is amended by revising its heading and paragraphs
(a), (b) and (d) to read as follows:
Sec. 1.570 Issuance and publication of ex parte reexamination
certificate terminates ex parte reexamination proceeding.
(a) To terminate an ex parte reexamination proceeding, the Director
will issue and publish an ex parte reexamination certificate in
accordance with 35 U.S.C. 307 setting forth the results of the ex parte
reexamination proceeding and the content of the patent following the ex
parte reexamination proceeding.
(b) An ex parte reexamination certificate will be issued and
published in each patent in which an ex parte reexamination proceeding
has been ordered under Sec. 1.525 and has not been merged with any
inter partes reexamination proceeding pursuant to Sec. 1.989(a). Any
statutory disclaimer filed by the patent owner will be made part of the
ex parte reexamination certificate.
* * * * *
(d) If an ex parte reexamination certificate has been issued and
published which cancels all of the claims of the patent, no further
Office proceedings will be conducted with that patent or any reissue
applications or any reexamination requests relating thereto.
* * * * *
54. Section 1.644 is amended by revising paragraphs (e) and (f) to
read as follows:
Sec. 1.644 Petitions in interferences.
* * * * *
(e) Any petition under paragraph (a) of this section shall be
accompanied by the petition fee set forth in Sec. 1.17(f).
(f) Any request for reconsideration of a decision by the Director
shall be filed within 14 days of the decision of the Director and must
be accompanied by the fee set forth in Sec. 1.17(f). No opposition to
a request for reconsideration shall be filed unless requested by the
Director. The decision will not ordinarily be modified unless such an
opposition has been requested by the Director.
* * * * *
55. Section 1.666 is amended by revising paragraphs (b) and (c) to
read as follows:
Sec. 1.666 Filing of interference settlement agreements.
* * * * *
(b) If any party filing the agreement or understanding under
paragraph (a) of this section so requests, the copy will be kept
separate from the file of the interference, and made available only to
Government agencies on written request, or to any person upon petition
accompanied by the fee set forth in Sec. 1.17(f) and on a showing of
good cause.
(c) Failure to file the copy of the agreement or understanding
under paragraph (a) of this section will render permanently
unenforceable such agreement or understanding and any patent of the
parties involved in the interference or any patent subsequently issued
on any application of the parties so involved. The Director may,
however, upon petition accompanied by the fee set forth in Sec.
1.17(f) and on a showing of good cause for failure to file within the
time prescribed, permit the filing of the agreement or understanding
during the six-month period subsequent to the termination of the
interference as between the parties to the agreement or understanding.
56. Section 1.704 is amended by revising paragraph (d) to read as
follows.
Sec. 1.704 Reduction of period of adjustment of patent term.
* * * * *
(d) A paper containing only an information disclosure statement in
compliance with Secs. 1.97 and 1.98 will not be considered a
failure to engage in reasonable efforts to conclude prosecution
(processing or examination)
of the application under paragraphs (c)(6), (c)(8), (c)(9), or (c)(10)
of this section if it is accompanied by a statement that each item of
information contained in the information disclosure statement was first
cited in any communication from a foreign patent office in a
counterpart application and that this communication was not received by
any individual designated in Sec. 1.56(c) more than thirty days prior
to the filing of the information disclosure statement. This thirty-day
period is not extendable.
* * * * *
57. Section 1.705 is amended by revising paragraph (d) to read as
follows:
Sec. 1.705 Patent term adjustment determination.
* * * * *
(d) If there is a revision to the patent term adjustment indicated
in the notice of allowance, the patent will indicate the revised patent
term adjustment. If the patent indicates a revised patent term
adjustment, any request for reconsideration of the patent term
adjustment indicated in the patent must be filed within thirty days of
the date the patent issued and must comply with the requirements of
paragraphs (b)(1) and (b)(2) of this section. Any request for
reconsideration under this section that raises issues that were raised,
or could have been raised, in an application for patent term adjustment
under paragraph (b) of this section may be dismissed as untimely.
* * * * *
58. Section 1.741 is amended by revising paragraph (b) to read as
follows:
Sec. 1.741 Complete application given a filing date; petition
procedure.
* * * * *
(b) If an application for extension of patent term is incomplete
under this section, the Office will so notify the applicant. If
applicant requests review of a notice that an application is
incomplete, or review of the filing date accorded an application under
this section, applicant must file a petition pursuant to this paragraph
accompanied by the fee set forth in Sec. 1.17(f) within two months of
the mail date of the notice that the application is incomplete, or the
notice according the filing date complained of. Unless the notice
indicates otherwise, this time period may be extended under the
provisions of Sec. 1.136.
59. Section 1.902 is revised to read as follows:
Sec. 1.902 Processing of prior art citations during an inter partes
reexamination proceeding.
Citations by the patent owner in accordance with Sec. 1.933 and by
an inter partes reexamination third party requester under Sec. 1.915
or Sec. 1.948 will be entered in the inter partes reexamination file.
The entry in the patent file of other citations submitted after the
date of an order for reexamination pursuant to Sec. 1.931 by persons
other than the patent owner, or the third party requester under either
Sec. 1.915 or Sec. 1.948, will be delayed until the inter partes
reexamination proceeding has been terminated by the issuance and
publication of a reexamination certificate. See Sec. 1.502 for
processing of prior art citations in patent and reexamination files
during an ex parte reexamination proceeding filed under Sec. 1.510.
60. Section 1.953 is amended by revising paragraph (c) to read as
follows:
Sec. 1.953 Examiner's Right of Appeal Notice in inter partes
reexamination.
* * * * *
(c) The Right of Appeal Notice shall be a final action, which
comprises a final rejection setting forth each ground of rejection and/
or final decision favorable to patentability including each
determination not to make a proposed rejection, an identification of
the status of each claim, and the reasons for decisions favorable to
patentability and/or the grounds of rejection for each claim. No
amendment can be made in response to the Right of Appeal Notice. The
Right of Appeal Notice shall set a one-month time period for either
party to appeal. If no notice of appeal is filed, prosecution in the
inter partes reexamination proceeding will be concluded, and the
Director will proceed to issue and publish a certificate under Sec.
1.997 in accordance with the Right of Appeal Notice.
61. The subheading immediately preceding Sec. 1.956 is revised to
read as follows:
EXTENSIONS OF TIME, CONCLUDING OF REEXAMINATION PROSECUTION, AND
PETITIONS TO REVIVE IN INTER PARTES REEXAMINATION
62. Section 1.956 is revised to read as follows:
Sec. 1.956 Patent owner extensions of time in inter partes
reexamination.
The time for taking any action by a patent owner in an inter partes
reexamination proceeding will be extended only for sufficient cause and
for a reasonable time specified. Any request for such extension must be
filed on or before the day on which action by the patent owner is due,
but in no case will the mere filing of a request effect any extension.
Any request for such extension must be accompanied by the petition fee
set forth in Sec. 1.17(g). See Sec. 1.304(a) for extensions of time
for filing a notice of appeal to the U.S. Court of Appeals for the
Federal Circuit.
63. Section 1.957 is amended by revising paragraph (b) to read as
follows:
Sec. 1.957 Failure to file a timely, appropriate or complete response
or comment in inter partes reexamination.
* * * * *
(b) If no claims are found patentable, and the patent owner fails
to file a timely and appropriate response in an inter partes
reexamination proceeding, the prosecution in the reexamination
proceeding will be concluded and the Director will proceed to issue and
publish a certificate terminating the reexamination proceeding under
Sec. 1.997 in accordance with the last action of the Office.
* * * * *
64. Section 1.958 is amended by revising its heading to read as
follows:
Sec. 1.958 Petition to revive inter partes reexamination prosecution
concluded for lack of patent owner response.
* * * * *
65. Section 1.979 is amended by revising paragraph (f) to read as
follows:
Sec. 1.979 Action following decision by the Board of Patent Appeals
and Interferences or dismissal of appeal in inter partes reexamination.
* * * * *
(f) An appeal by a third party requester is considered terminated
by the dismissal of the third party requester's appeal, the failure of
the third party requester to timely request rehearing under Sec.
1.979(a) or (c), or a final decision under Sec. 1.979(e). The date of
such termination is the date on which the appeal is dismissed, the date
on which the time for rehearing expires, or the date on which the
decision of the Board of Patent Appeals and Interferences is final. An
appeal by the patent owner is considered terminated by the dismissal of
the patent owner's appeal, the failure of the patent owner to timely
request rehearing under Sec. 1.979(a) or (c), or the failure of the
patent owner to timely file an appeal to the U.S. Court of Appeals for
the Federal Circuit under Sec. 1.983. The date of such termination is
the date on which the appeal is dismissed, the date on which the time
for rehearing expires, or the date on which the time for the patent
owner's appeal to the U.S. Court of Appeals for the Federal Circuit
expires. If an appeal to the U.S. Court of Appeals for the Federal
Circuit has been filed, the patent owner's appeal is considered
terminated when the mandate is issued by the Court. Upon termination of
an appeal, if no other appeal is present, the prosecution in the
reexamination proceeding will be concluded and the Director will issue
and publish a certificate under Sec. 1.997 terminating the
reexamination proceeding.
* * * * *
66. Section 1.997 is amended by revising its heading and paragraphs
(a), (b), and (d) to read as follows:
Sec. 1.997 Issuance and publication of inter partes reexamination
certificate terminates inter partes reexamination proceeding.
(a) To terminate an inter partes reexamination proceeding, the
Director will issue and publish an inter partes reexamination
certificate in accordance with 35 U.S.C. 316 setting forth the results
of the inter partes reexamination proceeding and the content of the
patent following the inter partes reexamination proceeding.
(b) A certificate will be issued and published in each patent in
which an inter partes reexamination proceeding has been ordered under
Sec. 1.931. Any statutory disclaimer filed by the patent owner will be
made part of the certificate.
* * * * *
(d) If a certificate has been issued and published which cancels
all of the claims of the patent, no further Office proceedings will be
conducted with that patent or any reissue applications or any
reexamination requests relating thereto.
* * * * *
PART 5 - SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND
FILE APPLICATIONS IN FOREIGN COUNTRIES
67. The authority citation for 37 CFR part 5 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 41, 181-188, as amended by the
Patent Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418,
102 Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C.
2751 et seq.; the Atomic Energy Act of 1954, as amended, 42 U.S.C.
2011 et seq.; the Nuclear Non-Proliferation Act of 1978, 22 U.S.C.
3201 et seq.; and the delegations in the regulations under these
Acts to the Director (15 CFR 370.10(j), 22 CFR 125.04, and 10 CFR
810.7).
68. Section 5.12 is amended by revising paragraph (b) to read as
follows:
Sec. 5.12 Petition for license.
* * * * *
(b) A petition for license must include the fee set forth in Sec.
1.17(g) of this chapter, the petitioner's address, and full
instructions for delivery of the requested license when it is to be
delivered to other than the petitioner. The petition should be
presented in letter form.
69. Section 5.15 is amended by revising paragraph (c) to read as
follows:
Sec. 5.15 Scope of license.
* * * * *
(c) A license granted under Sec. 5.12(b) pursuant to Sec. 5.13 or
Sec. 5.14 shall have the scope indicated in paragraph (a) of this
section, if it is so specified in the license. A petition, accompanied
by the required fee (Sec. 1.17(g)), may also be filed to change a
license having the scope indicated in paragraph (b) of this section to
a license having the scope indicated in paragraph (a) of this section.
No such petition will be granted if the copy of the material filed
pursuant to Sec. 5.13 or any corresponding United States application
was required to be made available for inspection under 35 U.S.C. 181.
The change in the scope of a license will be effective as of the date
of the grant of the petition.
* * * * *
70. Section 5.25 is amended by revising paragraph (a)(4) to read as
follows:
Sec. 5.25 Petition for retroactive license.
(a) * * *
(4) The required fee (see Sec. 1.17(g)). The explanation in
paragraph (a)(3)(iii) must include a showing of facts rather than a
mere allegation of action through error and without deceptive intent.
The showing of facts as to the nature of the error should include
statements by those persons having personal knowledge of the acts
regarding filing in a foreign country and should be accompanied by
copies of any necessary supporting documents such as letters of
transmittal or instructions for filing. The acts which are alleged to
constitute error without deceptive intent should cover the period
leading up to and including each of the proscribed foreign filings.
* * * * *
September 4, 2003 JON W. DUDAS
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the
United States Patent and Trademark Office