Please use your
key to return to the previous page.
| Patent Cooperation Treaty (PCT) Information |
Patent Cooperation Treaty (PCT) Information
For information concerning PCT member countries, see the notice
appearing in the Official Gazette at 1369 O.G. 5, on August 2, 2011.
For information on subject matter under Rule 39 that a particular
International Searching Authority will not search, see Annex D of the PCT
Applicants' Guide.
European Patent Office as Searching and Examining Authority
The European Patent Office (EPO) may act as the International Searching
Authority (ISA) or the International Preliminary Examining Authority (IPEA)
for an international application filed with the United States Receiving
Office or the International Bureau (IB) as Receiving Office where at least
one of the applicants is either a national or resident of the United States
of America. However, the use of the EPO is restricted. The EPO will not act
as an ISA for applications with one or more claims directed to a business
method. For the definition of what the EPO considers to be precluded
subject matter in the field of business methods, see PCT Applicants's
Guide, Annexes D(EP), E(EP) and the Official Notices (PCT Gazette) dated
May 6, 2010, page 94
(http://www.wipo.int/pct/en/official_notices/index.html). The EPO will act
as an IPEA only if it also acted as the ISA.
The search fee of the European Patent Office was increased, effective
April 1, 2012, and was announced in the Official Gazette at 1377 O.G. 5, on
April 3, 2012.
Korean Intellectual Property Office as Searching and Examining Authority
The Korean Intellectual Property Office may act as the ISA or the IPEA for
an international application filed with the United States Receiving Office
or the International Bureau (IB) as Receiving Office where at least one of
the applicants is either a national or resident of the United States of
America. The announcement appears in the Official Gazette at 1302 O.G.
1261 on January 17, 2006.
The search fee of the Korean Intellectual Property Office was decreased,
effective January 1, 2012, and was announced in the Official Gazette at
1373 O.G. 177, on December 27, 2011.
Australian Patent Office as Searching and Examining Authority
The Australian Patent Office (IP Australia) may act as the ISA or the
IPEA for an international application filed with the United States
Receiving Office or the International Bureau (IB) as Receiving Office where
at least one of the applicants is either a national or resident of the
United States of America. The announcement appears in the Offical Gazette
at 1337 O.G. 265, on December 23, 2008. However, the use of IP Australia is
restricted. IP Australia will not act as an ISA for applications with one
or more claims directed to the fields of business methods or mechanical
engineering or analogous fields of technology as defined by specified areas
of the International Patent Classification System, as indicated in the
Official Gazette at 1337 O.G. 261 on December 23, 2008, in Annex A to the
agreement between the USPTO and IP Australia, IP Australia will act as an
IPEA only if it also acted as the ISA.
The search fee of IP Australia was increased, effective July 1, 2012,
and was announced in the Official Gazette at 1380 O.G. 5, on July 3, 2012.
The Federal Service on Intellectual Property, Patents & Trademarks of
Russia as Searching and Examining Authority
The Federal Service on Intellectual Property, Patents & Trademarks of
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 62 |
Russia (Rospatent) may act as the ISA or the IPEA for an international
application filed with the United States Receiving Office or the
International Bureau (IB) as Receiving Office where at least one of the
applicants is either a national or resident of the United States of
America. The announcement appears in the Official Gazette at 1378 O.G. 162,
on May 8, 2012.
The search fee of Rospatent was increased, effective June 1, 2012, and
was announced in the Official Gazette at 1378 O.G. 162, on May 8, 2012.
Fees
The transmittal fee for the USPTO was changed to include a basic portion
and a non-electronic filing fee portion, effective November 15, 2011, and
was announced in the Federal Register on November 15, 2011. Search fees for
the USPTO were changed, effective January 12, 2009, and were announced in
the Federal Register on November 12, 2008. The fee for filing a request for
the restoration of the right of priority was established, effective
November 9, 2007, and was announced in the Federal Register on September
10, 2007.
International filing fees were decreased, effective January 1, 2012,
and were announced in the Official Gazette at 1373 O.G. 177, on December
27, 2011.
The schedule of PCT fees (in U.S. dollars), as of July 1, 2012, is as
follows:
International Application (PCT Chapter I) fees:
Transmittal fee
Basic Portion $240.00
Non-electronic filing fee portion for international
applications (other than plant applications) filed
on or after 15 November 2011 other than by the
Office electronic filing system (other than a
small entity) $400.00
Non-electronic filing fee portion for international
applications (other than plant applications) filed
on or after 15 November 2011 other than by the
Office electronic filing system (small entity) $200.00
Search fee
U.S. Patent and Trademark Office (USPTO) as
International Searching Authority (ISA)
- Search fee $2,080.00
- Supplemental search fee, per additional
invention (payable only upon invitation) $2,080.00
European Patent Office as ISA $2,426.00
Korean Intellectual Property Office as ISA $1,101.00
IP Australia as ISA $2,254.00
Federal Service on Intellectual Property, Patents &
Trademarks of Russia (Rospatent) as ISA $453.00
International fees
International filing fee $1,453.00
International filing fee-filed in paper
with PCT EASY zip file or
electronically without PCT EASY zip file $1,344.00
International filing fee-filed
electronically with PCT EASY zip files $1,234.00
Supplemental fee for each page over 30 $16.00
Restoration of Priority
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 63 |
Filing a request for the restoration of the
right of priority under § 1.452 $1,410.00
International Application (PCT Chapter II) fees associated
with filing a Demand for Preliminary Examination:
Handling fee $219.00
Handling fee-90% reduction, if applicants meet criteria
specified at:
http://www.wipo.int/pct/en/fees/fee_reduction.pdf $21.90
Preliminary examination fee
USPTO as International Preliminary
Examining Authority (IPEA)
- USPTO was ISA in PCT Chapter I $600.00
- USPTO was not ISA in PCT Chapter I $750.00
- Additional preliminary examination fee,
per additional invention
(payable only upon invitation) $600.00
U.S. National Stage fees (for international applications entering
the U.S. national phase under 35 U.S.C. 371) can be found on the USPTO's
Web site (www.uspto.gov).
July 26, 2012 ANDREW H. HIRSHFELD
Deputy Commissioner for
Patent Examination Policy
United States Patent and Trademark Office
| Patent Cooperation Treaty (PCT) Update Accession by Brunei Darussalam and Panama |
Patent Cooperation Treaty (PCT) Update
Accession by Brunei Darussalam and Panama
The United States Patent and Trademark Office received notification from
the World Intellectual Property Organization (WIPO) that Brunei Darussalam
on April 24, 2012, and Panama on June 7, 2012, deposited their instruments
of accession to the PCT, and will become bound by the PCT on July 24, 2012,
and September 7, 2012, respectively. Consequently, any international
application filed on or after July 24, 2012, will automatically include the
designation of Brunei Darussalam (country code: BN), and any international
application filed on or after September 7, 2012, will automatically include
the designation of Panama (country code: PA). Nationals and residents of
Brunei Darussalam and Panama will be entitled, as from July 24, 2012, and
September 7, 2012, respectively, to file international applications under
the PCT.
Also, because Brunei Darussalam and Panama will be bound by Chapter II
of the PCT, they will automatically be elected in any demand for
international preliminary examination filed in respect of an international
application filed on or after July 24, 2012, and September 7, 2012,
respectively.
Listing of PCT Member Countries
Date of Deposit Entry into
Country Instrument of Instrument Force1
(1) Central African Accession 15 September 1971 24 January 1978
Republic2
(2) Senegal2 Ratification 08 March 1972 24 January 1978
(3) Madagascar Ratification 27 March 1972 24 January 1978
(4) Malawi4 Accession 16 May 1972 24 January 1978
(5) Cameroon2 Accession 15 March 1973 24 January 1978
(6) Chad2 Accession 12 February 1974 24 January 1978
(7) Togo2 Ratification 28 January 1975 24 January 1978
(8) Gabon2 Accession 06 March 1975 24 January 1978
(9) United States of Ratification 26 November 1975 24 January 1978
America
(10) Germany3 Ratification 19 July 1976 24 January 1978
(11) Congo2 Accession 08 August 1977 24 January 1978
(12) Switzerland3 Ratification 14 September 1977 24 January 1978
(13) United Kingdom3 Ratification 24 October 1977 24 January 1978
(14) France3 Ratification 25 November 1977 25 February 1978
(15) Russian Ratification 29 December 1977 29 March 1978
Federation5
(16) Brazil Ratification 09 January 1978 09 April 1978
(17) Luxembourg3 Ratification 31 January 1978 30 April 1978
(18) Sweden3 Ratification 17 February 1978 17 May 1978
(19) Japan Ratification 01 July 1978 01 October 1978
(20) Denmark3 Ratification 01 September 1978 01 December 1978
(21) Austria3 Ratification 23 January 1979 23 April 1979
(22) Monaco3 Ratification 22 March 1979 22 June 1979
(23) Netherlands3 Ratification 10 April 1979 10 July 1979
(24) Romania3 Ratification 23 April 1979 23 July 1979
(25) Norway3 Ratification 01 October 1979 01 January 1980
(26) Liechtenstein3 Accession 19 December 1979 19 March 1980
(27) Australia Accession 31 December 1979 31 March 1980
(28) Hungary3 Ratification 27 March 1980 27 June 1980
(29) Democratic Accession 08 April 1980 08 July 1980
People's Republic
of Korea (North Korea)
(30) Finland3 Ratification 01 July 1980 01 October 1980
(31) Belgium3 Ratification 14 September 1981 14 December 1981
(32) Sri Lanka Accession 26 November 1981 26 February 1982
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 65 |
(33) Mauritania2 Accession 13 January 1983 13 April 1983
(34) Sudan4 Accession 16 January 1984 16 April 1984
(35) Bulgaria3 Accession 21 February 1984 21 May 1984
(36) Republic of Korea Accession 10 May 1984 10 August 1984
(South Korea)
(37) Mali2 Accession 19 July 1984 19 October 1984
(38) Barbados Accession 12 December 1984 12 March 1985
(39) Italy3 Ratification 28 December 1984 28 March 1985
(40) Benin2 Accession 26 November 1986 26 February 1987
(41) Burkina Faso2 Accession 21 December 1988 21 March 1989
(42) Spain3 Accession 16 August 1989 16 November 1989
(43) Canada Ratification 02 October 1989 02 January 1990
(44) Greece3 Accession 09 July 1990 09 October 1990
(45) Poland3 Accession 25 September 1990 25 December 1990
(46) Cote d'Ivoire2 Ratification 31 January 1991 30 April 1991
(47) Guinea2 Accession 27 February 1991 27 May 1991
(48) Mongolia Accession 27 February 1991 27 May 1991
(49) Czech Republic3 Declaration4 18 December 1992 01 January 1993
(50) Ireland3 Ratification 01 May 1992 01 August 1992
(51) Portugal3 Accession 24 August 1992 24 November 1992
(52) New Zealand Accession 01 September 1992 01 December 1992
(53) Ukraine Declaration4 21 September 1992 25 December 1991
(54) Viet Nam Accession 10 December 1992 10 March 1993
(55) Slovakia3 Declaration4 30 December 1992 01 January 1993
(56) Niger2 Accession 21 December 1992 21 March 1993
(57) Kazakhstan5 Declaration4 16 February 1993 25 December 1991
(58) Belarus5 Declaration4 14 April 1993 25 December 1991
(59) Latvia3 Accession 07 June 1993 07 September 1993
(60) Uzbekistan Declaration4 18 August 1993 25 December 1991
(61) China Accession 01 October 1993 01 January 1994
(62) Slovenia3 Accession 01 December 1993 01 March 1994
(63) Trinidad and Accession 10 December 1993 10 March 1994
Tobago
(64) Georgia Declaration4 18 January 1994 25 December 1991
(65) Kyrgyzstan5 Declaration4 14 February 1994 25 December 1991
(66) Republic of Declaration4 14 February 1994 25 December 1991
Moldova5
(67) Tajikistan5 Declaration4 14 February 1994 25 December 1991
(68) Kenya4 Accession 08 March 1994 08 June 1994
(69) Lithuania3 Accession 05 April 1994 05 July 1994
(70) Armenia5 Declaration4 17 May 1994 25 December 1991
(71) Estonia3 Accession 24 May 1994 24 August 1994
(72) Liberia4 Accession 27 May 1994 27 August 1994
(73) Swaziland4 Accession 20 June 1994 20 September 1994
(74) Mexico Accession 01 October 1994 01 January 1995
(75) Uganda4 Accession 09 November 1994 09 February 1995
(76) Singapore Accession 23 November 1994 23 February 1995
(77) Iceland3 Accession 23 December 1994 23 March 1995
(78) Turkmenistan5 Declaration4 01 March 1995 25 December 1991
(79) The former Accession 10 May 1995 10 August 1995
Yugoslav Republic
of Macedonia3
(80) Albania3 Accession 04 July 1995 04 October 1995
(81) Lesotho4 Accession 21 July 1995 21 October 1995
(82) Azerbaijan5 Accession 25 September 1995 25 December 1995
(83) Turkey3 Accession 01 October 1995 01 January 1996
(84) Israel Ratification 01 March 1996 01 June 1996
(85) Cuba Accession 16 April 1996 16 July 1996
(86) Saint Lucia Accession 30 May 1996 30 August 1996
(87) Bosnia and Accession 07 June 1996 07 September 1996
Herzegovina
(88) Serbia3 Declaration4 19 September 2006 01 February 1997
(89) Ghana4 Accession 26 November 1996 26 February 1997
(90) Zimbabwe4 Accession 11 March 1997 11 June 1997
(91) Sierra Leone4 Accession 17 March 1997 17 June 1997
(92) Indonesia Accession 05 June 1997 05 September 1997
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 66 |
(93) Gambia4 Accession 09 September 1997 09 December 1997
(94) Guinea-Bissau2 Accession 12 September 1997 12 December 1997
(95) Cyprus3 Accession 01 January 1998 01 April 1998
(96) Croatia3 Accession 01 April 1998 01 July 1998
(97) Grenada Accession 22 June 1998 22 September 1998
(98) India Accession 07 September 1998 07 December 1998
(99) United Arab Accession 10 December 1998 10 March 1999
Emirates
(100) South Africa Accession 16 December 1998 16 March 1999
(101) Costa Rica Accession 03 May 1999 03 August 1999
(102) Dominica Accession 07 May 1999 07 August 1999
(103) United Republic Accession 14 June 1999 14 September 1999
of Tanzania4
(104) Morocco Accession 08 July 1999 08 October 1999
(105) Algeria Ratification 08 December 1999 08 March 2000
(106) Antigua and Accession 17 December 1999 17 March 2000
Barbuda
(107) Mozambique4 Accession 18 February 2000 18 May 2000
(108) Belize Accession 17 March 2000 17 June 2000
(109) Colombia Accession 29 November 2000 28 February 2001
(110) Ecuador Accession 07 February 2001 07 May 2001
(111) Equatorial Accession 17 April 2001 17 July 2001
Guinea2
(112) Philippines Accession 17 May 2001 17 August 2001
(113) Oman Accession 26 July 2001 26 October 2001
(114) Zambia4 Accession 15 August 2001 15 November 2001
(115) Tunisia Accession 10 September 2001 10 December 2001
(116) Saint Vincent Accession 6 May 2002 6 August 2002
and Grenadines
(117) Seychelles Accession 7 August 2002 7 November 2002
(118) Nicaragua Accession 6 December 2002 6 March 2003
(119) Papua New Guinea Accession 14 March 2003 14 June 2003
(120) Syrian Arab Accession 26 March 2003 26 June 2003
Republic
(121) Egypt Ratification 6 June 2003 6 September 2003
(122) Botswana4 Accession 30 July 2003 30 October 2003
(123) Namibia4 Accession 1 October 2003 1 January 2004
(124) San Marino3 Accession 14 September 2004 14 December 2004
(125) Comoros Accession 3 January 2005 3 April 2005
(126) Nigeria Accession 8 February 2005 8 May 2005
(127) Libyan Arab Accession 15 June 2005 15 September 2005
Jamahiriya
(128) Saint Kitts and Accession 27 July 2005 27 October 2005
Nevis
(129) Lao People's Accession 14 March 2006 14 June 2006
Democratic Republic
(130) Honduras Accession 20 March 2006 20 June 2006
(131) Malaysia Accession 16 May 2006 16 August 2006
(132) El Salvador Accession 17 May 2006 17 August 2006
(133) Guatemala Accession 14 July 2006 14 October 2006
(134) Malta3 Accession 1 December 2006 1 March 2007
(135) Montenegro Declaration4 4 December 2006 3 June 2006
(136) Bahrain Accession 18 December 2006 18 March 2007
(137) Dominican Accession 28 February 2007 28 May 2007
Republic
(138) Angola Accession 27 September 27 December 2007
(139) São Tomé and Accession 3 April 2008 3 July 2008
Principe
(140) Chile Accession 2 March 2009 2 June 2009
(141) Peru Accession 6 March 2009 6 June 2009
(142) Thailand Accession 24 September 2009 24 December 2009
(143) Qatar Accession 3 May 2011 3 August 2011
(144) Rwanda Accession 31 May 2011 31 August 2011
(145) Brunei Darussalam Accession 24 April 2012 24 July 2012
(146) Panama Accession 07 June 2012 07 September 2012
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 67 |
August 16, 2012 ANDREW H. HIRSHFELD
Deputy Commissioner for Patent Examination Policy
United States Patent and Trademark Office
1 Although the PCT entered into force on January 24, 1978, the Assembly of
the PCT Union fixed June 1, 1978, as the date from which international
applications could be filed and demands for international preliminary
examination could be submitted.
2 Member of African Intellectual Property Organization (OAPI) regional
patent system.
3 Member of European Patent Convention (EPC) regional patent system.
4 Member of African Regional Industrial Property Organization (ARIPO)
regional patent system.
5 Member of Eurasian Patent Organization (EAPO) regional patent system
| Notice of Maintenance Fees Payable |
Notice of Maintenance Fees Payable
Title 37 Code of Federal Regulations (CFR), Section 1.362(d) provides
that maintenance fees may be paid without surcharge for the six-month
period beginning 3, 7, and 11 years after the date of issue of patents
based on applications filed on or after Dec. 12, 1980. An additional
six-month grace period is provided by 35 U.S.C. 41(b) and 37 CFR 1.362(e)
for payment of the maintenance fee with the surcharge set forth in 37 CFR
1.20(h), as amended effective Dec. 16, 1991. If the maintenance fee is
not paid in the patent requiring such payment the patent will expire on
the 4th, 8th, or 12th anniversary of the grant.
Attention is drawn to the patents that were issued on September 1, 2009
for which maintenance fees due at 3 years and six months may now be paid
The patents have patent numbers within the following ranges:
Utility Patents 7,581,258 through 7,584,512
Reissue Patents based on the above identified patents.
Attention is drawn to the patents that were issued on August 30, 2005
for which maintenance fees due at 7 years and six months may now be paid
The patents have patent numbers within the following ranges:
Utility Patents 6,934,967 through 6,938,271
Reissue Patents based on the above identified patents.
Attention is drawn to the patents that were issued on August 28, 2001
for which maintenance fees due at 11 years and six months may now be paid.
The patents have patent numbers within the following ranges:
Utility Patents 6,279,159 through 6,282,715
Reissue Patents based on the above identified patents.
No maintenance fees are required for design or plant patents.
Payments of maintenance fees in patents may be submitted electronically
over the Internet at www.uspto.gov. Click on the "Site Index" link at the
top of the homepage (www.uspto.gov), and then scroll down and click on the
"Maintenance Fees" link for more information.
Payments of maintenance fees in patents not submitted electronically
over the Internet should be mailed to "United States Patent and Trademark
Office, P.O. Box 979070, St. Louis, MO 63197-9000".
Correspondence related to maintenance fees other than payments of
maintenance fees in patents is not to be mailed to P.O. Box 979070,
St. Louis, MO 63197-9000, but must be mailed to "Mail Stop M
Correspondence, Director of the U.S. Patent and Trademark Office, P.O.
Box 1450, Alexandria, VA 22313-1450".
Patent owners must establish small entity status according to 37 CFR
1.27 if they have not done so and if they wish to pay the small entity
amount.
The current amounts of the maintenance fees due at 3 years and six
months, 7 years and six months, and 11 years and six months are set forth
in the most recently amended provisions in 37 CFR 1.20(e)-(g). To obtain
the current maintenance fee amounts, please call the USPTO Contact Center
at (800)-786-9199 or see the current USPTO fee schedule posted on the USPTO
Internet web site. At the top of the USPTO homepage at www.uspto.gov, click
on the "Site Index" link and then scroll down and click on the "Fees,
USPTO" link to find the current USPTO fee schedule.
| Notice of Expiration of Patents Due to Failure to Pay Maintenance Fee |
Notice of Expiration of Patents
Due to Failure to Pay Maintenance Fee
35 U.S.C. 41 and 37 CFR 1.362(g) provide that if the required
maintenance fee and any applicable surcharge are not paid in a patent
requiring such payment, the patent will expire at the end of the 4th, 8th
or 12th anniversary of the grant of the patent depending on the first
maintenance fee which was not paid.
According to the records of the Office, the patents listed below have
expired due to failure to pay the required maintenance fee and any
applicable surcharge.
PATENTS WHICH EXPIRED ON July 25, 2012
DUE TO FAILURE TO PAY MAINTENANCE FEES
Patent Application Issue
Number Number Date
6,092,237 09/383,102 07/25/00
6,092,239 09/003,305 07/25/00
6,092,245 09/468,007 07/25/00
6,092,248 09/188,356 07/25/00
6,092,251 09/199,196 07/25/00
6,092,255 09/132,266 07/25/00
6,092,261 09/098,855 07/25/00
6,092,263 09/180,041 07/25/00
6,092,265 09/294,473 07/25/00
6,092,267 09/029,217 07/25/00
6,092,269 09/045,266 07/25/00
6,092,274 09/031,459 07/25/00
6,092,279 08/890,050 07/25/00
6,092,283 08/544,909 07/25/00
6,092,290 09/108,662 07/25/00
6,092,293 09/266,354 07/25/00
6,092,296 08/949,008 07/25/00
6,092,307 09/236,847 07/25/00
6,092,310 09/265,044 07/25/00
6,092,313 09/118,662 07/25/00
6,092,319 09/059,654 07/25/00
6,092,337 09/245,629 07/25/00
6,092,338 09/238,696 07/25/00
6,092,341 09/154,719 07/25/00
6,092,348 09/024,531 07/25/00
6,092,350 09/037,888 07/25/00
6,092,352 09/257,211 07/25/00
6,092,359 08/917,979 07/25/00
6,092,366 09/288,935 07/25/00
6,092,368 08/808,834 07/25/00
6,092,369 09/195,431 07/25/00
6,092,373 09/242,006 07/25/00
6,092,377 09/322,923 07/25/00
6,092,385 09/268,777 07/25/00
6,092,388 09/147,442 07/25/00
6,092,389 09/172,043 07/25/00
6,092,400 09/306,548 07/25/00
6,092,401 09/252,177 07/25/00
6,092,402 09/288,176 07/25/00
6,092,404 09/088,468 07/25/00
6,092,408 09/071,933 07/25/00
6,092,410 09/027,265 07/25/00
6,092,413 09/025,858 07/25/00
6,092,414 09/345,158 07/25/00
6,092,415 09/257,243 07/25/00
6,092,419 08/952,555 07/25/00
6,092,421 09/188,703 07/25/00
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 70 |
6,092,432 09/296,175 07/25/00
6,092,435 09/133,500 07/25/00
6,092,438 09/189,693 07/25/00
6,092,446 09/252,280 07/25/00
6,092,455 09/187,388 07/25/00
6,092,469 09/078,261 07/25/00
6,092,473 09/043,676 07/25/00
6,092,474 09/343,366 07/25/00
6,092,486 09/013,258 07/25/00
6,092,488 09/244,476 07/25/00
6,092,494 09/013,954 07/25/00
6,092,495 09/146,607 07/25/00
6,092,502 09/203,605 07/25/00
6,092,508 09/022,041 07/25/00
6,092,509 09/443,009 07/25/00
6,092,515 09/053,043 07/25/00
6,092,516 09/338,321 07/25/00
6,092,521 08/941,195 07/25/00
6,092,522 08/608,880 07/25/00
6,092,532 09/087,715 07/25/00
6,092,538 09/043,413 07/25/00
6,092,546 08/989,606 07/25/00
6,092,550 09/015,751 07/25/00
6,092,551 09/081,328 07/25/00
6,092,552 09/220,352 07/25/00
6,092,553 09/182,540 07/25/00
6,092,554 09/004,237 07/25/00
6,092,557 09/191,084 07/25/00
6,092,567 09/189,869 07/25/00
6,092,571 09/271,934 07/25/00
6,092,574 09/289,204 07/25/00
6,092,575 08/787,126 07/25/00
6,092,576 09/153,376 07/25/00
6,092,587 08/968,391 07/25/00
6,092,607 09/417,969 07/25/00
6,092,620 09/158,082 07/25/00
6,092,625 08/886,320 07/25/00
6,092,641 08/878,975 07/25/00
6,092,648 09/360,811 07/25/00
6,092,652 09/289,416 07/25/00
6,092,661 09/122,088 07/25/00
6,092,666 09/114,268 07/25/00
6,092,672 09/174,950 07/25/00
6,092,676 09/309,079 07/25/00
6,092,682 08/636,479 07/25/00
6,092,694 09/247,127 07/25/00
6,092,699 09/139,470 07/25/00
6,092,711 09/257,478 07/25/00
6,092,715 09/260,619 07/25/00
6,092,728 09/352,542 07/25/00
6,092,729 09/012,735 07/25/00
6,092,736 09/363,589 07/25/00
6,092,737 09/241,720 07/25/00
6,092,738 09/050,650 07/25/00
6,092,740 09/377,424 07/25/00
6,092,751 09/208,315 07/25/00
6,092,755 09/271,648 07/25/00
6,092,763 09/201,986 07/25/00
6,092,767 09/135,423 07/25/00
6,092,769 09/382,367 07/25/00
6,092,778 09/115,197 07/25/00
6,092,782 09/100,748 07/25/00
6,092,783 09/268,963 07/25/00
6,092,786 09/060,546 07/25/00
6,092,790 08/503,241 07/25/00
6,092,795 08/905,185 07/25/00
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 71 |
6,092,798 09/029,091 07/25/00
6,092,801 08/970,582 07/25/00
6,092,806 09/012,604 07/25/00
6,092,812 09/125,427 07/25/00
6,092,815 09/203,152 07/25/00
6,092,819 09/182,552 07/25/00
6,092,829 09/207,454 07/25/00
6,092,831 09/187,606 07/25/00
6,092,833 09/037,429 07/25/00
6,092,836 09/029,389 07/25/00
6,092,844 09/183,560 07/25/00
6,092,847 09/310,292 07/25/00
6,092,862 08/854,431 07/25/00
6,092,863 08/904,532 07/25/00
6,092,871 09/429,621 07/25/00
6,092,872 09/429,476 07/25/00
6,092,885 09/023,190 07/25/00
6,092,889 08/712,668 07/25/00
6,092,892 08/416,096 07/25/00
6,092,893 08/468,423 07/25/00
6,092,921 09/004,072 07/25/00
6,092,925 09/117,777 07/25/00
6,092,928 09/191,094 07/25/00
6,092,931 09/007,934 07/25/00
6,092,937 09/227,362 07/25/00
6,092,949 09/075,514 07/25/00
6,092,954 09/188,392 07/25/00
6,092,962 09/130,707 07/25/00
6,092,976 09/206,133 07/25/00
6,092,981 09/267,711 07/25/00
6,092,989 09/199,168 07/25/00
6,092,995 09/224,609 07/25/00
6,092,996 09/033,841 07/25/00
6,092,998 09/045,091 07/25/00
6,093,011 09/206,856 07/25/00
6,093,012 08/725,023 07/25/00
6,093,014 09/330,630 07/25/00
6,093,020 09/346,050 07/25/00
6,093,025 09/257,431 07/25/00
6,093,031 09/164,120 07/25/00
6,093,036 09/205,717 07/25/00
6,093,041 09/183,363 07/25/00
6,093,045 08/614,558 07/25/00
6,093,050 09/054,919 07/25/00
6,093,053 09/160,662 07/25/00
6,093,054 09/131,034 07/25/00
6,093,062 09/324,726 07/25/00
6,093,076 09/265,340 07/25/00
6,093,077 08/630,669 07/25/00
6,093,079 09/361,887 07/25/00
6,093,091 09/207,735 07/25/00
6,093,098 09/183,207 07/25/00
6,093,109 09/276,485 07/25/00
6,093,112 09/021,024 07/25/00
6,093,119 09/127,211 07/25/00
6,093,125 09/044,337 07/25/00
6,093,130 09/063,507 07/25/00
6,093,143 09/128,838 07/25/00
6,093,153 09/128,863 07/25/00
6,093,155 09/241,064 07/25/00
6,093,159 09/042,607 07/25/00
6,093,160 08/838,618 07/25/00
6,093,164 09/118,226 07/25/00
6,093,165 09/041,334 07/25/00
6,093,169 08/854,132 07/25/00
6,093,170 09/401,266 07/25/00
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 72 |
6,093,178 09/006,610 07/25/00
6,093,184 08/850,412 07/25/00
6,093,187 09/050,372 07/25/00
6,093,195 09/369,355 07/25/00
6,093,197 08/986,943 07/25/00
6,093,198 08/969,586 07/25/00
6,093,203 09/078,340 07/25/00
6,093,207 08/210,229 07/25/00
6,093,217 09/017,915 07/25/00
6,093,221 09/319,407 07/25/00
6,093,224 09/298,882 07/25/00
6,093,232 09/265,313 07/25/00
6,093,238 08/965,164 07/25/00
6,093,240 08/896,175 07/25/00
6,093,243 08/959,331 07/25/00
6,093,244 08/838,600 07/25/00
6,093,249 09/053,599 07/25/00
6,093,258 09/015,103 07/25/00
6,093,259 08/952,513 07/25/00
6,093,264 09/365,675 07/25/00
6,093,266 09/050,729 07/25/00
6,093,271 09/090,458 07/25/00
6,093,272 09/106,319 07/25/00
6,093,288 09/125,783 07/25/00
6,093,291 09/126,845 07/25/00
6,093,298 09/255,206 07/25/00
6,093,310 09/222,865 07/25/00
6,093,314 09/092,466 07/25/00
6,093,320 09/201,161 07/25/00
6,093,334 09/441,681 07/25/00
6,093,337 09/164,981 07/25/00
6,093,342 09/024,786 07/25/00
6,093,349 09/265,616 07/25/00
6,093,364 08/292,692 07/25/00
6,093,375 09/117,863 07/25/00
6,093,376 09/061,660 07/25/00
6,093,378 08/852,458 07/25/00
6,093,381 08/988,341 07/25/00
6,093,383 08/467,791 07/25/00
6,093,384 08/797,271 07/25/00
6,093,385 09/336,733 07/25/00
6,093,386 09/275,990 07/25/00
6,093,391 09/031,279 07/25/00
6,093,403 09/257,842 07/25/00
6,093,409 08/900,832 07/25/00
6,093,412 09/357,215 07/25/00
6,093,413 09/161,016 07/25/00
6,093,414 08/909,239 07/25/00
6,093,419 09/211,303 07/25/00
6,093,425 09/448,231 07/25/00
6,093,426 08/665,524 07/25/00
6,093,430 09/239,601 07/25/00
6,093,434 08/097,589 07/25/00
6,093,437 09/313,794 07/25/00
6,093,445 09/315,140 07/25/00
6,093,447 08/910,577 07/25/00
6,093,449 08/854,369 07/25/00
6,093,453 09/310,884 07/25/00
6,093,455 08/868,409 07/25/00
6,093,461 08/940,239 07/25/00
6,093,478 08/844,710 07/25/00
6,093,480 08/861,154 07/25/00
6,093,489 09/071,733 07/25/00
6,093,491 07/983,002 07/25/00
6,093,495 08/952,702 07/25/00
6,093,503 08/925,474 07/25/00
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 73 |
6,093,511 08/944,515 07/25/00
6,093,516 08/128,245 07/25/00
6,093,518 09/245,028 07/25/00
6,093,519 09/081,573 07/25/00
6,093,525 09/065,347 07/25/00
6,093,531 09/100,679 07/25/00
6,093,532 09/303,421 07/25/00
6,093,536 07/146,246 07/25/00
6,093,537 08/051,512 07/25/00
6,093,540 08/573,186 07/25/00
6,093,546 07/940,062 07/25/00
6,093,549 08/556,419 07/25/00
6,093,556 09/106,638 07/25/00
6,093,558 07/732,487 07/25/00
6,093,560 09/185,370 07/25/00
6,093,563 08/272,247 07/25/00
6,093,564 09/005,606 07/25/00
6,093,581 09/093,354 07/25/00
6,093,586 08/902,069 07/25/00
6,093,592 08/872,335 07/25/00
6,093,605 09/199,312 07/25/00
6,093,614 09/034,519 07/25/00
6,093,622 09/148,060 07/25/00
6,093,648 09/114,074 07/25/00
6,093,662 09/242,137 07/25/00
6,093,666 09/085,006 07/25/00
6,093,667 09/248,317 07/25/00
6,093,680 08/957,764 07/25/00
6,093,684 09/275,693 07/25/00
6,093,692 08/936,898 07/25/00
6,093,701 08/990,015 07/25/00
6,093,702 08/401,488 07/25/00
6,093,705 08/913,059 07/25/00
6,093,712 09/209,122 07/25/00
6,093,715 09/275,107 07/25/00
6,093,716 08/931,271 07/25/00
6,093,718 09/242,309 07/25/00
6,093,727 09/175,253 07/25/00
6,093,728 09/160,212 07/25/00
6,093,734 09/131,481 07/25/00
6,093,735 09/345,976 07/25/00
6,093,739 09/196,761 07/25/00
6,093,746 09/097,388 07/25/00
6,093,747 09/284,609 07/25/00
6,093,753 09/011,854 07/25/00
6,093,757 08/976,989 07/25/00
6,093,768 08/464,356 07/25/00
6,093,774 08/938,136 07/25/00
6,093,775 09/037,442 07/25/00
6,093,778 09/391,542 07/25/00
6,093,783 08/591,243 07/25/00
6,093,786 08/911,848 07/25/00
6,093,794 08/471,913 07/25/00
6,093,795 08/990,140 07/25/00
6,093,797 08/962,962 07/25/00
6,093,800 08/924,570 07/25/00
6,093,801 09/025,543 07/25/00
6,093,805 08/915,699 07/25/00
6,093,807 09/272,977 07/25/00
6,093,808 09/354,183 07/25/00
6,093,809 08/851,843 07/25/00
6,093,811 08/991,525 07/25/00
6,093,812 08/179,008 07/25/00
6,093,813 09/163,660 07/25/00
6,093,821 08/943,853 07/25/00
6,093,826 09/093,421 07/25/00
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 74 |
6,093,830 09/268,554 07/25/00
6,093,834 09/237,639 07/25/00
6,093,838 09/375,845 07/25/00
6,093,839 09/251,827 07/25/00
6,093,845 09/200,233 07/25/00
6,093,846 09/450,740 07/25/00
6,093,847 09/281,928 07/25/00
6,093,853 09/106,457 07/25/00
6,093,855 09/159,085 07/25/00
6,093,859 09/323,736 07/25/00
6,093,862 09/129,388 07/25/00
6,093,864 08/087,134 07/25/00
6,093,867 09/073,083 07/25/00
6,093,870 08/945,019 07/25/00
6,093,877 09/302,308 07/25/00
6,093,884 09/186,205 07/25/00
6,093,885 09/258,210 07/25/00
6,093,888 09/250,793 07/25/00
6,093,891 09/110,751 07/25/00
6,093,892 09/128,004 07/25/00
6,093,901 09/391,852 07/25/00
6,093,902 09/210,742 07/25/00
6,093,907 09/051,245 07/25/00
6,093,910 09/183,875 07/25/00
6,093,912 09/368,954 07/25/00
6,093,920 09/364,909 07/25/00
6,093,921 09/262,230 07/25/00
6,093,929 09/066,556 07/25/00
6,093,931 09/410,018 07/25/00
6,093,942 09/305,472 07/25/00
6,093,943 09/221,147 07/25/00
6,093,948 08/286,638 07/25/00
6,093,977 09/242,260 07/25/00
6,093,979 09/318,207 07/25/00
6,093,981 09/251,689 07/25/00
6,093,986 09/262,891 07/25/00
6,093,994 09/213,664 07/25/00
6,094,001 09/111,503 07/25/00
6,094,002 09/131,408 07/25/00
6,094,003 08/955,164 07/25/00
6,094,004 09/052,946 07/25/00
6,094,012 09/187,540 07/25/00
6,094,013 09/203,047 07/25/00
6,094,020 09/193,891 07/25/00
6,094,021 09/413,066 07/25/00
6,094,023 09/180,419 07/25/00
6,094,042 09/016,172 07/25/00
6,094,051 09/153,401 07/25/00
6,094,057 08/730,816 07/25/00
6,094,079 09/216,902 07/25/00
6,094,085 09/121,953 07/25/00
6,094,086 08/855,844 07/25/00
6,094,090 08/980,259 07/25/00
6,094,096 08/989,529 07/25/00
6,094,108 09/153,329 07/25/00
6,094,110 09/193,893 07/25/00
6,094,116 08/693,800 07/25/00
6,094,119 09/211,762 07/25/00
6,094,121 09/338,743 07/25/00
6,094,125 09/353,456 07/25/00
6,094,130 09/065,231 07/25/00
6,094,136 09/239,045 07/25/00
6,094,137 09/064,385 07/25/00
6,094,138 09/152,201 07/25/00
6,094,150 09/129,945 07/25/00
6,094,151 09/003,076 07/25/00
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 75 |
6,094,161 09/456,407 07/25/00
6,094,179 09/184,598 07/25/00
6,094,182 08/884,810 07/25/00
6,094,186 08/441,658 07/25/00
6,094,198 08/787,345 07/25/00
6,094,214 09/186,095 07/25/00
6,094,217 08/549,189 07/25/00
6,094,222 08/730,298 07/25/00
6,094,226 09/351,552 07/25/00
6,094,229 08/777,961 07/25/00
6,094,233 08/905,155 07/25/00
6,094,234 08/864,913 07/25/00
6,094,235 09/052,465 07/25/00
6,094,239 08/940,599 07/25/00
6,094,242 08/574,634 07/25/00
6,094,243 08/825,031 07/25/00
6,094,253 09/187,487 07/25/00
6,094,254 09/056,865 07/25/00
6,094,255 09/016,934 07/25/00
6,094,257 09/416,923 07/25/00
6,094,269 09/039,342 07/25/00
6,094,287 09/205,547 07/25/00
6,094,293 09/358,807 07/25/00
6,094,307 08/650,906 07/25/00
6,094,310 09/236,477 07/25/00
6,094,311 09/171,838 07/25/00
6,094,321 08/748,676 07/25/00
6,094,322 08/980,059 07/25/00
6,094,326 08/909,897 07/25/00
6,094,330 09/006,794 07/25/00
6,094,340 09/083,995 07/25/00
6,094,345 08/845,596 07/25/00
6,094,348 08/837,906 07/25/00
6,094,351 09/136,495 07/25/00
6,094,353 09/365,778 07/25/00
6,094,369 09/100,263 07/25/00
6,094,374 09/272,344 07/25/00
6,094,375 09/223,541 07/25/00
6,094,383 09/251,632 07/25/00
6,094,386 09/371,535 07/25/00
6,094,392 09/393,807 07/25/00
6,094,405 09/188,199 07/25/00
6,094,407 09/090,237 07/25/00
6,094,408 09/105,856 07/25/00
6,094,413 09/225,844 07/25/00
6,094,438 08/950,221 07/25/00
6,094,440 08/882,727 07/25/00
6,094,442 08/968,095 07/25/00
6,094,449 09/075,163 07/25/00
6,094,467 09/150,246 07/25/00
6,094,471 09/064,476 07/25/00
6,094,477 08/996,883 07/25/00
6,094,480 08/883,482 07/25/00
6,094,493 09/011,506 07/25/00
6,094,496 09/185,136 07/25/00
6,094,519 09/189,982 07/25/00
6,094,531 08/937,848 07/25/00
6,094,543 09/138,570 07/25/00
6,094,545 09/004,966 07/25/00
6,094,546 09/432,056 07/25/00
6,094,549 09/159,785 07/25/00
6,094,551 09/303,668 07/25/00
6,094,553 09/324,935 07/25/00
6,094,554 09/369,939 07/25/00
6,094,571 09/165,869 07/25/00
6,094,576 09/011,407 07/25/00
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 76 |
6,094,588 08/863,053 07/25/00
6,094,594 08/696,721 07/25/00
6,094,595 09/216,438 07/25/00
6,094,609 09/270,120 07/25/00
6,094,613 08/840,856 07/25/00
6,094,626 08/806,280 07/25/00
6,094,632 09/015,757 07/25/00
6,094,653 08/998,736 07/25/00
6,094,661 08/981,042 07/25/00
6,094,666 09/099,411 07/25/00
6,094,691 09/082,645 07/25/00
6,094,707 09/398,922 07/25/00
6,094,714 08/894,184 07/25/00
6,094,718 09/026,341 07/25/00
6,094,725 09/105,396 07/25/00
6,094,733 08/785,288 07/25/00
6,094,738 09/121,954 07/25/00
PATENTS WHICH EXPIRED ON July 20, 2012
DUE TO FAILURE TO PAY MAINTENANCE FEES
Patent Application Issue
Number Number Date
6,763,534 10/450,748 07/20/04
6,763,559 10/132,526 07/20/04
6,763,567 10/144,959 07/20/04
6,763,575 09/878,365 07/20/04
6,763,582 10/208,798 07/20/04
6,763,583 09/666,258 07/20/04
6,763,585 10/013,716 07/20/04
6,763,591 10/144,832 07/20/04
6,763,599 10/141,915 07/20/04
6,763,600 09/991,867 07/20/04
6,763,601 10/394,296 07/20/04
6,763,612 10/193,369 07/20/04
6,763,613 10/107,959 07/20/04
6,763,616 09/933,821 07/20/04
6,763,620 10/469,139 07/20/04
6,763,625 10/054,264 07/20/04
6,763,626 10/233,201 07/20/04
6,763,633 10/255,601 07/20/04
6,763,635 09/451,830 07/20/04
6,763,641 10/188,945 07/20/04
6,763,644 10/349,250 07/20/04
6,763,647 10/065,478 07/20/04
6,763,650 10/452,090 07/20/04
6,763,655 09/797,995 07/20/04
6,763,656 10/137,566 07/20/04
6,763,661 10/141,144 07/20/04
6,763,667 09/578,575 07/20/04
6,763,668 10/429,388 07/20/04
6,763,669 10/429,437 07/20/04
6,763,670 10/429,389 07/20/04
6,763,673 10/463,118 07/20/04
6,763,674 10/401,298 07/20/04
6,763,675 10/447,738 07/20/04
6,763,681 10/074,155 07/20/04
6,763,686 10/028,837 07/20/04
6,763,693 10/049,097 07/20/04
6,763,699 10/359,940 07/20/04
6,763,703 10/021,951 07/20/04
6,763,723 09/695,584 07/20/04
6,763,724 10/341,297 07/20/04
6,763,725 10/436,987 07/20/04
6,763,727 10/151,629 07/20/04
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 77 |
6,763,728 09/697,943 07/20/04
6,763,730 09/979,636 07/20/04
6,763,741 10/156,662 07/20/04
6,763,743 10/123,227 07/20/04
6,763,754 10/403,965 07/20/04
6,763,755 10/444,255 07/20/04
6,763,757 10/091,850 07/20/04
6,763,762 10/257,940 07/20/04
6,763,763 10/299,262 07/20/04
6,763,769 10/201,313 07/20/04
6,763,770 10/138,462 07/20/04
6,763,777 10/385,053 07/20/04
6,763,780 10/113,385 07/20/04
6,763,782 09/701,003 07/20/04
6,763,788 10/276,323 07/20/04
6,763,789 10/249,328 07/20/04
6,763,798 10/083,708 07/20/04
6,763,801 08/165,002 07/20/04
6,763,811 10/340,246 07/20/04
6,763,822 10/695,013 07/20/04
6,763,823 09/522,397 07/20/04
6,763,824 10/428,770 07/20/04
6,763,826 09/836,574 07/20/04
6,763,828 10/419,518 07/20/04
6,763,832 09/561,380 07/20/04
6,763,835 09/968,193 07/20/04
6,763,838 10/339,557 07/20/04
6,763,839 09/871,250 07/20/04
6,763,840 09/953,061 07/20/04
6,763,842 09/749,151 07/20/04
6,763,844 10/208,709 07/20/04
6,763,851 09/979,568 07/20/04
6,763,854 10/069,121 07/20/04
6,763,855 10/021,363 07/20/04
6,763,857 10/318,163 07/20/04
6,763,861 10/315,530 07/20/04
6,763,865 09/937,246 07/20/04
6,763,870 09/946,155 07/20/04
6,763,901 10/235,556 07/20/04
6,763,906 10/049,554 07/20/04
6,763,909 10/153,083 07/20/04
6,763,911 10/178,018 07/20/04
6,763,914 10/178,490 07/20/04
6,763,930 10/116,558 07/20/04
6,763,931 10/278,651 07/20/04
6,763,932 10/388,875 07/20/04
6,763,933 10/716,233 07/20/04
6,763,937 10/168,684 07/20/04
6,763,938 10/099,330 07/20/04
6,763,943 10/056,856 07/20/04
6,763,949 09/969,651 07/20/04
6,763,952 10/076,161 07/20/04
6,763,954 09/649,399 07/20/04
6,763,965 10/322,016 07/20/04
6,763,971 10/246,215 07/20/04
6,763,972 10/192,546 07/20/04
6,763,973 10/195,581 07/20/04
6,763,975 10/342,455 07/20/04
6,763,976 10/137,950 07/20/04
6,763,980 10/164,033 07/20/04
6,763,985 10/145,838 07/20/04
6,763,990 10/208,705 07/20/04
6,763,996 09/955,345 07/20/04
6,764,007 10/268,065 07/20/04
6,764,008 10/067,509 07/20/04
6,764,011 10/361,490 07/20/04
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 78 |
6,764,012 09/898,236 07/20/04
6,764,015 10/178,105 07/20/04
6,764,017 10/151,926 07/20/04
6,764,021 10/147,234 07/20/04
6,764,025 10/411,947 07/20/04
6,764,044 10/174,976 07/20/04
6,764,046 10/337,821 07/20/04
6,764,047 09/770,923 07/20/04
6,764,049 09/672,951 07/20/04
6,764,053 10/368,543 07/20/04
6,764,057 10/000,762 07/20/04
6,764,063 09/777,535 07/20/04
6,764,065 09/992,747 07/20/04
6,764,074 10/327,470 07/20/04
6,764,075 10/091,021 07/20/04
6,764,076 10/085,870 07/20/04
6,764,077 10/243,069 07/20/04
6,764,090 10/355,605 07/20/04
6,764,098 10/107,580 07/20/04
6,764,107 10/431,555 07/20/04
6,764,114 09/807,939 07/20/04
6,764,116 10/293,374 07/20/04
6,764,122 10/286,525 07/20/04
6,764,135 09/728,119 07/20/04
6,764,138 10/373,278 07/20/04
6,764,139 10/045,422 07/20/04
6,764,146 10/113,061 07/20/04
6,764,148 10/044,509 07/20/04
6,764,154 10/062,449 07/20/04
6,764,178 10/458,884 07/20/04
6,764,191 10/159,385 07/20/04
6,764,192 09/967,802 07/20/04
6,764,193 10/357,459 07/20/04
6,764,195 10/329,038 07/20/04
6,764,198 10/054,403 07/20/04
6,764,199 10/289,381 07/20/04
6,764,206 10/353,868 07/20/04
6,764,212 09/436,637 07/20/04
6,764,226 10/088,292 07/20/04
6,764,228 10/071,141 07/20/04
6,764,230 10/393,396 07/20/04
6,764,231 10/352,605 07/20/04
6,764,233 10/097,313 07/20/04
6,764,238 10/215,219 07/20/04
6,764,239 10/305,937 07/20/04
6,764,246 10/392,170 07/20/04
6,764,248 10/414,127 07/20/04
6,764,249 10/322,389 07/20/04
6,764,251 10/188,850 07/20/04
6,764,253 10/366,376 07/20/04
6,764,256 10/179,028 07/20/04
6,764,257 10/314,187 07/20/04
6,764,259 10/153,825 07/20/04
6,764,264 10/270,589 07/20/04
6,764,274 10/015,399 07/20/04
6,764,279 10/256,863 07/20/04
6,764,283 10/110,902 07/20/04
6,764,295 10/192,167 07/20/04
6,764,296 10/150,953 07/20/04
6,764,298 09/927,466 07/20/04
6,764,301 10/167,146 07/20/04
6,764,302 10/348,408 07/20/04
6,764,310 09/667,727 07/20/04
6,764,316 10/392,160 07/20/04
6,764,317 10/293,034 07/20/04
6,764,319 10/439,992 07/20/04
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 79 |
6,764,326 10/268,765 07/20/04
6,764,332 10/352,170 07/20/04
6,764,336 10/335,309 07/20/04
6,764,339 10/320,923 07/20/04
6,764,340 10/369,278 07/20/04
6,764,347 10/345,077 07/20/04
6,764,350 10/128,915 07/20/04
6,764,354 10/331,419 07/20/04
6,764,357 10/243,427 07/20/04
6,764,360 10/159,249 07/20/04
6,764,362 10/428,417 07/20/04
6,764,364 10/274,733 07/20/04
6,764,375 10/622,729 07/20/04
6,764,405 10/445,645 07/20/04
6,764,411 09/990,612 07/20/04
6,764,416 10/233,936 07/20/04
6,764,420 10/094,907 07/20/04
6,764,422 10/351,728 07/20/04
6,764,423 10/079,801 07/20/04
6,764,428 10/276,936 07/20/04
6,764,431 09/895,715 07/20/04
6,764,432 10/091,475 07/20/04
6,764,434 10/150,551 07/20/04
6,764,436 10/340,907 07/20/04
6,764,442 10/215,293 07/20/04
6,764,443 10/031,885 07/20/04
6,764,456 10/043,533 07/20/04
6,764,457 10/373,225 07/20/04
6,764,466 10/386,995 07/20/04
6,764,470 10/309,733 07/20/04
6,764,473 10/347,285 07/20/04
6,764,477 09/410,997 07/20/04
6,764,483 09/915,875 07/20/04
6,764,494 09/971,687 07/20/04
6,764,500 09/617,286 07/20/04
6,764,501 10/119,855 07/20/04
6,764,503 09/719,949 07/20/04
6,764,508 10/049,703 07/20/04
6,764,513 10/035,723 07/20/04
6,764,522 10/431,852 07/20/04
6,764,525 10/390,258 07/20/04
6,764,527 10/062,475 07/20/04
6,764,529 10/186,408 07/20/04
6,764,531 10/229,853 07/20/04
6,764,545 10/011,304 07/20/04
6,764,555 10/004,919 07/20/04
6,764,568 10/374,237 07/20/04
6,764,580 10/002,936 07/20/04
6,764,582 10/290,162 07/20/04
6,764,589 10/088,075 07/20/04
6,764,594 10/261,697 07/20/04
6,764,602 09/997,436 07/20/04
6,764,614 10/203,575 07/20/04
6,764,619 10/001,346 07/20/04
6,764,620 09/994,823 07/20/04
6,764,622 10/097,604 07/20/04
6,764,628 10/090,223 07/20/04
6,764,630 10/226,999 07/20/04
6,764,633 09/834,617 07/20/04
6,764,634 09/922,386 07/20/04
6,764,637 09/989,312 07/20/04
6,764,644 09/973,986 07/20/04
6,764,651 10/014,270 07/20/04
6,764,657 10/014,386 07/20/04
6,764,660 09/593,789 07/20/04
6,764,662 10/176,224 07/20/04
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 80 |
6,764,664 10/127,252 07/20/04
6,764,683 09/459,813 07/20/04
6,764,686 09/120,044 07/20/04
6,764,693 07/989,593 07/20/04
6,764,698 09/806,287 07/20/04
6,764,704 10/380,007 07/20/04
6,764,725 09/778,475 07/20/04
6,764,740 09/689,463 07/20/04
6,764,741 10/024,566 07/20/04
6,764,750 10/438,950 07/20/04
6,764,757 09/901,802 07/20/04
6,764,759 10/123,324 07/20/04
6,764,762 10/238,748 07/20/04
6,764,763 09/623,010 07/20/04
6,764,767 09/292,834 07/20/04
6,764,787 10/241,221 07/20/04
6,764,796 10/179,540 07/20/04
6,764,807 09/946,756 07/20/04
6,764,809 09/975,211 07/20/04
6,764,826 09/878,124 07/20/04
6,764,827 09/384,379 07/20/04
6,764,829 10/101,074 07/20/04
6,764,833 09/444,711 07/20/04
6,764,834 09/674,779 07/20/04
6,764,837 09/958,940 07/20/04
6,764,847 09/828,576 07/20/04
6,764,848 10/008,590 07/20/04
6,764,849 10/015,525 07/20/04
6,764,852 09/915,060 07/20/04
6,764,857 10/267,807 07/20/04
6,764,858 10/044,219 07/20/04
6,764,861 10/270,408 07/20/04
6,764,864 10/418,372 07/20/04
6,764,874 10/356,217 07/20/04
6,764,970 09/980,292 07/20/04
6,764,972 09/973,816 07/20/04
6,764,974 10/449,770 07/20/04
6,764,983 10/187,184 07/20/04
6,764,984 10/309,625 07/20/04
6,764,987 10/387,694 07/20/04
6,764,997 10/274,097 07/20/04
6,764,998 10/464,188 07/20/04
6,765,000 10/271,117 07/20/04
6,765,002 09/528,963 07/20/04
6,765,010 10/095,802 07/20/04
6,765,013 10/334,932 07/20/04
6,765,016 10/455,648 07/20/04
6,765,021 10/215,438 07/20/04
6,765,028 10/321,939 07/20/04
6,765,033 09/622,474 07/20/04
6,765,062 10/192,091 07/20/04
6,765,063 10/207,563 07/20/04
6,765,068 10/448,571 07/20/04
6,765,073 09/897,983 07/20/04
6,765,074 10/256,494 07/20/04
6,765,075 10/623,045 07/20/04
6,765,079 10/395,937 07/20/04
6,765,082 10/335,681 07/20/04
6,765,095 10/383,586 07/20/04
6,765,096 09/980,474 07/20/04
6,765,098 09/622,915 07/20/04
6,765,100 09/973,191 07/20/04
6,765,105 10/048,561 07/20/04
6,765,110 09/740,224 07/20/04
6,765,111 08/784,875 07/20/04
6,765,114 09/856,517 07/20/04
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 81 |
6,765,118 10/239,409 07/20/04
6,765,135 10/192,852 07/20/04
6,765,137 10/246,922 07/20/04
6,765,138 10/272,365 07/20/04
6,765,144 10/384,288 07/20/04
6,765,148 10/426,413 07/20/04
6,765,156 10/247,315 07/20/04
6,765,159 10/069,201 07/20/04
6,765,160 10/064,828 07/20/04
6,765,169 10/381,853 07/20/04
6,765,172 10/308,306 07/20/04
6,765,179 10/191,160 07/20/04
6,765,181 10/663,423 07/20/04
6,765,193 10/224,590 07/20/04
6,765,195 10/154,392 07/20/04
6,765,199 10/193,349 07/20/04
6,765,202 09/783,308 07/20/04
6,765,207 10/134,444 07/20/04
6,765,223 09/967,448 07/20/04
6,765,258 10/207,801 07/20/04
6,765,278 10/175,933 07/20/04
6,765,283 10/201,646 07/20/04
6,765,289 09/840,864 07/20/04
6,765,293 09/847,370 07/20/04
6,765,297 10/107,568 07/20/04
6,765,300 09/890,575 07/20/04
6,765,308 10/127,302 07/20/04
6,765,311 10/070,943 07/20/04
6,765,320 09/541,825 07/20/04
6,765,323 10/065,178 07/20/04
6,765,337 09/381,755 07/20/04
6,765,344 10/385,637 07/20/04
6,765,347 10/222,635 07/20/04
6,765,383 10/328,427 07/20/04
6,765,384 10/186,415 07/20/04
6,765,394 09/868,538 07/20/04
6,765,395 10/448,922 07/20/04
6,765,401 10/335,947 07/20/04
6,765,405 10/191,089 07/20/04
6,765,412 10/427,220 07/20/04
6,765,417 10/443,154 07/20/04
6,765,449 10/368,695 07/20/04
6,765,453 10/114,840 07/20/04
6,765,455 09/711,118 07/20/04
6,765,461 10/427,875 07/20/04
6,765,465 10/344,174 07/20/04
6,765,470 09/775,654 07/20/04
6,765,475 09/530,726 07/20/04
6,765,477 10/135,408 07/20/04
6,765,478 10/204,730 07/20/04
6,765,479 10/047,299 07/20/04
6,765,480 10/119,066 07/20/04
6,765,489 10/217,323 07/20/04
6,765,490 09/999,462 07/20/04
6,765,495 09/589,637 07/20/04
6,765,496 09/999,153 07/20/04
6,765,497 09/740,549 07/20/04
6,765,500 10/105,860 07/20/04
6,765,503 09/831,777 07/20/04
6,765,516 10/684,098 07/20/04
6,765,522 10/200,957 07/20/04
6,765,534 10/018,280 07/20/04
6,765,539 10/350,027 07/20/04
6,765,542 10/252,458 07/20/04
6,765,544 09/692,417 07/20/04
6,765,547 09/961,175 07/20/04
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 82 |
6,765,557 09/546,417 07/20/04
6,765,566 09/218,938 07/20/04
6,765,568 09/879,420 07/20/04
6,765,586 10/103,965 07/20/04
6,765,599 09/866,705 07/20/04
6,765,604 10/066,105 07/20/04
6,765,609 09/577,622 07/20/04
6,765,621 09/877,293 07/20/04
6,765,625 09/595,815 07/20/04
6,765,632 10/212,100 07/20/04
6,765,643 09/739,975 07/20/04
6,765,647 09/856,051 07/20/04
6,765,650 09/927,683 07/20/04
6,765,653 09/862,490 07/20/04
6,765,657 10/052,939 07/20/04
6,765,658 10/222,666 07/20/04
6,765,671 10/149,693 07/20/04
6,765,683 10/217,015 07/20/04
6,765,687 09/392,742 07/20/04
6,765,690 09/604,742 07/20/04
6,765,691 09/153,918 07/20/04
6,765,708 10/349,534 07/20/04
6,765,719 10/152,446 07/20/04
6,765,722 09/738,519 07/20/04
6,765,729 10/052,396 07/20/04
6,765,731 10/402,197 07/20/04
6,765,735 09/950,062 07/20/04
6,765,738 09/552,749 07/20/04
6,765,739 10/100,454 07/20/04
6,765,745 10/034,798 07/20/04
6,765,753 10/348,766 07/20/04
6,765,754 10/179,872 07/20/04
6,765,762 10/092,527 07/20/04
6,765,769 09/784,747 07/20/04
6,765,783 10/313,842 07/20/04
6,765,802 09/698,450 07/20/04
6,765,805 09/970,355 07/20/04
6,765,811 10/463,089 07/20/04
6,765,817 10/309,160 07/20/04
6,765,822 10/195,370 07/20/04
6,765,831 10/428,763 07/20/04
6,765,839 10/351,008 07/20/04
6,765,851 09/817,304 07/20/04
6,765,854 10/418,602 07/20/04
6,765,859 10/166,983 07/20/04
6,765,860 10/000,719 07/20/04
6,765,897 09/360,635 07/20/04
6,765,917 09/324,517 07/20/04
6,765,932 09/400,773 07/20/04
6,765,945 09/829,475 07/20/04
6,765,949 10/231,925 07/20/04
6,765,950 09/283,477 07/20/04
6,765,978 10/206,934 07/20/04
6,765,981 10/209,378 07/20/04
6,766,008 09/772,954 07/20/04
6,766,015 09/526,667 07/20/04
6,766,021 09/805,351 07/20/04
6,766,023 09/781,797 07/20/04
6,766,024 09/386,184 07/20/04
6,766,031 09/403,203 07/20/04
6,766,034 09/950,601 07/20/04
6,766,038 09/577,887 07/20/04
6,766,040 09/677,257 07/20/04
6,766,044 09/708,586 07/20/04
6,766,045 10/094,941 07/20/04
6,766,046 09/403,023 07/20/04
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 83 |
6,766,062 09/504,924 07/20/04
6,766,070 09/845,111 07/20/04
6,766,075 10/076,193 07/20/04
6,766,076 10/091,158 07/20/04
6,766,084 09/938,911 07/20/04
6,766,086 10/087,455 07/20/04
6,766,095 10/245,501 07/20/04
6,766,097 10/007,534 07/20/04
6,766,103 09/783,987 07/20/04
6,766,107 09/951,728 07/20/04
6,766,108 10/166,121 07/20/04
6,766,109 10/386,477 07/20/04
6,766,115 09/643,374 07/20/04
6,766,124 10/367,999 07/20/04
6,766,139 10/301,148 07/20/04
6,766,151 09/846,651 07/20/04
6,766,163 09/458,261 07/20/04
6,766,172 09/665,599 07/20/04
6,766,191 09/571,459 07/20/04
6,766,207 09/764,159 07/20/04
6,766,212 09/352,984 07/20/04
6,766,217 10/048,804 07/20/04
6,766,244 10/087,387 07/20/04
6,766,247 10/286,272 07/20/04
6,766,255 10/070,510 07/20/04
6,766,269 10/331,226 07/20/04
6,766,271 10/424,374 07/20/04
6,766,275 10/228,111 07/20/04
6,766,276 10/169,339 07/20/04
6,766,283 09/689,884 07/20/04
6,766,301 09/513,963 07/20/04
6,766,302 10/384,966 07/20/04
6,766,308 09/876,847 07/20/04
6,766,309 09/614,294 07/20/04
6,766,331 09/971,155 07/20/04
6,766,337 09/556,757 07/20/04
6,766,374 10/154,672 07/20/04
6,766,392 09/815,014 07/20/04
6,766,394 09/702,565 07/20/04
6,766,403 09/850,235 07/20/04
6,766,425 10/146,776 07/20/04
6,766,461 09/716,459 07/20/04
6,766,469 09/769,783 07/20/04
6,766,473 09/816,214 07/20/04
6,766,481 10/131,918 07/20/04
6,766,483 09/915,756 07/20/04
6,766,485 09/669,113 07/20/04
6,766,510 09/881,194 07/20/04
6,766,514 09/421,094 07/20/04
6,766,522 09/141,600 07/20/04
PATENTS WHICH EXPIRED ON July 22, 2012
DUE TO FAILURE TO PAY MAINTENANCE FEES
Patent Application Issue
Number Number Date
7,401,363 10/644,552 07/22/08
7,401,368 11/396,014 07/22/08
7,401,375 11/495,020 07/22/08
7,401,378 11/406,560 07/22/08
7,401,384 11/241,433 07/22/08
7,401,386 11/109,503 07/22/08
7,401,389 11/170,213 07/22/08
7,401,392 11/713,236 07/22/08
7,401,407 10/834,420 07/22/08
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 84 |
7,401,408 11/437,330 07/22/08
7,401,411 11/411,724 07/22/08
7,401,413 11/676,782 07/22/08
7,401,414 11/850,658 07/22/08
7,401,416 11/469,922 07/22/08
7,401,428 11/741,182 07/22/08
7,401,434 11/363,774 07/22/08
7,401,440 10/811,689 07/22/08
7,401,446 11/526,858 07/22/08
7,401,449 11/510,214 07/22/08
7,401,459 10/562,108 07/22/08
7,401,466 10/592,396 07/22/08
7,401,474 11/362,167 07/22/08
7,401,479 11/113,006 07/22/08
7,401,482 11/717,552 07/22/08
7,401,485 10/537,202 07/22/08
7,401,513 10/545,129 07/22/08
7,401,514 11/148,474 07/22/08
7,401,536 10/073,668 07/22/08
7,401,541 11/210,196 07/22/08
7,401,545 10/983,671 07/22/08
7,401,550 10/524,223 07/22/08
7,401,555 11/492,779 07/22/08
7,401,557 10/534,527 07/22/08
7,401,559 11/079,662 07/22/08
7,401,561 11/895,948 07/22/08
7,401,564 11/215,293 07/22/08
7,401,568 11/560,956 07/22/08
7,401,586 10/566,624 07/22/08
7,401,591 11/591,593 07/22/08
7,401,608 11/251,693 07/22/08
7,401,609 09/972,250 07/22/08
7,401,610 10/671,957 07/22/08
7,401,612 10/740,438 07/22/08
7,401,616 11/402,510 07/22/08
7,401,621 11/091,222 07/22/08
7,401,626 10/991,328 07/22/08
7,401,631 11/448,628 07/22/08
7,401,635 10/518,195 07/22/08
7,401,653 10/559,585 07/22/08
7,401,675 11/253,170 07/22/08
7,401,678 11/305,334 07/22/08
7,401,688 11/358,006 07/22/08
7,401,699 10/761,254 07/22/08
7,401,705 11/026,847 07/22/08
7,401,706 10/952,143 07/22/08
7,401,711 11/261,024 07/22/08
7,401,743 11/117,600 07/22/08
7,401,745 10/564,218 07/22/08
7,401,757 11/080,738 07/22/08
7,401,761 11/125,724 07/22/08
7,401,764 11/294,201 07/22/08
7,401,770 11/807,247 07/22/08
7,401,771 11/405,180 07/22/08
7,401,772 10/786,013 07/22/08
7,401,782 11/302,553 07/22/08
7,401,784 10/940,110 07/22/08
7,401,792 10/685,852 07/22/08
7,401,793 11/134,491 07/22/08
7,401,795 11/784,619 07/22/08
7,401,798 11/261,879 07/22/08
7,401,807 11/428,897 07/22/08
7,401,809 11/417,209 07/22/08
7,401,816 11/064,419 07/22/08
7,401,827 11/459,984 07/22/08
7,401,831 11/532,961 07/22/08
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 85 |
7,401,850 11/375,799 07/22/08
7,401,851 11/320,236 07/22/08
7,401,864 11/111,889 07/22/08
7,401,917 11/646,906 07/22/08
7,401,922 11/105,700 07/22/08
7,401,923 11/075,906 07/22/08
7,401,925 11/258,526 07/22/08
7,401,933 11/377,143 07/22/08
7,401,936 11/840,480 07/22/08
7,401,937 11/243,208 07/22/08
7,401,940 11/619,050 07/22/08
7,401,946 11/175,538 07/22/08
7,401,949 10/811,670 07/22/08
7,401,952 11/399,259 07/22/08
7,401,958 11/849,610 07/22/08
7,401,964 10/570,439 07/22/08
7,401,974 11/746,209 07/22/08
7,401,976 09/648,140 07/22/08
7,401,999 11/350,066 07/22/08
7,402,005 10/569,119 07/22/08
7,402,013 10/546,571 07/22/08
7,402,019 11/009,514 07/22/08
7,402,024 11/275,934 07/22/08
7,402,031 10/513,468 07/22/08
7,402,039 10/941,239 07/22/08
7,402,056 11/866,635 07/22/08
7,402,057 11/708,447 07/22/08
7,402,060 11/650,864 07/22/08
7,402,061 11/987,288 07/22/08
7,402,074 11/256,210 07/22/08
7,402,078 11/646,793 07/22/08
7,402,084 11/893,074 07/22/08
7,402,087 11/888,586 07/22/08
7,402,089 11/875,075 07/22/08
7,402,117 10/913,545 07/22/08
7,402,125 11/042,847 07/22/08
7,402,126 10/963,506 07/22/08
7,402,132 11/413,985 07/22/08
7,402,192 10/433,332 07/22/08
7,402,198 11/248,267 07/22/08
7,402,208 10/360,852 07/22/08
7,402,216 10/518,931 07/22/08
7,402,219 10/498,333 07/22/08
7,402,220 10/553,536 07/22/08
7,402,226 10/551,432 07/22/08
7,402,234 10/881,871 07/22/08
7,402,239 11/112,005 07/22/08
7,402,241 11/323,360 07/22/08
7,402,244 11/448,096 07/22/08
7,402,245 11/334,387 07/22/08
7,402,247 11/300,640 07/22/08
7,402,249 11/428,178 07/22/08
7,402,250 10/509,440 07/22/08
7,402,261 11/205,029 07/22/08
7,402,277 11/348,590 07/22/08
7,402,288 10/478,684 07/22/08
7,402,300 11/311,448 07/22/08
7,402,301 11/311,650 07/22/08
7,402,302 10/752,801 07/22/08
7,402,305 10/673,886 07/22/08
7,402,310 11/335,754 07/22/08
7,402,324 10/432,696 07/22/08
7,402,333 10/490,823 07/22/08
7,402,335 10/563,948 07/22/08
7,402,349 11/511,777 07/22/08
7,402,351 10/455,884 07/22/08
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 86 |
7,402,359 10/931,334 07/22/08
7,402,373 11/050,270 07/22/08
7,402,377 10/903,526 07/22/08
7,402,382 10/481,943 07/22/08
7,402,388 10/996,096 07/22/08
7,402,394 10/540,493 07/22/08
7,402,395 10/671,242 07/22/08
7,402,402 11/741,762 07/22/08
7,402,406 10/493,057 07/22/08
7,402,408 10/543,076 07/22/08
7,402,413 10/477,269 07/22/08
7,402,418 10/490,299 07/22/08
7,402,423 10/918,562 07/22/08
7,402,425 10/791,108 07/22/08
7,402,432 11/005,481 07/22/08
7,402,502 10/942,799 07/22/08
7,402,557 10/458,072 07/22/08
7,402,559 10/659,053 07/22/08
7,402,565 11/418,004 07/22/08
7,402,568 11/236,043 07/22/08
7,402,573 11/041,606 07/22/08
7,402,574 11/077,871 07/22/08
7,402,576 10/534,528 07/22/08
7,402,577 10/491,403 07/22/08
7,402,583 11/374,423 07/22/08
7,402,587 11/596,260 07/22/08
7,402,589 11/111,612 07/22/08
7,402,592 10/711,969 07/22/08
7,402,594 10/556,906 07/22/08
7,402,595 10/504,132 07/22/08
7,402,596 11/384,199 07/22/08
7,402,598 10/522,321 07/22/08
7,402,599 11/079,139 07/22/08
7,402,600 11/234,084 07/22/08
7,402,602 11/281,864 07/22/08
7,402,603 10/494,221 07/22/08
7,402,604 11/178,668 07/22/08
7,402,606 10/510,469 07/22/08
7,402,607 11/231,041 07/22/08
7,402,611 10/069,574 07/22/08
7,402,615 10/498,192 07/22/08
7,402,631 10/590,732 07/22/08
7,402,646 11/140,130 07/22/08
7,402,647 10/509,071 07/22/08
7,402,654 11/315,390 07/22/08
7,402,667 10/957,569 07/22/08
7,402,677 10/876,919 07/22/08
7,402,687 11/409,479 07/22/08
7,402,688 10/530,903 07/22/08
7,402,690 11/699,266 07/22/08
7,402,696 11/549,450 07/22/08
7,402,697 11/208,889 07/22/08
7,402,698 10/962,899 07/22/08
7,402,703 11/447,486 07/22/08
7,402,707 10/548,938 07/22/08
7,402,712 10/862,423 07/22/08
7,402,713 11/369,422 07/22/08
7,402,714 11/567,391 07/22/08
7,402,716 11/006,570 07/22/08
7,402,717 10/343,291 07/22/08
7,402,720 10/325,396 07/22/08
7,402,726 11/054,358 07/22/08
7,402,727 11/120,508 07/22/08
7,402,740 11/637,778 07/22/08
7,402,743 11/171,722 07/22/08
7,402,745 11/261,767 07/22/08
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 87 |
7,402,759 11/123,154 07/22/08
7,402,763 10/591,488 07/22/08
7,402,765 11/412,087 07/22/08
7,402,768 11/854,650 07/22/08
7,402,772 11/598,708 07/22/08
7,402,783 11/210,917 07/22/08
7,402,795 10/581,199 07/22/08
7,402,801 10/907,678 07/22/08
7,402,818 11/232,482 07/22/08
7,402,827 10/968,439 07/22/08
7,402,828 11/540,479 07/22/08
7,402,835 10/622,046 07/22/08
7,402,840 11/400,057 07/22/08
7,402,842 10/914,361 07/22/08
7,402,853 11/230,100 07/22/08
7,402,858 11/941,755 07/22/08
7,402,860 11/179,052 07/22/08
7,402,877 10/522,080 07/22/08
7,402,898 11/196,321 07/22/08
7,402,919 10/995,348 07/22/08
7,402,920 11/477,599 07/22/08
7,402,928 11/482,825 07/22/08
7,402,929 11/286,715 07/22/08
7,402,937 10/578,902 07/22/08
7,402,952 10/526,312 07/22/08
7,402,954 10/539,327 07/22/08
7,402,957 11/521,884 07/22/08
7,402,959 11/331,088 07/22/08
7,402,960 11/651,131 07/22/08
7,402,962 11/698,766 07/22/08
7,402,983 11/348,919 07/22/08
7,403,005 10/597,060 07/22/08
7,403,021 11/518,791 07/22/08
7,403,024 10/900,362 07/22/08
7,403,025 11/509,176 07/22/08
7,403,028 11/710,149 07/22/08
7,403,031 11/789,833 07/22/08
7,403,036 11/342,881 07/22/08
7,403,050 11/321,194 07/22/08
7,403,068 11/574,383 07/22/08
7,403,074 10/785,957 07/22/08
7,403,088 11/170,630 07/22/08
7,403,092 11/313,626 07/22/08
7,403,104 11/005,270 07/22/08
7,403,120 10/954,967 07/22/08
7,403,138 11/575,079 07/22/08
7,403,140 11/751,034 07/22/08
7,403,171 11/056,919 07/22/08
7,403,194 10/713,267 07/22/08
7,403,228 10/945,871 07/22/08
7,403,239 11/177,114 07/22/08
7,403,252 10/964,923 07/22/08
7,403,254 11/139,666 07/22/08
7,403,258 10/489,652 07/22/08
7,403,272 11/497,451 07/22/08
7,403,276 11/388,887 07/22/08
7,403,286 11/441,356 07/22/08
7,403,295 11/255,946 07/22/08
7,403,305 10/662,667 07/22/08
7,403,308 10/374,721 07/22/08
7,403,319 11/622,751 07/22/08
7,403,323 11/281,176 07/22/08
7,403,327 10/575,535 07/22/08
7,403,342 11/584,581 07/22/08
7,403,346 11/489,380 07/22/08
7,403,352 11/483,099 07/22/08
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 88 |
7,403,373 11/328,709 07/22/08
7,403,380 11/675,466 07/22/08
7,403,381 11/686,963 07/22/08
7,403,389 11/314,048 07/22/08
7,403,395 11/607,152 07/22/08
7,403,403 11/376,317 07/22/08
7,403,406 11/842,493 07/22/08
7,403,408 11/134,389 07/22/08
7,403,437 11/107,873 07/22/08
7,403,456 10/843,835 07/22/08
7,403,463 11/012,855 07/22/08
7,403,464 10/257,055 07/22/08
7,403,468 10/933,493 07/22/08
7,403,475 10/365,710 07/22/08
7,403,488 10/780,357 07/22/08
7,403,513 10/397,735 07/22/08
7,403,523 10/833,797 07/22/08
7,403,557 10/899,846 07/22/08
7,403,585 10/884,341 07/22/08
7,403,587 10/570,088 07/22/08
7,403,612 10/980,485 07/22/08
7,403,613 10/896,228 07/22/08
7,403,631 11/045,094 07/22/08
7,403,635 10/527,250 07/22/08
7,403,681 11/370,234 07/22/08
7,403,684 10/578,773 07/22/08
7,403,706 11/349,127 07/22/08
7,403,720 11/302,317 07/22/08
7,403,794 11/191,992 07/22/08
7,403,799 10/499,843 07/22/08
7,403,825 11/398,005 07/22/08
7,403,826 11/289,439 07/22/08
7,403,836 10/786,311 07/22/08
7,403,850 11/537,136 07/22/08
7,403,854 11/741,501 07/22/08
7,403,858 11/575,480 07/22/08
7,403,860 11/838,281 07/22/08
7,403,863 11/724,345 07/22/08
7,403,868 10/661,572 07/22/08
7,403,874 11/345,045 07/22/08
7,403,895 10/601,822 07/22/08
7,403,913 10/840,395 07/22/08
7,403,920 09/738,285 07/22/08
7,403,992 10/615,946 07/22/08
7,403,997 10/830,811 07/22/08
7,404,021 10/912,157 07/22/08
7,404,022 11/236,383 07/22/08
7,404,034 11/440,085 07/22/08
7,404,072 11/081,472 07/22/08
7,404,122 11/444,449 07/22/08
7,404,130 11/181,955 07/22/08
7,404,196 11/189,105 07/22/08
7,404,198 11/118,355 07/22/08
7,404,201 10/778,628 07/22/08
| Patents Reinstated Due to the Acceptance of a Late Maintenance Fee from 08/13/2012 |
Patents Reinstated Due to the Acceptance of a
Late Maintenance Fee from 08/13/2012
Patent Application Filing Issue Granted
Number Number Date Date Date
6,018,120 08/888,617 07/07/97 01/25/00 08/13/12
6,028,107 08/807,757 02/27/97 02/22/00 08/17/12
6,040,013 08/975,566 11/21/97 03/21/00 08/15/12
6,069,392 09/057,381 04/08/98 05/30/00 08/14/12
6,087,098 08/839,698 04/15/97 07/11/00 08/17/12
6,091,321 09/224,258 12/30/98 07/18/00 08/18/12
6,482,065 09/522,123 03/09/00 11/19/02 08/17/12
6,539,672 09/952,675 09/13/01 04/01/03 08/17/12
6,555,140 09/869,733 10/18/01 04/29/03 08/14/12
6,556,447 09/789,169 02/20/01 04/29/03 08/17/12
6,560,592 09/273,024 03/19/99 05/06/03 08/16/12
6,585,988 10/113,726 04/01/02 07/01/03 08/15/12
6,673,383 09/816,863 03/26/01 01/06/04 08/17/12
6,697,797 09/561,240 04/28/00 02/24/04 08/16/12
6,721,741 09/563,173 05/02/00 04/13/04 08/15/12
6,725,275 10/251,238 09/20/02 04/20/04 08/15/12
6,735,628 10/251,307 09/20/02 05/11/04 08/15/12
6,742,489 10/244,544 09/17/02 06/01/04 08/15/12
6,758,075 10/164,493 06/06/02 07/06/04 08/14/12
6,758,910 10/008,431 11/13/01 07/06/04 08/14/12
6,759,389 09/592,018 06/12/00 07/06/04 08/14/12
7,177,434 10/053,096 01/18/02 02/13/07 08/17/12
7,268,670 10/451,751 09/16/03 09/11/07 08/16/12
7,272,861 10/760,816 01/20/04 09/25/07 08/13/12
7,353,784 11/352,037 02/10/06 04/08/08 08/14/12
7,389,916 11/076,732 03/10/05 06/24/08 08/14/12
7,396,231 11/074,048 03/07/05 07/08/08 08/16/12
7,397,147 11/709,077 02/20/07 07/08/08 08/14/12
7,397,731 11/500,007 08/07/06 07/08/08 08/16/12
RE. 41,326 12/148,774 04/21/08 05/11/10 08/13/12
| Reissue Applications Filed |
Reissue Applications Filed
Notice under 37 CFR 1.11(b). The reissue applications listed below
are open to public inspection by the general public through the Image
File Wrapper (IFW) system (http://portal.uspto.gov/external/portal/pair)
on the USPTO internet web site (www.uspto.gov), and copies may be obtained
by paying the fee therefor (37 CFR 1.19).
6,643,777, Re. S.N. 13/562,210, Jun. 30, 2012, Cl. 713/300, DATA
SECURITY METHOD AND DEVICE FOR COMPUTER MODULES, William W. Y. Chu,
Owner of Record: ACQIS LLC., Attorney or Agent: William S. Galliani,
Ex. Gp.: 2115
6,955,917, Re. S.N. 13/553,364, Jul. 19, 2012, Cl. 530/387,
CHROMATOGRAPHIC METHOD FOR HIGH YIELD PURIFICATION AND VIRAL INACTIVATION
OF ANTIBODIES, Patricia Alred et. al., Owner of Record: BAYER HEALTHCARE
LLC., Attorney or Agent: Eric B. Fugett, Ex. Gp.: 1648
7,328,188, Re. S.N. 13/564,960, Aug. 02, 2012, Cl. 705/039, DYNAMIC
CURRENCY CONVERSION FOR CARD PAYMENT SYSTEMS, Gerard Barry, Owner of
Record: MAINLINE CORPORATE HOLDINGS, LTD., Attorney or Agent: Edmund J.
Walsh, Ex. Gp.: 3693
7,436,192, Re. S.N. 13/545,571, Jul. 10, 2012, Cl. 324/754, PROBE SKATES
FOR ELECTRICAL TESTING OF CONVEX PAD TOPOLOGIES, January Kister, Owner of
Record: MICROPROBE INC., Attorney or Agent: Samantha A Updegraff,
Ex. Gp.: 2858
7,760,707, Re. S.N. 13/555,073, Jul. 20, 2012, Cl. 438/688, VOICE OVER
INTERNET PROTOCOL APPLICATION DEVELOPMENT FRAMEWORK, Peter Bates, Owner of
Record: FACEBOOK INC., Attorney or Agent: Gregory E. Jolley, Ex. Gp.: 2812
7,761,925, Re. S.N. 13/553,430, Jul. 19, 2012, Cl. 726/000, METHOD FOR
PROCESSING INFORMATION PARTS OF RECORDED DATA, Marco Winter, Owner of
Record: THOMASON LICENSING S.A., Attorney or Agent: Joel M. Fogeison,
Ex. Gp.: 2431
7,769,401, Re. S.N. 13/566,282, Aug. 03, 2012, Cl. 455/512, POWER
MANAGEMENT AND DISTRIBUTED SCHEDULING FOR UPLINK TRANSMISSIONS IN WIRELESS
SYSTEMS, Nimal Senarath, et al., Owner of Record: Apple Inc., Cupertino,
CA, Attorney or Agent: Jeffrey C. Hood, Ex. Gp.: 2618
7,818,254, Re. S.N. 13/455,872, Apr. 25, 2012, Cl. 705/000, APPLICATION
APPARATUS AND METHOD, Sherman Ching Ma, Owner of Record: JUNO HOLDINGS
N.V., Attorney or Agent: Stephen J. Weyer, Ex. Gp.: 3685
7,895,755, Re. S.N. 13/530,837, Jun. 22, 2012, Cl. 030/000, REPLACEABLE
DEMOLITION SHEAR PIERCING TIP, Daniel P. Jacobson et. al., Owner of
Record: GENESIS ATTACHMENTS, LLC., Attorney or Agent: Gerald E. Heiget,
Ex. Gp.: 3724
7,987,747, Re. S.N. 13/553,441, Jul. 19, 2012, Cl. 081/000, BIAS
ASSEMBLY FOR RATCHET TOOLS, David T. Ross et. al., Owner of Record: SNAP-ON
INCORPORATED, Attorney or Agent: Patrick T. Muffo, Ex. Gp.: 3727
| Requests for Ex Parte Reexamination Filed |
Requests for Ex Parte Reexamination Filed
5,659,680, Reexam. C.N. 90/012,410, Requested Date: Jul. 30, 2012,
Cl. 395/183, Title: PC COMPATIBLE MODULAR BASED DIAGNOSTIC SYSTEM,
Inventor: Glenn B. Cunningham et al., Owners of Record: CIAN IP, LLC.,
Longview, TX, Attorney or Agent: McDonnell Boehnen Hulbert & Berghoff,
LLP., Chicago, IL, Ex. Gp.: 3992, Requester: National Instruments Corp.,
Dean M. Munyon, Meyertons Hood Kivlin Kowert & Goetzel, PC., Austin, TX
5,771,511, Reexam. C.N. 90/012,399, Requested Date: Jul. 20, 2012,
Cl. 005/600, Title: COMMUNICATION NETWORK FOR A HOSPITAL BED, Inventor:
Joseph A. Kummer et al., Owners of Record: Hill-Rom Services, Inc.,
Batesville, IN, Attorney or Agent: Barnes & Thornburg, Indianapolis, IN,
Ex. Gp.: 3993, Requester: Robert A. Surrette, McAndrews Held & Malloy,
LTD., Chicago, IL
5,970,481, Reexam. C.N. 90/012,414, Requested Date: Aug. 1, 2012,
Cl. 705/417, Title: METHOD AND APPARATUS FOR DETERMINING TAX OF A VEHICLE,
Inventor: Kenneth R. Westerlage et al., Owners of Record: Vehicle IP, LLC.,
Germantown, TN, Attorney or Agent: Locke Lord Bissell & Liddell, LLP.,
Houston, TX, Ex. Gp.: 3992, Requester: Patrick J. Lee, Kaye Scholer, LLP.,
Washington, DC
6,209,931, Reexam. C.N. 90/012,412, Requested Date: Jul. 31, 2012,
Cl. 292/160, Title: MULTI-POINT DOOR LOCKING SYSTEM, Inventor: Eric
Von Stoutenborough et al., Owners of Record: Newell Operating Company,
Freeport, IL, Attorney or Agent: Foley & Lardner, Milwaukee, WI,
Ex. Gp.: 3993, Requester: Bradley J. Thorson, Esq., Patterson Thuente
Christensen Pedersen, PA., Minneapolis, MN
6,381,666, Reexam. C.N. 90/020,010, Requested Date: Jul. 25, 2012,
Cl. 710/300, Title: METHOD AND APPARATUS FOR EXTENDING THE RANGE OF THE
UNIVERSAL SERIAL BUS PROTOCOL, Inventor: Keith Kejser et al., Owners of
Record: ICRON Technologies, Corp., Canada, Attorney or Agent: Marks &
Clerk, Canada, Ex. Gp.: 3992, Requester: Michael D. Murphy, Murphy Bilak &
Homiller, PLLC., Cary, NC
6,512,415, Reexam. C.N. 90/012,413, Requested Date: Jul. 31, 2012,
Cl. 379/067, Title: TELEPHONIC-INTERFACE GAME CONTROL SYSTEM, Inventor:
Ronald A. Katz, Owners of Record: Ronald A. Katz Technology Licensing, LP.,
Los Angeles, CA, Attorney or Agent: Cooley, LLP., Washington, DC, Ex. Gp.:
3992, Requester: Jeffrey A. Cooper, Esq., Alston & Bird, LLP., Atlanta,
GA
6,588,863, Reexam. C.N. 90/012,417, Requested Date: Aug. 3, 2012,
Cl. 312/140, Title: SNEEZE GUARDS AND METHODS FOR THEIR CONSTRUCTION AND
USE, Inventor: Steven Yatchak et al., Owners of Record: Brass Smith, LLC.,
Denver, CO, Attorney or Agent: Kilpatrick Townsend & Stockton, LLP.,
San Francisco, CA, Ex. Gp.: 3993, Requester: Charles L. Thoeming, Bielen
Lampe & Thoeming, PA., Concord, CA
7,742,609, Reexam. C.N. 90/012,408, Requested Date: Jul. 27, 2012,
Cl. 381/119, Title: LIVE PERFORMANCE AUDIO MIXING SYSTEM WITH SIMPLIFIED
USER INTERFACE, Inventor: Nathan Yeakel et al., Owners of Record: Gibson
Guitar Corp., Nashville, TN, Attorney or Agent: Bates & Bates, LLC.,
Atlanta, GA, Ex. Gp.: 3992, Requester: Stephen Bongini, Fleit Gibbons
Gutman Bongini & Bianco, PL., Boca Raton, FL
7,969,288, Reexam. C.N. 90/012,411, Requested Date: Jul. 30, 2012,
Cl. 379/092, Title: FORCE FEEDBACK SYSTEM INCLUDING MULTI-TASKING
GRAPHICAL HOST ENVIRONMENT AND INTERFACE DEVICE, Inventor: Adam C. Braun
et al., Owners of Record: Immersion Corporation, San Jose, CA, Attorney
or Agent: Kilpatrick Townsend & Stockton, LLP., Winston-Salem, NC,
Ex. Gp.: 3992, Requester: Bing Ai, Perkins Coie, LLP., San Diego, CA
| Requests for Inter Partes Reexamination Filed |
Requests for Inter Partes Reexamination Filed
7,128,660, Reexam. C.N.: 95/002,049, Requested Date: Jul. 20, 2012,
Cl.: 473/324, Title: METHOD OF GOLF CLUB PERFORMANCE ENHANCEMENT AND
ARTICLES RESULTANT THEREFROM, Inventor: John P. Gillig, Owners of Record:
Triple Tee Golf, Inc., Pompano Beach, FL, Attorney or Agent: Melvin K.
Silverman & Assoc. PC., Ft. Lauderdale, FL, Ex. Gp.: 3993, Requester: Third
Party Requester: Taylor Made Golf Company, Inc.; (Att'y Is: Gary A. Clark,
Sheppard Mullin Richter & Hampton, LLP., San Diego, CA), Real Party in
Interest: Same As Third Party Requester
7,159,790, Reexam. C.N.: 95/002,043, Requested Date: Jul. 24, 2012,
Cl.: 236/001, Title: THERMOSTAT WITH OFFSET DRIVE, Inventor: Paul G.
Schwendinger et al., Owners of Record: Honeywell International, Inc.,
Morristown, NJ, Attorney or Agent: Honeywell International, Inc.,
Morristown, NJ, Ex. Gp.: 3993, Requester: Third Party Requester: Nest Labs,
Inc.; (Att'y Is: John A. Dragseth, Fish & Richardson, PC., Minneapolis,
MN), Real Party in Interest: Same As Third Party Requester
7,237,287, Reexam. C.N.: 95/002,050, Requested Date: Jul. 20, 2012,
Cl.: 005/600, Title: PATIENT CARE BED WITH NETWORK, Inventor: Matthew W.
Weismiller et al., Owners of Record: Hill-Rom Services, Inc., Batesville,
IN, Attorney or Agent: Hill-Rom Services, Inc., Batesville, IN, Ex. Gp.:
3993, Requester: Third Party Requester: Stryker Corp.; (Att'y Is: Robert
A. Surrette, McAndrews Held & Malloy, LTD., Chicago, IL), Real Party in
Interest: Same As Third Party Requester
7,506,390, Reexam. C.N.: 95/002,053, Requested Date: Jul. 20, 2012,
Cl.: 005/713, Title: PATIENT SUPPORT APPARATUS HAVING CONTROLLER AREA
NETWORK, Inventor: Steven A. Dixon et al., Owners of Record: Hill-Rom
Services, Batesville, IN, Attorney or Agent: Barnes & Thornburg, LLP.,
Indianapolis, IN, Ex. Gp.: 3993, Requester: Third Party Requester: Stryker
Corp.; (Att'y Is: Robert A. Surrette, McAndrews Held & Malloy, LTD.,
Chicago, IL), Real Party in Interest: Same As Third Party Requester
7,520,006, Reexam. C.N.: 95/002,054, Requested Date: Jul. 20, 2012,
Cl.: 005/618, Title: HOSPITAL BED INCLUDING MOVEABLE FOOT PORTION,
Inventor: Douglas J. Menkedick et al., Owners of Record: Hill-Rom Services,
Inc., Batesville, IN, Attorney or Agent: Barnes & Thornburg, LLP.,
Indianapolis, IN, Ex. Gp.: 3993, Requester: Third Party Requester: Stryker
Corp.; (Att'y Is: Robert A. Surrette, McAndrews Held & Malloy, LTD.,
Chicago, IL), Real Party in Interest: Same As Third Party Requester
7,669,263, Reexam. C.N.: 95/002,055, Requested Date: Jul. 20, 2012,
Cl.: 005/618, Title: MATTRESS ASSEMBLY INCLUDING ADJUSTABLE LENGTH FOOT,
Inventor: Douglas J. Menkedick et al., Owners of Record: Hill-Rom Services,
Inc., Batesville, IN, Attorney or Agent: Barnes & Thornburg, LLP.,
Indianapolis, IN, Ex. Gp.: 3992, Requester: Third Party Requester: Stryker
Corp.; (Att'y Is: Robert A. Surrette, McAndrews Held & Malloy, LTD.,
Chicago, IL), Real Party in Interest: Same As Third Party Requester
7,762,318, Reexam. C.N.: 95/002,057, Requested Date: Jul. 20, 2012,
Cl.: 165/133, Title: CONDENSING HEAT-EXCHANGE COPPER TUBE FOR AN FLOODED
TYPE ELECTRICAL REFRIGERATION UNIT, Inventor: Chuanfu Yu et al., Owners of
Record: Golden Dragon Precise Copper Tube Group, Inc., China, Attorney or
Agent: Schwabe Williamson & Wyatt, Portland, OR, Ex. Gp.: 3993, Requester:
Third Party Requester: Wolverine/Wieland Heat Transfer Technologies,
LLC.; (Att'y Is: Martin R. Geissler, Muncy Geissler Olds & Lowe, PLLC.,
Fairfax, VA), Real Party in Interest: Same As Third Party Requester
7,854,667, Reexam. C.N.: 95/002,052, Requested Date: Jul. 20, 2012,
Cl.: 473/334, Title: METHOD OF GOLF CLUB PERFORMANCE ENHANCEMENT AND
ARTICLES RESULTANT THEREFROM, Inventor: John P. Gillig, Owners of Record:
Triple Tee Golf, Inc., Pompano Beach, FL, Attorney or Agent: Melvin K.
Silverman & Assoc. PC., Ft. Lauderdale, FL, Ex. Gp.: 3993, Requester: Third
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 93 |
Party Requester: Taylor Made Golf Company, Inc.; (Att'y Is: Gary A. Clark,
Sheppard Mullin Richter & Hampton, LLP., San Diego, CA), Real Party in
Interest: Same As Third Party Requester
8,061,359, Reexam. C.N.: 95/002,058, Requested Date: Jul. 31, 2012,
Cl.: 623/023, Title: SURGICAL ENDOSCOPIC CUTTING DEVICE AND METHOD FOR ITS
USE, Inventor: Mark Hans Emanuel, Owners of Record: Smith & Nephew, Inc.,
Memphis, TN, Attorney or Agent: Nixon Peabody, LLP., Andover, MA, Ex. Gp.:
3993, Requester: Third Party Requester: Hologic, Inc.; (Att'y Is: David R.
Marsh, Arnold & Porter, LLP., Washington, DC), Real Party in Interest: Same
As Third Party Requester
8,068,638, Reexam. C.N.: 95/002,056, Requested Date: Jul. 20, 2012,
Cl.: 382/100, Title: APPARATUS AND METHOD FOR EMBEDDING SEARCHABLE
INFORMATION INTO A FILE FOR TRANSMISSION, STORAGE AND RETRIEVAL, Inventor:
Michael F. Malone et al., Owners of Record: Myport IP, Inc., McKinney, TX,
Attorney or Agent: Howison & Arnott, LLP., Dallas, TX, Ex. Gp.: 3992,
Requester: Third Party Requester: HTC Corp.; (Att'y Is: Bing Ai, Perkins
Coie, LLP., San Diego, CA), Real Party in Interest: Same As Third Party
Requester
8,086,710, Reexam. C.N.: 95/002,044, Requested Date: Jul. 17, 2012,
Cl.: 709/223, Title: IDENTITY MIGRATION APPARATUS AND METHOD, Inventor:
Nikolay Vanyukhin et al., Owners of Record: Quest Software, Inc., Aliso
Viejo, CA, Attorney or Agent: Knobbe Martens Olson & Bear, LLP., Irvine,
CA, Ex. Gp.: 3992, Requester: Third Party Requester: Centrify Corp.;
(Att'y Is: Eric S. Hyman, Blakely Sokoloff Taylor & Zafman, Sunnyvale, CA),
Real Party in Interest: Same As Third Party Requester
| Notice of Expiration of Trademark Registrations Due to Failure to Renew |
Notice of Expiration of Trademark Registrations
Due to Failure to Renew
15 U.S.C. 1059 provides that each trademark registration may be
renewed for periods of ten years from the end of the expiring period
upon payment of the prescribed fee and the filing of an acceptable
application for renewal. This may be done at any time within one year
before the expiration of the period for which the registration was
issued or renewed, or it may be done within six months after such
expiration on payment of an additional fee.
According to the records of the Office, the trademark registrations
listed below are expired due to failure to renew in accordance with 15
U.S.C. 1059.
TRADEMARK REGISTRATIONS WHICH EXPIRED
August 17, 2012
DUE TO FAILURE TO RENEW
Reg. Number Serial Number Reg. Date
926,772 72/353,684 01/11/1972
2,528,900 75/743,370 01/15/2002
2,530,437 75/798,292 01/15/2002
3,041,830 79/000,436 01/10/2006
3,041,834 79/000,666 01/10/2006
3,041,835 79/000,704 01/10/2006
3,041,836 79/000,929 01/10/2006
3,041,837 79/001,074 01/10/2006
3,041,839 79/001,242 01/10/2006
2,998,387 79/001,302 09/20/2005
2,985,583 79/001,303 08/16/2005
2,985,584 79/001,304 08/16/2005
3,004,548 79/001,306 10/04/2005
2,998,388 79/001,313 09/20/2005
1,186,164 73/248,854 01/12/1982
1,672,074 74/125,982 01/14/1992
1,671,702 74/137,913 01/14/1992
2,530,814 74/646,251 01/15/2002
2,530,030 74/650,576 01/15/2002
2,530,036 75/049,110 01/15/2002
2,530,042 75/126,513 01/15/2002
2,528,764 75/145,327 01/15/2002
2,530,059 75/258,309 01/15/2002
2,530,067 75/292,867 01/15/2002
2,528,775 75/338,206 01/15/2002
2,530,089 75/347,446 01/15/2002
2,530,090 75/353,330 01/15/2002
2,530,097 75/361,487 01/15/2002
2,530,100 75/363,017 01/15/2002
2,530,102 75/367,035 01/15/2002
2,530,108 75/386,427 01/15/2002
2,530,817 75/394,313 01/15/2002
2,530,113 75/398,691 01/15/2002
2,530,114 75/399,592 01/15/2002
2,530,121 75/426,215 01/15/2002
2,530,138 75/450,687 01/15/2002
2,530,143 75/458,360 01/15/2002
2,528,796 75/458,377 01/15/2002
2,530,170 75/519,106 01/15/2002
2,530,172 75/522,195 01/15/2002
2,530,174 75/523,896 01/15/2002
2,528,817 75/531,437 01/15/2002
2,530,180 75/532,644 01/15/2002
2,530,186 75/540,132 01/15/2002
2,530,187 75/543,538 01/15/2002
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 95 |
2,530,197 75/554,644 01/15/2002
2,530,200 75/555,652 01/15/2002
2,528,825 75/560,731 01/15/2002
2,528,827 75/563,952 01/15/2002
2,530,826 75/569,581 01/15/2002
2,530,208 75/576,288 01/15/2002
2,530,213 75/589,618 01/15/2002
2,530,227 75/600,022 01/15/2002
2,530,234 75/606,641 01/15/2002
2,530,239 75/610,585 01/15/2002
2,530,240 75/610,700 01/15/2002
2,530,829 75/611,773 01/15/2002
2,530,251 75/627,458 01/15/2002
2,530,834 75/645,175 01/15/2002
2,530,265 75/647,027 01/15/2002
2,530,274 75/654,267 01/15/2002
2,530,280 75/660,543 01/15/2002
2,530,282 75/660,979 01/15/2002
2,528,864 75/668,017 01/15/2002
2,530,293 75/671,668 01/15/2002
2,530,298 75/674,004 01/15/2002
2,528,868 75/675,220 01/15/2002
2,530,301 75/676,526 01/15/2002
2,530,303 75/679,418 01/15/2002
2,530,315 75/693,492 01/15/2002
2,530,323 75/697,752 01/15/2002
2,530,328 75/700,623 01/15/2002
2,530,333 75/706,745 01/15/2002
2,530,335 75/706,889 01/15/2002
2,530,841 75/708,195 01/15/2002
2,530,350 75/719,992 01/15/2002
2,530,374 75/737,772 01/15/2002
2,530,852 75/737,773 01/15/2002
2,530,379 75/743,635 01/15/2002
2,530,381 75/744,487 01/15/2002
2,530,383 75/746,890 01/15/2002
2,528,904 75/748,554 01/15/2002
2,528,913 75/766,326 01/15/2002
2,530,403 75/767,768 01/15/2002
2,528,920 75/773,422 01/15/2002
2,530,407 75/773,562 01/15/2002
2,530,861 75/777,697 01/15/2002
2,530,416 75/779,777 01/15/2002
2,530,418 75/782,935 01/15/2002
2,528,926 75/783,118 01/15/2002
2,530,862 75/785,822 01/15/2002
2,530,425 75/789,758 01/15/2002
2,528,940 75/796,729 01/15/2002
2,528,941 75/798,358 01/15/2002
2,528,943 75/799,173 01/15/2002
2,530,440 75/800,824 01/15/2002
2,530,867 75/802,533 01/15/2002
2,530,458 75/811,291 01/15/2002
2,530,462 75/813,187 01/15/2002
2,528,957 75/814,236 01/15/2002
2,530,469 75/820,627 01/15/2002
2,530,472 75/821,541 01/15/2002
2,530,476 75/823,579 01/15/2002
2,530,480 75/824,698 01/15/2002
2,528,977 75/828,198 01/15/2002
2,530,882 75/836,772 01/15/2002
2,530,499 75/838,310 01/15/2002
2,528,990 75/841,933 01/15/2002
2,528,995 75/845,961 01/15/2002
2,528,997 75/847,907 01/15/2002
2,530,892 75/852,574 01/15/2002
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 96 |
2,529,006 75/856,771 01/15/2002
2,530,519 75/856,950 01/15/2002
2,529,007 75/857,262 01/15/2002
2,529,015 75/863,997 01/15/2002
2,530,527 75/864,510 01/15/2002
2,529,021 75/870,803 01/15/2002
2,530,538 75/873,627 01/15/2002
2,529,036 75/878,337 01/15/2002
2,529,037 75/878,387 01/15/2002
2,530,542 75/878,912 01/15/2002
2,530,545 75/881,197 01/15/2002
2,529,042 75/881,858 01/15/2002
2,529,044 75/885,778 01/15/2002
2,530,553 75/887,112 01/15/2002
2,530,555 75/890,475 01/15/2002
2,529,060 75/892,644 01/15/2002
2,529,061 75/894,490 01/15/2002
2,530,561 75/897,158 01/15/2002
2,529,067 75/898,488 01/15/2002
2,530,914 75/903,819 01/15/2002
2,530,570 75/905,913 01/15/2002
2,530,572 75/906,188 01/15/2002
2,529,079 75/906,442 01/15/2002
2,530,573 75/907,091 01/15/2002
2,530,574 75/907,314 01/15/2002
2,529,097 75/916,235 01/15/2002
2,530,584 75/916,955 01/15/2002
2,529,103 75/917,933 01/15/2002
2,530,590 75/919,591 01/15/2002
2,529,121 75/924,017 01/15/2002
2,530,600 75/924,475 01/15/2002
2,529,126 75/925,680 01/15/2002
2,529,128 75/925,945 01/15/2002
2,529,129 75/925,946 01/15/2002
2,529,131 75/926,809 01/15/2002
2,530,626 75/939,635 01/15/2002
2,530,637 75/955,021 01/15/2002
2,529,182 75/979,413 01/15/2002
2,530,645 75/980,308 01/15/2002
2,530,653 75/981,111 01/15/2002
2,530,654 75/981,173 01/15/2002
2,530,660 75/981,329 01/15/2002
2,530,662 75/981,403 01/15/2002
2,529,190 76/000,614 01/15/2002
2,530,669 76/000,942 01/15/2002
2,530,672 76/002,241 01/15/2002
2,530,674 76/002,756 01/15/2002
2,530,675 76/002,961 01/15/2002
2,530,938 76/004,195 01/15/2002
2,529,194 76/004,340 01/15/2002
2,529,198 76/005,809 01/15/2002
2,530,676 76/006,266 01/15/2002
2,530,677 76/006,501 01/15/2002
2,530,681 76/007,275 01/15/2002
2,530,683 76/007,491 01/15/2002
2,529,206 76/011,157 01/15/2002
2,529,210 76/011,814 01/15/2002
2,529,213 76/012,736 01/15/2002
2,530,692 76/013,236 01/15/2002
2,529,217 76/014,093 01/15/2002
2,530,694 76/014,484 01/15/2002
2,530,940 76/014,832 01/15/2002
2,530,697 76/015,860 01/15/2002
2,530,701 76/017,410 01/15/2002
2,529,228 76/018,477 01/15/2002
2,530,944 76/019,241 01/15/2002
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 97 |
2,529,233 76/020,245 01/15/2002
2,529,237 76/021,675 01/15/2002
2,530,710 76/022,030 01/15/2002
2,529,238 76/022,098 01/15/2002
2,529,239 76/023,234 01/15/2002
2,529,247 76/025,450 01/15/2002
2,529,250 76/026,888 01/15/2002
2,530,715 76/028,224 01/15/2002
2,530,719 76/030,740 01/15/2002
2,529,254 76/030,872 01/15/2002
2,529,258 76/032,223 01/15/2002
2,529,261 76/034,195 01/15/2002
2,529,266 76/036,721 01/15/2002
2,530,724 76/037,780 01/15/2002
2,530,731 76/044,003 01/15/2002
2,529,283 76/044,754 01/15/2002
2,529,284 76/045,440 01/15/2002
2,529,289 76/046,083 01/15/2002
2,529,291 76/046,086 01/15/2002
2,530,950 76/047,745 01/15/2002
2,530,732 76/048,104 01/15/2002
2,529,305 76/049,706 01/15/2002
2,530,951 76/050,036 01/15/2002
2,530,952 76/050,542 01/15/2002
2,530,953 76/050,546 01/15/2002
2,529,307 76/051,068 01/15/2002
2,529,312 76/052,548 01/15/2002
2,530,749 76/056,809 01/15/2002
2,530,750 76/057,478 01/15/2002
2,530,752 76/058,212 01/15/2002
2,529,325 76/058,318 01/15/2002
2,529,326 76/058,319 01/15/2002
2,529,327 76/058,530 01/15/2002
2,529,331 76/058,986 01/15/2002
2,529,338 76/062,724 01/15/2002
2,530,961 76/062,965 01/15/2002
2,530,962 76/063,424 01/15/2002
2,529,358 76/066,995 01/15/2002
2,530,760 76/069,588 01/15/2002
2,530,761 76/069,589 01/15/2002
2,529,362 76/070,357 01/15/2002
2,530,762 76/071,442 01/15/2002
2,529,372 76/072,872 01/15/2002
2,529,376 76/074,553 01/15/2002
2,529,380 76/075,928 01/15/2002
2,530,965 76/076,118 01/15/2002
2,529,381 76/076,424 01/15/2002
2,529,391 76/079,389 01/15/2002
2,530,969 76/081,847 01/15/2002
2,529,396 76/081,880 01/15/2002
2,530,770 76/084,500 01/15/2002
2,530,975 76/085,136 01/15/2002
2,530,774 76/086,159 01/15/2002
2,529,405 76/086,212 01/15/2002
2,529,410 76/087,543 01/15/2002
2,529,411 76/087,629 01/15/2002
2,530,977 76/088,570 01/15/2002
2,529,423 76/093,862 01/15/2002
2,529,427 76/096,589 01/15/2002
2,529,430 76/097,724 01/15/2002
2,529,432 76/098,321 01/15/2002
2,529,435 76/100,045 01/15/2002
2,529,437 76/100,733 01/15/2002
2,530,779 76/104,319 01/15/2002
2,530,982 76/106,280 01/15/2002
2,530,780 76/107,811 01/15/2002
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 98 |
2,529,463 76/111,200 01/15/2002
2,529,477 76/113,457 01/15/2002
2,529,478 76/113,459 01/15/2002
2,529,489 76/117,918 01/15/2002
2,529,501 76/122,339 01/15/2002
2,529,503 76/122,997 01/15/2002
2,529,504 76/123,766 01/15/2002
2,529,510 76/125,115 01/15/2002
2,529,526 76/132,772 01/15/2002
2,529,530 76/134,311 01/15/2002
2,529,533 76/135,167 01/15/2002
2,529,534 76/136,458 01/15/2002
2,529,538 76/140,550 01/15/2002
2,529,554 76/146,937 01/15/2002
2,531,004 76/150,594 01/15/2002
2,529,577 76/152,472 01/15/2002
2,529,579 76/152,759 01/15/2002
2,529,591 76/159,004 01/15/2002
2,531,011 76/161,661 01/15/2002
2,529,598 76/162,151 01/15/2002
2,529,601 76/164,350 01/15/2002
2,529,603 76/165,730 01/15/2002
2,529,618 76/173,898 01/15/2002
2,531,014 76/176,739 01/15/2002
2,529,621 76/177,812 01/15/2002
2,529,625 76/178,898 01/15/2002
2,529,628 76/178,957 01/15/2002
2,529,631 76/179,925 01/15/2002
2,529,644 76/183,302 01/15/2002
2,529,657 76/186,589 01/15/2002
2,529,658 76/186,591 01/15/2002
2,529,670 76/190,303 01/15/2002
2,529,672 76/190,551 01/15/2002
2,529,673 76/190,879 01/15/2002
2,529,675 76/191,072 01/15/2002
2,529,679 76/191,797 01/15/2002
2,529,695 76/199,063 01/15/2002
2,529,696 76/200,135 01/15/2002
2,529,713 76/208,867 01/15/2002
2,529,714 76/209,194 01/15/2002
2,529,716 76/209,454 01/15/2002
2,529,726 76/216,994 01/15/2002
2,529,731 76/221,088 01/15/2002
2,529,736 76/222,938 01/15/2002
2,529,747 76/224,627 01/15/2002
2,529,757 76/226,542 01/15/2002
2,529,765 76/229,613 01/15/2002
2,529,771 76/234,327 01/15/2002
2,529,776 76/235,834 01/15/2002
2,529,778 76/236,224 01/15/2002
2,529,794 76/242,438 01/15/2002
2,529,800 76/244,550 01/15/2002
2,529,803 76/245,144 01/15/2002
2,529,807 76/246,206 01/15/2002
2,531,024 76/250,135 01/15/2002
2,529,822 76/257,264 01/15/2002
2,529,823 76/257,473 01/15/2002
2,529,824 76/257,474 01/15/2002
2,529,831 76/260,719 01/15/2002
2,529,834 76/261,568 01/15/2002
2,529,849 76/269,206 01/15/2002
2,529,857 76/271,805 01/15/2002
2,529,861 76/272,819 01/15/2002
2,529,874 76/275,858 01/15/2002
2,529,875 76/275,959 01/15/2002
2,529,877 76/276,736 01/15/2002
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 99 |
2,529,892 76/282,261 01/15/2002
2,529,893 76/282,342 01/15/2002
2,529,897 76/283,322 01/15/2002
2,529,900 76/283,936 01/15/2002
2,529,901 76/284,687 01/15/2002
2,529,903 76/285,532 01/15/2002
2,529,904 76/285,884 01/15/2002
2,529,905 76/285,885 01/15/2002
2,529,914 76/287,490 01/15/2002
2,529,918 76/287,805 01/15/2002
2,529,925 76/288,112 01/15/2002
2,529,928 76/288,570 01/15/2002
2,529,929 76/288,909 01/15/2002
2,529,934 78/002,423 01/15/2002
2,530,798 78/011,270 01/15/2002
2,529,943 78/021,481 01/15/2002
2,531,030 78/023,859 01/15/2002
2,530,811 78/028,163 01/15/2002
2,529,954 78/032,875 01/15/2002
2,529,965 78/046,898 01/15/2002
2,529,971 78/051,476 01/15/2002
2,529,973 78/055,027 01/15/2002
2,529,974 78/055,030 01/15/2002
2,529,981 78/059,951 01/15/2002
2,529,984 78/061,882 01/15/2002
2,529,985 78/062,031 01/15/2002
2,530,024 78/071,320 01/15/2002
Service by Publication
A petition to cancel the registration identified below having been
filed, and the notice of such proceeding sent to registrant at the last
known address having been returned by the Postal Service as undeliverable,
notice is hereby given that unless the registrant listed herein, its
assigns or legal representatives, shall enter an appearance within thirty
days of this publication, the cancellation will proceed as in the case of
default.
Sound Solutions International, Ltd., Sandy, UT, Registration No. 3265894
for the mark "TORQ", Cancellation No. 92055845.
ROCHELLE ADAMS
Paralegal
Trademark Trial and Appeal Board, for
DEBORAH S. COHN
Commissioner for Trademarks
Service by Publication
A petition to cancel the registration identified below having been
filed, and the notice of such proceeding sent to registrant at the last
known address having been returned by the Postal Service as undeliverable,
notice is hereby given that unless the registrant listed herein, its
assigns or legal representatives, shall enter an appearance within thirty
days of this publication, the cancellation will proceed as in the case of
default.
Laundromax T/M, LLC, Rye, NY, Registration No. 3342711 for the mark "CLEAN
CARD", Cancellation No. 92055947.
TYRONE CRAVEN
Paralegal Specialist
Trademark Trial and Appeal Board, for
DEBORAH S. COHN
Commissioner for Trademarks
Service by Publication
A petition to cancel the registration identified below having been
filed, and the notice of such proceeding sent to registrant at the last
known address having been returned by the Postal Service as undeliverable,
notice is hereby given that unless the registrant listed herein, its
assigns or legal representatives, shall enter an appearance within thirty
days of this publication, the cancellation will proceed as in the case of
default.
LA Weight Loss Franchise Company, Horsham, Pennsylvania, Registration Nos.
3397270 for the mark "ENHANCE750", 3062000, 3081427 for the mark "FREE TO
LIVE", 3433936 for the mark "LA BARS", 3260316 for the mark "SPLASH
PACKS", 3253269 for the mark "TARGET. TONE. TRANSFORM." and 3396217 for the
mark "THINNER BY THE MINUTE", Cancellation No. 92055684.
NICOLE THIER
Paralegal Specialist
Trademark Trial and Appeal Board, for
DEBORAH S. COHN
Commissioner for Trademarks
| 37 CFR 1.47 Notice by Publication |
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of one of the joint inventors. The petition has been granted. A
notice has been sent to the last known address of the non-signing inventor.
The inventor whose signature is missing (Martin Scholz) may join in the
application by promptly filing an appropriate oath or declaration complying
with 37 CFR 1.6. The international application number is PCT/GB2003/001830
and was filed on 28 April 2003 in the name of Martin Scholz et al. for the
invention entitled "COFFEE AND CREAMER COMPOSITIONS". The national stage
application number is 12/937,536 and has a date of 12 October 2010 under 35
U.S.C. 371(c)(1), (c)(2), and (c)(4).
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of a national stage application
with a petition under 37 CFR 1.47 requesting acceptance of the application
without the signature of all of the inventors. The petition has been
granted. A notice has been sent to the last known address of the
non-signing inventor, Piyush Ranchhodbhai Patel. The inventor whose
signature is missing may join in the application by promptly filing an
appropriate oath or declaration complying with 37 CFR 1.63. The
international application number is PCT/CA2010/000325 and was filed on 08
March 2010 in the names of Anne Marie Salapatek and Piyush Ranchhodbhai
Patel for the invention entitled Method and Chamber for Exposure to
Non-Allergic Rhinitis Trigger Environments. The national stage application
is assigned number 13/254,755 and has a 35 U.S.C. 371(c)(1), (c)(2) and
(c)(4) date of 20 June 2010.
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of a national stage application
with a petition under 37 CFR 1.47 requesting acceptance of the application
without the signature of all inventors. The petition has been granted. A
notice has been sent to the last known address of the non-signing inventor.
The inventor whose signature is missing (Karl Madison, Ed Leon-Guerrero,
Tymothy Catterson, and Ursula Ginster) may join in the application by
promptly filing an appropriate oath or declaration complying with 37 CFR
1.63. The international application number is PCT/US2008/060672 and was
filed on 17 April 2008 in the names of Klaus, S. LACKNER, Ed LEON-GUERRERO,
Ursula GINSTER, Tymothy CATTERSON, Karl MADISON, Ryuhei ISHIKAWA, George
GRIMM, Mark MALCOMSON, and Ping LIU for the invention entitled CAPTURE OF
CARBON DIOXIDE (CO2) FROM AIR. The national stage application number is
12/596,642 and has a 35 U.S.C. 371 date of 08 August 2011.
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of all the inventors. The petition has been granted. A notice
has been sent to the last known address of the non-signing inventor. The
inventor whose signature is missing (Elena PASSERINI) may join in the
application by promptly filing an appropriate oath or declaration complying
with 37 CFR 1.63. The international application number is
PCT/ES2007/000180 and was filed 30 March 2007 in the names of Nuria
ALMINANA DOMENECH, Wim VAN DEN NEST, Christina CARRENO SERRAIMA, Joan
CEBRIAN PUCHE, Elena PASSERINI, and Arturo PUIG MONTIEL for the invention
entitled SYNTHETIC PEPTIDES USED FOR TREATING THE SKIN AND USE THEREOF IN
COSMETIC OR DERMOPHARMACEUTICAL COMPOSITIONS. The national stage number is
13/295,554 and has a 35 U.S.C. 371(c) date of 13 December 2010.
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of an application with a petition
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 102 |
under 37 CFR 1.47 requesting acceptance of the application without the
signature of the inventor. The petition has been granted. A notice has
been sent to the last known address of the non-signing inventor, Serguei
MIKHAILOV. The inventor whose signature is missing may join in the
application by promptly filing an appropriate oath or declaration complying
with 37 CFR 1.63. The international application number is
PCT/CA2009/001643 and was filed 16 November 2009 in the name of Serguei
MIKHAILOV for the invention entitled UNIVERSAL CONTAINER CAPPER/DECAPPER.
The national stage number is 13/129,199 and has a 35 U.S.C. 371(c) date of
29 March 2012.
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of all the inventors. The petition has been granted. A notice
has been sent to the last known address of the non-signing inventor,
Roberto SIMMARANO. The inventor whose signature is missing may join in the
application by promptly filing an appropriate oath or declaration complying
with 37 CFR 1.63. The international application number is
PCT/EP2009/062980 and was filed 06 October 2009 in the names of Helmut
THEILER and Roberto SIMMARANO for the invention entitled ACTIVE NOISE
CONTROL ARRANGEMENT, ACTIVE NOISE CONTROL HEADPHONE AND CALIBRATION METHOD.
The national stage number is 13/127,234 and has a 35 U.S.C. 371(c) date of
30 September 2011.
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of all the inventors. The petition has been granted. A notice
has been sent to the last known address of the non-signing inventor,
Saurabh GUPTA. The inventor whose signature is missing may join in the
application by promptly filing an appropriate oath or declaration complying
with 37 CFR 1.63. The international application number is
PCT/EP2009/061150 and was filed 29 August 2009 in the names of Cao SHU VU,
Allan HOLM JORGENSEN, Anshuman TRIPATHI, Lars HELLE, and Saurabh GUPTA for
the invention entitled DIRECT POWER AND STATOR FLUX VECTOR CONTROL OF A
GENERATOR FOR WIND ENERGY CONVERSION SYSTEM. The national stage number is
13/060,374 and has a 35 U.S.C. 371(c) date of 14 December 2011.
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of all inventors. The petition has been granted. A notice has
been sent to the last known address of the non-signing inventor. The
inventor whose signature is missing (Gregory James Rogers) may join in the
application by promptly filing an appropriate oath or declaration complying
with 37 CFR 1.63. The international application number is
PCT/AU2010/000999 and was filed on 06 August 2010 in the name of David Ogle
and Gregory James Rogers for the invention entitled CATHETER HANDLE. The
national stage application number is 13/511,441.
Registration to Practice
The following list contains the names of persons seeking for registration
to practice before the United States Patent and Trademark Office. Final
approval for registration is subject to establishing to the satisfaction of
the Director of the Office of Enrollment and Discipline that the person
seeking registration is of good moral character and repute. 37 CFR § 11.7
Accordingly, any information tending to affect the eligibility of any of
the following persons on moral ethical or other grounds should be furnished
to the Director of Enrollment and Discipline on or before September 30, 2012
at the following address: Mail Stop OED United States Patent and Trademark
Office P.O. Box 1450 Alexandria VA 22314
Andrews, Pierson James, Morris, Sullivan & Lemkul, LLP, 9915 Mira Mesa
Boulevard, Suite 300, San Diego, CA 92131
Azaran, Amir, 938 Lakewood Drive, Barrington, IL 60010
Bansal, Anjali Ashok, 1426 Pine Grove Way, San Jose, CA 95129
Baynham, Tamara Colette, 24575 Town Center Drive, Apartment 2308, Valencia,
CA 91355
Benenati, James Cory, 1631 Flat Shoals Road SE, Atlanta, GA 30316
Blakely, Lauren Victoria, 46 Rolling Hills Road, Kearney, NE 68845
Boyea, Michael Paul, 644 West Schubert Avenue, #1R, Chicago, IL 60614
Bruner, Sarah Michelle, 1728 N. Burkwood Court, Apartment C, Harrisonburg,
VA 22802
Cannon, Brian Ray, 15 Charles Plaza, Apartment 1307, Baltimore, MD 21201
Curtis, Emily Anne, 912 Jonathan Drive, Plainfield, IN 46168
Daniel, Ryan Michael, Frommer Lawrence & Haug, LLP, 745 Fifth Avenue, 11th
Floor, New York, NY 10151
Deka, Soumitra, Kaye Scholer LLP, 425 Park Avenue, New York, NY 10022
Detwiler, Kristin Michelle, Fried, Frank, Harris, Shriver & Jacobson LLP,
801 17th Street NW, Washington, DC 20006
Ertas, Alper Tunga, Novak Druce & Quigg LLP, 555 Mission Street, 34th
Floor, San Francisco, CA 94105
Ghurye, Shilpa Ganesh, 9704 Cottage Street, Pearland, TX 77584
Hale, Fred Troy, 3800 Solano Park Circle, #2015, Davis, CA 95616
Hartzman, Jared Matthew, 4 Fenway Court, New City, NY 10956
Hepler, Madeline Dupar, 51 Mountview Court, San Francisco, CA 94131
Howard, Damien James, Knobbe Martens Olson & Bear, LLP, 2040 Main Street,
14th Floor, Irvine, CA 92614
James, Rosemary, 1400 East-West Hwy, Apartment 1506, Silver Spring, MD
20910
Jones, Jacob Christensen, 124 E 7th Avenue, Mesa, AZ 85210
Kadura, Sheila Christine, Fulbright & Jaworski, LLP, 98 San Jacinto
Boulevard, Suite 1100, Austin, TX 78701-4255
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 104 |
Kondryszyn, Yanek Adrian, 1416 N. Winchester Lane, Liberty Lake, WA 99019
Krickl, Lauren Joan, 3768 Crown Hill Drive, Santa Rosa, CA 95404
Kumar, Edwin Asish, 1201 Herman Street, San Bruno, CA 94066
LaFleur, Leigha Theresa, 3156 Oak Tree Court, West Linn, OR 97068
Lakshmanan, Alexandra Lynn, 80 Hickory Point Court, Forsyth, IL 62535
Lillie, Edwin Thomas, 4707 Berwyn Road, College Park, MD 20740
Liu, Jun, 1194 Park Brook Court, Milpitas, CA 95035
Loury, Melanie Vander Klok, 4441 Archibald Way, Raleigh, NC 27616
McBeth, Alan Williams, Advantedge Law Group, 922 W. Baxter Drive, Suite
100, South Jordan, UT 84095
Pathak, Sumant, 46888 Shale Common, Fremont, CA 94539
Selby, Matthew Jordan, 3641 Copperfield Drive, Apartment 385, San Jose,
CA 95136
Shostak, Andrey, 8304 Dalkeith Way, Antelope, CA 95843
Simon, Joel Stuart, 5676 Broadview Road, Apartment 326, Parma, OH 44134
Singh, Karan, Ropes and Gray LLP, 1211 Avenue of the Americas, New York,
NY 10036
Skalla, Dale Wayne, Syngenta Biotechnology Inc., 3054 E. Cornwallis Road,
Research Triangle Park, NC 27709
Slovacek, Mark Randall, Gallagher and Dawsey Co., LPA., 533 S. Fifth
Street, Columbus, OH 43206
Spencer, Milena Jacqueline, 1980 North Maud Avenue, Unit D, Chicago, IL
60614
Spenner, Michael Joseph, 1005 Cabernet Drive, St. Louis, MO 63017
Surachman, Steven, 11 Southwind Circle, Jackson, NJ 08527
Topham, Lance Adrian, 1900 Douglas Street, Apartment 10, Salt Lake City,
UT 84105
Williams, Gail Anne, 110 Fern Avenue, Palo Alto, CA 94306
Yaylaian, Ross Vahan, 253 Leominster Road, Sterling, MA 01564
Zang, Lisa Dai, 10750 Missouri Avenue, Apartment M203, Los Angeles, CA
90025
August 16, 2012 WILLIAM R. COVEY
Deputy General Counsel for Enrollment and Discipline and
Director of Enrollment and Discipline
| Changes To Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act; Final Rule |
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 3, 5, 10, and 41
[Docket No.: PTO-P-2011-0074]
RIN 0651-AC68
Changes To Implement the Inventor's Oath or Declaration
Provisions of the Leahy-Smith America Invents Act
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
revising the rules of practice to implement the inventor's oath or
declaration provisions of the Leahy-Smith America Invents Act (AIA).
The AIA permits a person to whom the inventor has assigned, or is under
an obligation to assign, the invention, or who otherwise shows
sufficient proprietary interest in the matter, to make the application
for patent. The AIA also streamlines the requirements for the
inventor's oath or declaration, and permits a substitute statement in
lieu of an oath or declaration in certain circumstances. The Office is
revising the rules of practice relating to the inventor's oath or
declaration, including reissue oaths or declarations, and substitute
statements signed by a person other than an inventor, and to provide
for assignments containing oath or declaration statements.
Additionally, the Office is revising the rules of practice relating to
the inventor's oath or declaration to allow applicants to postpone
filing the inventor's oath or declaration until the application is
otherwise in condition for allowance. Finally, to better facilitate
processing of patent applications, the Office is revising and
clarifying the rules of practice for power of attorney and prosecution
of an application by an assignee.
DATES: Effective Date: The changes in this final rule take effect on
September 16, 2012.
Applicability Date: The changes to 37 CFR 1.9, 1.12, 1.14, 1.17(g),
1.27, 1.32, 1.33, 1.36, 1.41, 1.42, 1.43, 1.45, 1.46, 1.53(f) and (h),
1.55, 1.56, 1.63, 1.64, 1.66, 1.67, 1.76, 1.78, 1.81, 1.105, 1.131,
1.153, 1.162, 1.172, 1.175, 1.211, 1.215, 1.321, 1.421, 1.422, 1.424,
1.431, 1.491, 1.495(a), (c), and (h), 1.497, 3.31, 3.71, 3.73, and
41.9, and the removal of 37 CFR 1.47 and 1.432, apply only to patent
applications filed under 35 U.S.C. 111(a) or 363 on or after September
16, 2012.
FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein ((571) 272-7707),
Senior Legal Advisor; or Eugenia Jones ((571) 272-7727), Senior Legal
Advisor; or Terry J. Maciejewski ((571) 272-7730), Technical Writer-
Editor, Office of Patent Legal Administration, directly by telephone,
or by mail addressed to: Mail Stop Comments-Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of the Hiram H. Bernstein.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: Section 4 of the AIA amends the patent
laws to change the practice regarding the inventor's oath or
declaration and filing of an application by a person other than the
inventor. Section 20 of the AIA amends the patent laws to remove the
"without any deceptive intention" provisions. This final rule revises
the rules of practice to implement these provisions of sections 4 and
20 of the AIA. The changes in sections 4 and 20 of the AIA take effect
on September 16, 2012, and apply to patent applications filed, or
proceedings commenced, on or after September 16, 2012.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 106 |
Summary of Major Provisions: The Office is revising the rules of
practice to permit a person to whom the inventor has assigned or is
under an obligation to assign an invention to file and prosecute an
application for patent as the applicant, and to permit a person who
otherwise shows sufficient proprietary interest in the matter to file
and prosecute an application for patent as the applicant on behalf of
the inventor. Formerly, a person to whom the inventor had assigned an
invention could file and prosecute an application for patent, but the
inventor was considered the applicant. The Office is also revising the
rules of practice to require that juristic entities take action in a
patent application via a registered practitioner.
The Office is revising the rules of practice to eliminate a number
of former requirements pertaining to the inventor's oath or declaration
and correction of inventorship. The Office is revising the rules of
practice to permit applicants to postpone filing the inventor's oath or
declaration until the application is otherwise in condition for
allowance. The Office is revising the rules of practice to provide for
the filing of a substitute statement in lieu of an oath or declaration
by an inventor if the inventor is deceased, under legal incapacity, or
cannot be found or reached after diligent effort, or is under an
obligation to assign the invention but has refused to execute an oath
or declaration.
The Office is also revising the rules of practice to remove the
provisions which set forth "without any deceptive intention"
requirements. The Office is further revising the rules pertaining to
reissue practice to eliminate the requirement for a supplemental
reissue oath or declaration, and to require that the inventor's oath or
declaration identify a claim that the application seeks to broaden if
the reissue application seeks to enlarge the scope of the claims of the
patent.
The Office is also revising the rules of practice to harmonize the
practice regarding foreign priority claims with the practice regarding
domestic benefit claims by requiring that both foreign priority claims
and domestic benefit claims be set forth in an application data sheet.
Costs and Benefits: This rulemaking is not economically significant
as that term is defined in Executive Order 12866 (Sept. 30, 1993).
Background: The AIA was enacted into law on September 16, 2011. See
Pub. L. 112-29, 125 Stat. 284 (2011). Section 4 of the AIA amends 35
U.S.C. 115 and 118 to change the practice regarding the inventor's oath
or declaration and filing of an application by a person other than the
inventor. See 125 Stat. at 293-94. Section 20 of the AIA amends 35
U.S.C. 116, 184, 251, and 256 (and other sections) to remove the
provisions which set forth a "without any deceptive intention"
requirement. See 125 Stat. at 333-34. This final rule revises the rules
of practice to implement the provisions of section 4 of the AIA and to
remove the "without any deceptive intention" language due to the
changes to 35 U.S.C. 116, 184, 251, and 256 in section 20 of the AIA.
Section 4(a) of the AIA amends 35 U.S.C. 115 to change the
requirements for the inventor's oath or declaration as follows.
Amended 35 U.S.C. 115(a) provides that an application filed under
35 U.S.C. 111(a) or that commences the national stage under 35 U.S.C.
371 must include, or be amended to include, the name of the inventor
for any invention claimed in the application. 125 Stat. at 293. 35
U.S.C. 115(a) also provides that, except as otherwise provided in 35
U.S.C. 115, each individual who is the inventor or a joint inventor of
a claimed invention in an application must execute an oath or
declaration in connection with the application. 125 Stat. at 293-94.
Amended 35 U.S.C. 115(b) provides that an oath or declaration under
35 U.S.C. 115(a) must contain statements that the application was made
or was authorized to be made by the affiant or declarant, and the
individual believes himself or herself to be the
original inventor or an original joint inventor of a claimed invention
in the application. 125 Stat. at 294. There is no longer a requirement
in the statute that the inventor must state his country of citizenship
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 107 |
or that the inventor believes himself or herself to be the "first"
inventor of the subject matter (process, machine, manufacture, or
composition of matter) sought to be patented.
Amended 35 U.S.C. 115(c) provides that the Director may specify
additional information relating to the inventor and to the invention
that is required to be included in an oath or declaration under 35
U.S.C. 115(a). Id.
Amended 35 U.S.C. 115(d)(1) provides that, in lieu of execution of
an oath or declaration by an inventor under 35 U.S.C. 115(a), the
applicant for patent may provide a substitute statement under the
circumstances described in 35 U.S.C. 115(d)(2), and such additional
circumstances as the Director specifies by regulation. Id. 35 U.S.C.
115(d)(2) provides that an applicant may provide a substitute statement
where an inventor is unable to file the oath or declaration under 35
U.S.C. 115(a) because the individual is deceased, under legal
incapacity, or cannot be found or reached after diligent effort, or an
individual is under an obligation to assign the invention but has
refused to make the oath or declaration required under 35 U.S.C.
115(a). Id. Therefore, while an assignee, a person under an obligation
to assign the invention (an "obligated assignee"), or a person who
otherwise shows sufficient proprietary interest in the matter may make
an application for patent as provided for in 35 U.S.C. 118, an oath or
declaration (or an assignment containing the required statements) by
each inventor is still required, except in the circumstances set forth
in 35 U.S.C. 115(d)(2) and in any additional circumstances specified by
the Director in the regulations. The contents of a substitute statement
are set forth in 35 U.S.C. 115(d)(3). Specifically, 35 U.S.C. 115(d)(3)
provides that the substitute statement must identify the individual
with respect to whom the statement applies, set forth the circumstances
for the permitted basis for filing the substitute statement in lieu of
the oath or declaration under 35 U.S.C. 115(a), and contain any
additional information, including any showing, required by the
Director. Id.
Amended 35 U.S.C. 115(e) provides for making the statements
required under 35 U.S.C. 115(b) and (c) in an assignment of record and
specifically permits an individual who is under an obligation of
assignment of an application to include the required statements in the
assignment executed by the individual, in lieu of filing the statements
separately. Id.
Amended 35 U.S.C. 115(f) provides that a notice of allowance under
35 U.S.C. 151 may be provided to an applicant only if the applicant has
filed each required oath or declaration under 35 U.S.C. 115(a),
substitute statement under 35 U.S.C. 115(d), or recorded assignment
meeting the requirements of 35 U.S.C. 115(e). Id.
The changes to 35 U.S.C. 115 in the AIA do not affect 35 U.S.C.
111(a)(2), which continues to require that an application filed under
35 U.S.C. 111(a) include an oath or declaration as prescribed by 35
U.S.C. 115, and 35 U.S.C. 111(a)(3), which continues to permit the oath
or declaration to be submitted after the filing date of the
application, but within such period and under the conditions prescribed
by the Director, including payment of the currently charged surcharge.
See 35 U.S.C. 111(a)(2)(C) and (a)(3), and 37 CFR 1.16(f). Likewise, 35
U.S.C. 371(c) continues to require an oath or declaration complying
with the requirements of 35 U.S.C. 115 for an international application
to enter the national stage, and 35 U.S.C. 371(d) continues to require
the oath or declaration to be submitted within the period prescribed by
the Director, and with the payment of any surcharge required by the
Director, if not submitted by the date of the commencement of the
national stage. See 35 U.S.C. 371(c)(4) and (d).
Amended 35 U.S.C. 115(g)(1) provides that the requirements under 35
U.S.C. 115 shall not apply to an individual named as the inventor or a
joint inventor in an application that claims benefit under 35 U.S.C.
120, 121, or 365(c) of an earlier-filed application, if: (1) An oath or
declaration meeting the requirements of 35 U.S.C. 115(a) was executed
by the individual and was filed in connection with the earlier-filed
application; (2) a substitute statement meeting the requirements of 35
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 108 |
U.S.C. 115(d) was filed in connection with the earlier-filed
application with respect to the individual; or (3) an assignment
meeting the requirements of 35 U.S.C. 115(e) was executed with respect
to the earlier-filed application by the individual and was recorded in
connection with the earlier-filed application. 125 Stat. at 294-95. 35
U.S.C. 115(g)(2) provides that the Director may still require a copy of
the executed oath or declaration, the substitute statement, or the
assignment filed in connection with the earlier-filed application to be
filed in the later-filed application. Id.
Amended 35 U.S.C. 115(h)(1) provides that any person making a
statement under 35 U.S.C. 115 may withdraw, replace, or otherwise
correct the statement at any time. 35 U.S.C. 115(h)(1) also provides
that the Director shall establish regulations under which additional
statements may be filed when a change is made in the naming of the
inventor requiring the filing of one or more additional statements
under 35 U.S.C. 115. Id. 35 U.S.C. 115(h)(2) provides that if an
individual has executed an oath or declaration meeting the requirements
of 35 U.S.C. 115(a) or an assignment meeting the requirements of 35
U.S.C. 115(e), then the Director may not require that individual to
subsequently make any additional oath, declaration, or other equivalent
statement in connection with the application or any patent issuing
thereon. Id. 35 U.S.C. 115(h)(3) provides that a patent shall not be
invalid or unenforceable based upon the failure to comply with a
requirement under this section if the failure is remedied as provided
under 35 U.S.C. 115(h)(1). Id.
Amended 35 U.S.C. 115(i) provides that any declaration or statement
filed pursuant to 35 U.S.C. 115 must contain an acknowledgement that
any willful false statement made in the declaration or statement is
punishable under 18 U.S.C. 1001 by fine or imprisonment of not more
than 5 years, or both. Id. This is similar to the requirements in pre-
existing 35 U.S.C. 25 for the use of a declaration in lieu of an oath
in an Office proceeding. See 35 U.S.C. 25(b) ("Whenever such written
declaration is used, the document must warn the declarant that willful
false statements and the like are punishable by fine or imprisonment,
or both (18 U.S.C. 1001).").
Section 4(a)(2) of the AIA amends 35 U.S.C. 121 to eliminate the
sentence that provided for the Director to dispense with signing and
execution by the inventor in a divisional application when the
divisional application is directed solely to subject matter described
and claimed in the original application as filed. Id. This amendment to
35 U.S.C. 121 is consistent with 35 U.S.C. 115(g)(1) because the
inventor named in a divisional application would not need to execute an
oath or declaration or equivalent statement for the divisional
application regardless of whether the divisional application is
directed solely to subject matter described and claimed in the original
application.
Section 4(a)(3) of the AIA amends 35 U.S.C. 111(a) to insert "or
declaration" after "oath." Id.
Section 4(b)(1) of the AIA amends 35 U.S.C. 118 to change the
practice regarding the filing of an application by a person other than
the inventor. First, 35 U.S.C. 118 is amended to provide that a person
to whom the inventor has assigned, or is under an obligation to assign,
the invention may make an application for patent. 125 Stat. at 296.
Second, 35 U.S.C. 118 is amended to provide that a person who otherwise
shows sufficient proprietary interest in the matter may make an
application for patent on behalf of and as agent for the inventor on
proof of the pertinent facts and a showing that such action is
appropriate to preserve the rights of the parties. Id. Under amended 35
U.S.C. 118, the Director may continue to provide whatever notice to the
inventor that the Director considers to be sufficient. Id. 35 U.S.C.
118 is also amended to provide that if a patent is granted on an
application filed under 35 U.S.C. 118, the patent shall be granted to
the real party in interest. Id. Amended 35 U.S.C. 116 (35 U.S.C.
116(b)) continues to provide that 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
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 109 |
behalf of himself and the omitted inventor. See 35 U.S.C. 116(b).
Likewise, 35 U.S.C. 117 continues to provide that legal representatives
of deceased inventors and of those under legal incapacity may make
application for patent upon compliance with the requirements and on the
same terms and conditions applicable to the inventor. See 35 U.S.C.
117.
Section 4(b)(2) of the AIA amends 35 U.S.C. 251 to provide for the
filing of a reissue application by an assignee of the entire interest
if the application for the original patent was filed by the assignee of
the entire interest. Id.
Section 4(c) of the AIA amends 35 U.S.C. 112 to change, inter alia,
the undesignated paragraphs to subsections. Id. Section 4(d) makes
conforming amendments to 35 U.S.C. 111(b) to make reference to the
subsections of 35 U.S.C. 112. 125 Stat. at 296-97.
Section 4(e) of the AIA provides that the amendments made by
Section 4 shall take effect on, and shall apply to any patent
application filed on or after, September 16, 2012. 125 Stat. at 297.
Section 20 of the AIA amends 35 U.S.C. 116, 184, 251, and 256 to
eliminate "without any deceptive intention" clauses from each portion
of the statute. 125 Stat. at 333-34. Section 20 of the AIA provides
that its amendments shall take effect on, and shall apply to
proceedings commenced on or after September 16, 2012. 125 Stat. at 335.
This change should not be taken as an endorsement for applicants and
inventors to act with "deceptive intention" in proceedings before the
Office. As discussed previously, 35 U.S.C. 115(i) requires that any
declaration or statement filed pursuant to 35 U.S.C. 115 must contain
an acknowledgement that any willful false statement made in the
declaration or statement is punishable under 18 U.S.C. 1001 by fine or
imprisonment of not more than five (5) years, or both.
General Discussion Regarding Implementation: The Office proposed
changes and requested comments on the changes to the rules of practice
to implement section 4 of the AIA in a notice of proposed rulemaking
published in January 2012. See Changes to Implement the Inventor's Oath
or Declaration Provisions of the Leahy-Smith America Invents Act, 77 FR
982-1003 (Jan. 6, 2012) (notice of proposed rulemaking). The public
submitted a number of comments suggesting that the Office take a more
robust approach to implementing the changes in section 4 of the AIA,
rather than shoehorn those provisions into existing Office practices.
In this final rule, the Office is making a number of changes to the
implementation of section 4 of the AIA in view of the input from the
public.
Changes Concerning Who May Apply for a Patent (the Applicant): The
Office took the position in the notice of proposed rulemaking that the
change to 35 U.S.C. 118 did not permit the assignee to be the applicant
except in the situations enumerated in 35 U.S.C. 115(d)(2). See Changes
to Implement the Inventor's Oath or Declaration Provisions of the
Leahy-Smith America Invents Act, 77 FR at 983. The public submitted a
number of comments suggesting that the changes to 35 U.S.C. 118 permit
an assignee or an obligated assignee to be the applicant even in
situations other than those enumerated in 35 U.S.C. 115(d)(2). The
Office has revised the position taken in the notice of proposed
rulemaking based on the public comments, and is now taking the position
that the changes to 35 U.S.C. 115 and 118 permit an assignee to file an
application for patent as the applicant.
35 U.S.C. 118, as amended by the AIA, permits (but does not
require) a person to whom the inventor has assigned (assignee) or is
under an obligation to assign (obligated assignee) the invention to
make the application for patent. That section also permits a person who
otherwise shows sufficient proprietary interest in the matter to make
an application for patent on behalf of, and as agent for, the inventor.
The legislative history of the AIA makes clear that the change to 35
U.S.C. 118 is designed to: (1) Make it easier for an assignee to file a
patent application; (2) allow obligated assignees (entities to which
the inventor is obligated to assign the application) to file
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 110 |
applications; and (3) allow a person who has a sufficient proprietary
interest in the invention to file an application to preserve that
person's rights and those of the inventor. See H.R. Rep. 112-98, at 44
(2011). 35 U.S.C. 115, as amended by the AIA, still requires each
inventor to execute an oath or declaration, except in the limited
circumstances specified in 35 U.S.C. 115(d), even if the application
has been filed by the assignee or an obligated assignee.
Traditionally, being the applicant (or the person who may "make
the application") under 35 U.S.C. chapter 11 has been synonymous with
being the person who must execute the oath or declaration under 35
U.S.C. 115. However, 35 U.S.C. 115, as amended by the AIA, separates
the applicant from the person who must execute the oath or declaration
under 35 U.S.C. 115. Therefore, the Office now reads 35 U.S.C. 116,
117, and 118 in view of the public comment to specify the circumstances
under which a person other than the inventor may be the applicant, but
35 U.S.C. 115 defines who must execute the oath or declaration that is
required by 35 U.S.C. 115.
As the AIA distinguishes between the "applicant" and the person
who must execute the oath or declaration under 35 U.S.C. 115, the
Office is separating the regulations pertaining to being the applicant
from the regulations pertaining to execution of the inventor's oath or
declaration. Specifically, the regulations pertaining to being the
applicant are as follows: (1) 37 CFR 1.41 pertains to inventorship; (2)
37 CFR 1.42 pertains to the applicant for patent (which may be the
inventor or may be the assignee); (3) 37 CFR 1.43 pertains to
applications by the legal representative of a deceased or legally
incapacitated inventor; (4) 37 CFR 1.45 pertains to joint inventors and
applications by remaining joint inventors; and (5) 37 CFR 1.46 pertains
to applications by the assignee, obligated assignee, or person who
otherwise shows sufficient proprietary interest in the matter, or to
applications in which the assignee has taken over prosecution to the
exclusion of the inventor. The regulations pertaining to
the inventor's oath or declaration are as follows: (1) 37 CFR 1.63
pertains to an inventor's oath or declaration under 35 U.S.C. 115(a) or
an assignment under 35 U.S.C. 115(e) that contains the statements
required in an inventor's oath or declaration by the inventor or a
joint inventor; and (2) 37 CFR 1.64 pertains to a substitute statement
under 35 U.S.C. 115(d) if the inventor is deceased, is legally
incapacitated, cannot be found or reached after a diligent effort was
made, or has refused to execute the oath or declaration.
To further clarify the rules, and because of the statutory change
from an inventor-applicant system to an assignee-applicant system, the
Office explains the terms "applicant" and "assignee" as now used in
the rules of practice. The term "applicant" means the inventor (all
joint inventors collectively) if there is no assignee, or if the
assignee has opted not to file (make) the application for patent and
not to take over prosecution to the exclusion of the inventor. The term
"applicant" means the assignee (or obligated assignee or person who
otherwise shows sufficient proprietary interest in the matter) if the
assignee (or obligated assignee or person who otherwise shows
sufficient proprietary interest in the matter) has filed the
application for patent, or if the assignee has taken over prosecution
of the application to the exclusion of the inventor. The term
"assignee" means the assignee of the entire right, title and interest
in the application regardless of whether the assignee filed the
application for patent or has taken over prosecution of the application
to the exclusion of the inventor.
Under 35 U.S.C. 118, as amended, provides that where the Director
grants a patent on an application filed under 35 U.S.C. 118 by a person
other than the inventor, the Office must grant the patent to the real
party in interest. Therefore, the Office is requiring applicants other
than the inventor to notify the Office of any change in the real party
in interest in a reply to a notice of allowance. Absent any such
notification, the Office will presume no change has occurred and will
grant the patent to the real party in interest of record.
The Office plans to continue to use the inventor's name for
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 111 |
application and patent identification purposes as inventor names tend
to provide a more distinct identification than assignee names.
Changes to Oath or Declaration Practice: The Office proposed in the
notice of proposed rulemaking to require that an oath or declaration
include the names of all inventors, as well as the "reviewed and
understands" and "duty to disclose" clauses formerly required by 37
CFR 1.63(b)(2) and (b)(3). See Changes to Implement the Inventor's Oath
or Declaration Provisions of the Leahy-Smith America Invents Act, 77 FR
at 1000. The public submitted a number of comments suggesting that the
Office should not require that an oath or declaration name all of the
inventors or require any statements other than those required by 35
U.S.C. 115(b).
The Office is, in this final rule, streamlining a number of oath or
declaration requirements (vis-a-vis both the proposed and former
requirements) based upon the public comments. First, the Office is
revising 37 CFR 1.63 to state that an inventor's oath or declaration
need not indicate the name of each inventor if the applicant provides
an application data sheet indicating the legal name, residence, and
mailing address of each inventor. Second, the Office is revising 37 CFR
1.63 to eliminate the requirement that an inventor's oath or
declaration state that the person executing the oath or declaration has
reviewed and understands the contents of the application, and
acknowledges the duty to disclose to the Office all information known
to the person to be material to patentability as defined in 37 CFR
1.56. 37 CFR 1.63 will simply state that a person may not execute an
oath or declaration for an application unless that person has reviewed
and understands the contents of the application, and is aware of the
duty to disclose to the Office all information known to the person to
be material to patentability as defined in 37 CFR 1.56. Third, the
Office is revising 37 CFR 1.63 to eliminate the requirements that any
declaration under 35 U.S.C. 115 contain an acknowledgement that willful
false statements may jeopardize the validity of the application or any
patent issuing thereon, and that all statements made of the declarant's
own knowledge are true and that all statements made on information and
belief are believed to be true. Finally, since 35 U.S.C. 115 no longer
contains a requirement that the inventor identify his country of
citizenship, the Office will no longer require this information in the
oath or declaration.
As revised by the AIA, 35 U.S.C. 115 (entitled "Inventor's oath or
declaration") provides for an oath or declaration (35 U.S.C. 115(a)),
substitute statement (35 U.S.C. 115(d)), and an assignment-statement
(35 U.S.C. 115(e)), and any substitute statement or assignment-
statement must contain a willful false statements clause pursuant to 35
U.S.C. 115(i). The requirement for the willful false statements clause
has the effect of making a substitute statement under 35 U.S.C. 115(d)
or an assignment-statement under 35 U.S.C. 115(e) properly denominated
as a "declaration." See previous discussion of 35 U.S.C. 115(i).
Consistent with these statutory provisions, and the provisions of 35
U.S.C. 111(a) and 371(c) which require that an application contain an
"oath or declaration" as prescribed by 35 U.S.C. 115 (see 35 U.S.C.
111(a)(2)(C) and 371(c)(4)), the Office is employing the phrase
"inventor's oath or declaration" in the rules of practice to mean an
oath or declaration as provided for in 35 U.S.C. 115(a), a substitute
statement as provided for in 35 U.S.C. 115(d), or an assignment-
statement as provided for in 35 U.S.C. 115(e).
Specifically, when the rules reference "an inventor's oath or
declaration," it means an oath or declaration under 35 U.S.C. 115(a),
substitute statement under 35 U.S.C. 115(d), or assignment-statement
under 35 U.S.C. 115(e) executed by or with respect to an individual
(whether the inventor or a joint inventor) for an application. The
phrase "the inventor's oath or declaration" means the oaths or
declarations under 35 U.S.C. 115(a), substitute statements under 35
U.S.C. 115(d), or assignment-statements under 35 U.S.C. 115(e) executed
by the inventive entity. With respect to an application naming more
than one inventor, any reference to "the inventor's oath or
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 112 |
declaration" means the oaths, declarations, or substitute statements
that have been collectively executed by or with respect to all of the
joint inventors, unless otherwise clear from the context.
The Office proposed in the notice of proposed rulemaking to
continue the practice of requiring the inventor's oath or declaration
before examination. See Changes to Implement the Inventor's Oath or
Declaration Provisions of the Leahy-Smith America Invents Act, 77 FR at
984-85. The public submitted a number of comments suggesting that the
Office should not require the inventor's oath or declaration before an
application is in condition for allowance. Based upon the public
comments, the Office is providing in this final rule that applicants
may postpone filing the inventor's oath or declaration until the
application is otherwise in condition for allowance if the applicant
provides an application data sheet before examination indicating the
name, residence, and mailing address of each inventor. The Office will
continue the practice permitted by 35 U.S.C. 111(a)(3) of requiring a
surcharge (currently $130) to recover the cost of the special processing
and additional notices for original (non-reissue) applications that are
not complete on filing. If the applicant, however, provides a signed
application data sheet providing the name, residence, and mailing
address of each inventor, the Office will not require an additional fee
beyond the surcharge simply to postpone filing the inventor's oath or
declaration until the application is otherwise in condition for
allowance.
The Office indicated in the notice of proposed rulemaking that the
Office needs to know who the inventors are prior to examination and
that postponing the requirement for the inventor's oath or declaration
until allowance would add to overall patent pendency. See Changes to
Implement the Inventor's Oath or Declaration Provisions of the Leahy-
Smith America Invents Act, 77 FR at 984. The Office is proposing in a
separate rulemaking an additional fee of $1,000 ($500 for a small
entity, and $250 for a micro entity) for a request to correct
inventorship in an application after the first Office action on the
merits to encourage reasonable diligence and a bona fide effort in
ascertaining the actual inventorship and providing that information to
the Office prior to examination. The Office is also considering
proposing (in a separate rulemaking) changes to the patent term
adjustments provisions of 37 CFR 1.704 (defining the circumstances that
constitute a failure of the applicant to engage in reasonable efforts
to conclude processing or examination of an application, and which
result in a reduction of patent term adjustment) to ensure that
applicants who delay the issuance of a notice of allowance under 35
U.S.C. 151 do not gain patent term adjustment as a consequence of their
delay.
Applicants entering the national stage under 35 U.S.C. 371 from an
international application under the Patent Cooperation Treaty (PCT)
must be mindful of the patent term adjustment consequences of this
course of action. The Office is changing its rules to provide that a
PCT international application enters the national stage when the
applicant files the fee required by 35 U.S.C. 371(c)(1) (the national
fee provided in 35 U.S.C. 41(a)), and the documents required by 35
U.S.C. 371(c)(2) (a copy of the international application (unless not
required under 35 U.S.C. 371(a) or already communicated by the
International Bureau), and a translation into the English language of
the international application, if it was filed in another language))
within the period set in 37 CFR 1.495. The fourteen-month time frame in
35 U.S.C. 154(b)(1)(A)(i)(II) for issuing an Office action under 35
U.S.C. 132 or notice of allowance under 35 U.S.C. 151 is measured from
"the date on which an international application fulfilled the
requirements of section 371," which includes the filing of the
inventor's oath or declaration. See 35 U.S.C. 371(c)(4). This process
is discussed in detail in the Manual of Patent Examining Procedure
(MPEP). See MPEP Sec. 1893.03(b) (8th ed. 2001) (Rev. 8, July 2010).
Changes Pertaining to Substitute Statements: In the notice of
proposed rulemaking, the Office proposed to require a petition with
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 113 |
showings and a fee for applicants executing a substitute statement in
lieu of an oath or declaration as required by former 37 CFR 1.47. See
Changes to Implement the Inventor's Oath or Declaration Provisions of
the Leahy-Smith America Invents Act, 77 FR at 988-89, and 999. The
public submitted a number of comments suggesting that the Office should
not require proof or showings from applicants executing a substitute
statement in lieu of an oath or declaration. The Office is in this
final rule streamlining a number of proposed substitute statement
requirements (vis-a-vis both the proposed and former requirements of 37
CFR 1.47) based upon the public comments. For an assignee or obligated
assignee filing the application as the applicant, the final rule
provides that the documentary evidence of ownership (e.g., assignment
for an assignee, employment agreement for an obligated assignee) should
be recorded as provided for in 37 CFR part 3 no later than the date the
issue fee is paid in the application. For a person who otherwise shows
sufficient proprietary interest in the matter to file the application
as the applicant, the final rule provides that the showing of
proprietary interest must be filed in the application, the fee set
forth in 37 CFR 1.17(g) paid, and a petition granted before the person
who has shown sufficient proprietary interest in the matter will be
considered the applicant. The fee for persons who otherwise show
sufficient proprietary interest in the matter is to recover the cost of
the special processing and Official Gazette notice required for
applications that are filed and prosecuted on behalf of the nonsigning
inventor by a person who is not the assignee or obligated assignee.
The Office will also provide that an assignee, an obligated
assignee, or a person who otherwise shows sufficient proprietary
interest in the matter who is the applicant may execute a substitute
statement in lieu of an oath or declaration if the applicant
identifies: (1) The circumstances permitting the person to execute the
substitute statement in lieu of an oath or declaration (e.g., whether
the nonsigning inventor cannot be reached after a diligent effort was
made, or has refused to execute the oath or declaration); (2) the
person executing the substitute statement with respect to the
nonsigning inventor and the relationship of such person to the
nonsigning inventor; and (3) the last known address of the nonsigning
inventor.
Changes Pertaining to Reissue Practice: Consistent with the
amendments made to 35 U.S.C. 115 and 251, the Office is revising
reissue practice (vis-a-vis the former requirements) to: (1) Delete the
requirement for a reissue inventor's oath or declaration to include a
statement that all errors arose without any deceptive intent on the
part of the applicant; (2) eliminate the requirement for a supplemental
inventor's oath or declaration; (3) require the inventor's oath or
declaration for a reissue application to identify a claim that the
application seeks to broaden if the reissue application seeks to
enlarge the scope of the claims of the patent (a basis for the reissue
is the patentee claiming less than the patentee had the right to claim
in the patent); and (4) clarify that a single claim containing both a
broadening and a narrowing of the claimed invention is to be treated as
a broadening. These changes will provide for more efficient processing
of reissue applications and improve the quality of patents, in
accordance with the intent of the AIA. In order to implement the
conforming amendment made to 35 U.S.C. 251 in section 4(b)(2) of the
AIA, the Office is also revising the rules to permit an assignee of the
entire interest who filed an application under 35 U.S.C. 118 that was
patented to sign the inventor's oath or declaration in a reissue
application of such patent (even if the reissue application is a
broadening reissue).
Miscellaneous Changes: The Office, under the authority provided by
35 U.S.C. 2(b)(2), is also revising the rules of practice for power of
attorney, prosecution of an application by an assignee, and foreign
priority and domestic benefit claims to facilitate prosecution of
applications and improve the quality of patents. Juristic entities
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 114 |
(organizations) who seek to prosecute an application, including taking
over prosecution of an application, will need
to do so via a registered practitioner. The Office's experience is that
the vast majority of juristic entities act via a registered
practitioner, but a small number attempt to prosecute applications
"pro se."
Other changes (vis-a-vis the former regulations) include: (1)
Streamlining correction of inventorship, correction of an inventor's
name, and changes in the order of the names of joint inventors; (2)
providing for the carryover of a power of attorney in continuing
applications, where no inventors are being added in the continuing
application; (3) permitting practitioners who have acted only in a
representative capacity in an application to change the correspondence
address after a patent has issued; (4) accepting the signature of a
practitioner of record on a statement under 37 CFR 3.73(c) on behalf of
an assignee without requiring further evidence of the practitioner's
authority to act on behalf of the assignee; (5) providing a procedure
for handling conflicts between different purported assignees attempting
to control prosecution; and (6) harmonizing the practice regarding
foreign priority claims with the practice regarding domestic benefit
claims by requiring both types of claims to be set forth in an
application data sheet.
Changes for consistency with section 4(c) of the AIA (amending 35
U.S.C. 112 to change, inter alia, the undesignated paragraphs to
subsections) will be made in a separate rulemaking that implements
miscellaneous post patent provisions of the AIA.
Discussion of Specific Rules
The following is a discussion of the amendments to Title 37 of the
Code of Federal Regulations, parts 1, 3, 5, 10, and 41 that are
implemented in this final rule:
37 CFR Part 1
Section 1.1: Section 1.1(e) is amended to update the mail stop
designation for communications relating to patent term extensions under
35 U.S.C. 156 to make it consistent with the Office's list of mail
stops. Mail stops assist the Office in routing correspondence to the
office or area assigned with treating it. Use of mail stops is not
required but is strongly recommended, even where the documents are
submitted via the Office's electronic filing system-Web (EFS-Web). A
mail stop designation can help the Office more quickly identify the
type of document if the applicant did not select the correct document
code when uploading a document through EFS-Web. For this reason, use of
mail stops is encouraged.
Applicants are reminded that initial requests for patent term
extension may not be submitted via EFS-Web and must be filed in paper.
These initial requests are handled differently by Office personnel than
other types of official patent correspondence. Therefore, the use of a
mail stop will help ensure that initial requests are properly
recognized and processed in a timely manner.
Section 1.4: Section 1.4(e)(2) provides that a payment by credit
card that is not being made via the Office's electronic filing systems
(e.g., EFS-Web, the Electronic Patent Assignment System (EPAS), or the
Finance On-line Shopping Web page for patent maintenance fees), may
only be submitted with an original handwritten signature personally
signed in permanent dark ink or its equivalent by that person. This
change will avoid possible controversies regarding use of an
S-signature (§ 1.4(d)(2)) instead of a handwritten signature (§ 1.4(d)(1))
for credit card payments, e.g., a request for refund where
there is a change of purpose by the applicant and the request is based
on use of an S-signature rather than a handwritten signature. An
S-signature includes any signature made by electrical or mechanical
means, and any other mode of making or applying a signature not covered
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 115 |
by a handwritten signature. See § 1.4(d)(2). Section 1.4(e)(1)
contains the language of former § 1.4(e).
An original handwritten signature is required only when the credit
card payment is being made in paper and thus the Office's Card Payment
Form, PTO-2038, or an equivalent, is being used. A submission via the
Central Facsimile Number is considered a paper submission and requires
an original handwritten signature. Applicants are reminded that neither
Form PTO-2038 nor an equivalent should be filed via EFS-Web.
Section 1.5: Section 1.5(a) is amended to indicate that letters
directed to the Office concerning applications for patent should state
the name of the first listed inventor, rather than the name of the
applicant. As discussed previously, the Office plans to continue to use
the inventor's name for application and patent identification purposes
as inventor names tend to provide a more distinct identification than
assignee name.
Section 1.9: Section 1.9(a) is amended to indicate that the terms
"national application" and "nonprovisional application" as used in
37 CFR chapter I with respect to international applications filed under
the PCT refer to an international application filed under the PCT in
which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid.
Section 1.9(b) is amended to indicate that the term "international
application" as used in 37 CFR chapter I refers to an international
application for patent filed under the PCT prior to entering national
processing at the Designated Office stage. This change is being made to
avoid the situation in which a PCT "international application" that
is pending as to the U.S. is neither an international application
(because national processing at the Designated Office stage has begun)
nor a nonprovisional application (because the application has not yet
entered the national stage under § 1.491). The use of the terms
"national application" and "nonprovisional application" for such
applications will identify the stage at which the application currently
resides.
Section 1.12: Sections 1.12(b) and (c) are amended to indicate that
a request for access to assignment records of an application maintained
in confidence under 35 U.S.C. 122(a) must include written authority of
an inventor, the applicant, the assignee or an assignee of an undivided
part interest, or a patent practitioner of record, unless by petition
having the requisite showing. This change is for consistency with the
change in practice concerning who is the applicant for patent in § 1.42.
Section 1.14: Section 1.14(c) is amended to indicate that a request
to access an application maintained in confidence under 35 U.S.C.
122(a) must be signed by: (1) The applicant; (2) a patent practitioner
of record; (3) the assignee or an assignee of an undivided part
interest; (4) the inventor or a joint inventor; or (5) a registered
attorney or agent named in the papers accompanying the application
papers filed under § 1.53 or the national stage documents filed
under § 1.495, if a power of attorney has not been appointed under
§ 1.32. This change is for consistency with the change in practice
concerning who is the applicant for patent in § 1.42.
Section 1.14(f) is amended to limit publication of notice in the
Official Gazette of an application filed by someone other than the
inventor to the filing of an application on behalf of an inventor by a
person who otherwise shows sufficient propriety interest in the matter.
Section 1.16: Section 1.16(f) is amended to refer to "the
inventor's oath or declaration" rather than "oath or declaration."
This change to § 1.16(f), as well as the use of "the inventor's
oath or declaration" in other rules, e.g., §§ 1.17(i),
1.51(b)(2), 1.52(b) and (c), 1.53, 1.77(a)(6), 1.136(c)(1), 1.153(b),
1.154(a)(6), 1.162, and 1.163(b)(6), 1.175, 1.492(h), and
1.495(c)(1)(ii), is for consistency with the use of the phrase "the
inventor's oath or declaration" to denote: (1) the oath or declaration
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 116 |
under 35 U.S.C. 115(a), substitute statement under 35 U.S.C. 115(d), or
assignment-statement under 35 U.S.C. 115(e) executed by or with respect
to the inventor for an application naming only one inventor; and (2)
the oaths or declarations under 35 U.S.C. 115(a), substitute statements
under 35 U.S.C. 115(d), or assignment-statements under 35 U.S.C. 115(e)
that collectively have been executed by or with respect to all of the
joint inventors for an application naming joint inventors.
Section 1.17: Section 1.17(g) is amended to refer to the filing of
an application on behalf of an inventor by a person who otherwise shows
sufficient proprietary interest in the matter under § 1.46, rather
than the filing of an application by other than all the inventors or by
a person not the inventor under former § 1.47. This change is for
consistency with the changes to applicant practice in §§ 1.42,
1.43, 1.45, and 1.46. Thus, an assignee or obligated assignee will no
longer be required to file a petition and fee to be considered the
applicant or to execute a substitute statement (in lieu of an oath or
declaration) with respect to a nonsigning inventor.
Section 1.17(i) is amended to refer to supplying the name or names
of the inventor or inventors in an application without either an
application data sheet or an inventor's oath or declaration (rather
than just without an oath or declaration as prescribed by § 1.63).
This change is for consistency with the changes to practice for naming
the inventors in § 1.41.
Section 1.27: Section 1.27(c)(2) is amended to indicate that a
written assertion of small entity status can be signed by: (1) The
applicant (§ 1.42 or § 1.421); (2) a patent practitioner of
record or a practitioner acting in a representative capacity under
§ 1.34; (3) the inventor or a joint inventor, if the inventor is
the applicant; or (4) the assignee. This change is for consistency with
the change in practice concerning who is the applicant for patent in
§ 1.42. This change also results in any written assertion being
signed by or on behalf of the real party in interest, rather than by a
party who no longer has a financial interest in the application.
Section 1.31: Section 1.31 is amended to provide that an applicant
for patent may file and prosecute the applicant's own case, or the
applicant may give power of attorney so as to be represented by one or
more patent practitioners or joint inventors, except that a juristic
entity (e.g., organizational assignee) must be represented by a patent
practitioner even if the juristic entity is the applicant. This change
is for consistency with the change in practice concerning who is the
applicant for patent in § 1.42. Thus, all papers submitted on
behalf of a juristic entity must be signed by a patent practitioner
unless otherwise specified, § 1.33(b)(3). Juristic entities include
corporations (MPEP § 409.03(b)) or other non-human entities created
by law and given certain legal rights. This change is because juristic
entities have been attempting to prosecute patent applications before
the Office pro se and requesting additional assistance from examiners.
Juristic entities attempting to prosecute patent applications before
the Office pro se also make more procedural errors that result in
delays in prosecution. Accordingly, this change will facilitate a
reduction in the Office's backlog and pendency by reducing prosecution
delays caused by procedural errors.
Section 1.31 also provides that the Office cannot aid in the
selection of a patent practitioner.
Section 1.32: Section 1.32(a)(2) is amended to provide that the
term "power of attorney" means a written document by which a
principal authorizes one or more patent practitioners or joint
inventors to act on the principal's behalf. Section 1.32(a)(3) is
amended to provide that the term "principal" means the applicant
(§ 1.42) for an application for patent and the patent owner for a
patent, including a patent in a supplemental examination or
reexamination proceeding, and that the principal executes a power of
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 117 |
attorney designating one or more patent practitioners or joint
inventors to act on the principal's behalf. Section 1.32(a)(4) is
amended to provide that the term "revocation" means the cancellation
by the principal of the authority previously given to a patent
practitioner or joint inventor to act on the principal's behalf.
Section 1.32(a)(6) is added to provide that the term "patent
practitioner of record" means a patent practitioner who has been
granted a power of attorney in an application, patent, or other
proceeding in compliance with § 1.32(b), and that the terms
"practitioner of record" and "attorney or agent of record" also
mean a patent practitioner who has been granted a power of attorney in
an application, patent, or other proceeding in compliance with § 1.32(b).
These changes are for consistency with the change in practice concerning
the applicant for patent in § 1.42.
Section 1.32(b) is amended to provide that a power of attorney
must: (1) Be in writing; (2) name one or more representatives in
compliance with § 1.32(c); (3) give the representative power to act
on behalf of the principal; and (4) be signed by the applicant for
patent (§ 1.42) or the patent owner. This provision also applies in
reissue applications, supplemental examination proceedings, and
reexamination proceedings. These changes are for consistency with the
change in practice concerning who is the applicant for patent in § 1.42.
Section 1.32(b)(4) provides that a patent owner who was not the
applicant under § 1.46 must appoint any power of attorney in
compliance with §§ 3.71 and 3.73. This covers a patent owner in
a reissue application who was not the applicant under § 1.46 in the
application for the original patent, as well as a patent owner in a
supplemental examination or reexamination proceeding who was not the
applicant under § 1.46.
Section 1.32(d) is added to provide that a power of attorney from a
prior national application for which benefit is claimed under 35 U.S.C.
120, 121, or 365(c) in a continuing application may have effect in the
continuing application if a copy of the power of attorney from the
prior application is filed in the continuing application unless: (1)
The power of attorney was granted by the inventor; and (2) the
continuing application names an inventor who was not named as an
inventor in the prior application. Former § 1.63(d)(4) provided
that, when filing continuation and divisional applications and
including a copy of a declaration from the parent application,
applicants should "identify" in the continuation or divisional any
change in power of attorney that occurred after the filing of the
parent application. The requirement in former § 1.63(d)(4) to
"identify" the change in power of attorney has been interpreted
differently by applicants, with varying success of the Office
recognizing the change in power of attorney. Attempts to comply have
included: filing a copy of the power of attorney from the parent,
filing a copy of only the notice of acceptance of power of attorney,
and making a statement about the power of attorney in a transmittal
letter that accompanied the continuation or divisional application.
Sometimes applicants did not accurately identify the change in power of
attorney (e.g., the power of attorney document in the parent
application appointed specific practitioners by name and registration
number, but the papers filed in the continuation or
divisional application directed the Office to recognize the
practitioners associated with a customer number as having power of
attorney). Specifically requiring a copy of the power of attorney in
the continuing application in all situations (even where a change in
power did not occur in the prior application) will make the record
clear with respect to who has power of attorney.
The Office does not recommend that practitioners use a combined
declaration and power of attorney document, and no longer provides a
combined declaration and power of attorney form on its Internet Web
site. The power of attorney should be from the assignee where one
exists. Otherwise, the assignee may be paying the bill, while the
inventor is providing the power of attorney, thereby possibly raising
an issue as to who is the practitioner's client. Additionally,
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 118 |
relationships between an assignee and the inventors may deteriorate. It
is not uncommon in these situations for inventors to stop cooperating
and in some cases file powers of attorney in an attempt to control
prosecution of the application.
Section 1.32(e) is added to provide that if the power of attorney
was granted by the originally named inventive entity and an added
inventor pursuant to § 1.48 does not provide a power of attorney
consistent with the power of attorney granted by the originally named
inventive entity, the addition of the inventor results in the loss of
that power of attorney upon grant of the § 1.48 request. This
provision does not preclude a practitioner from acting pursuant to
§ 1.34, if applicable.
Section 1.33: Section 1.33(a) is amended to specify that if an
applicant provides more than one correspondence address (in a single
paper or in different papers), the Office will select one of the
specified addresses for use as the correspondence address and, if
given, may select the correspondence address associated with a Customer
Number over a typed correspondence address. This change pertains to the
problem that arises when applicants provide multiple correspondence
addresses in a single paper (e.g., providing both a typed
correspondence address and a Customer Number in a single paper) or
multiple papers (e.g., an oath or declaration, a transmittal letter,
and a preliminary amendment that each includes a different
correspondence address), and the Office inadvertently does not select
the correspondence address actually desired by applicant. The Office
may then need to re-mail papers to the desired address. This change
does not affect the hierarchy provided in § 1.76(d) for
inconsistencies between an application data sheet and other documents.
This change is designed to encourage applicants to review their
submissions carefully to ensure that the Office receives clear
instructions regarding the correspondence address.
Section 1.33(a) also provides that the correspondence address may
be changed by the parties set forth in § 1.33(b)(1) (a patent
practitioner of record) or § 1.33(b)(3) (the applicant under § 1.42)).
Section 1.33(a) also provides that prior to the appointment of
any power of attorney under § 1.32(b), the correspondence address
may also be changed by any patent practitioner named in the application
transmittal papers who acts in a representative capacity under the
provisions of § 1.34. Section 1.33(a) no longer discusses the
filing of an oath or declaration under § 1.63 as the Office is
revising the rules to allow applicants to postpone filing the
inventor's oath or declaration until the application is otherwise in
condition for allowance.
Sections 1.33(b)(1) and (2) are amended to provide that amendments
and other papers, except for written assertions pursuant to
§ 1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed
by: (1) A patent practitioner of record; (2) a patent practitioner not
of record who acts in a representative capacity under the provisions of
§ 1.34; or (3) the applicant (§ 1.42). Section 1.33(b)(3) also
provides that unless otherwise specified (e.g., terminal disclaimers
and § 3.73(c) statements), all papers submitted on behalf of a
juristic entity must be signed by a patent practitioner, as § 1.31
provides that a juristic entity may prosecute a patent application only
through a patent practitioner.
Section 1.33(f) is added to replace former § 1.63(d)(4) with
respect to the correspondence address. Where application papers (e.g.,
the inventor's oath or declaration) from a prior application are used
in a continuing application and the correspondence address was changed
during the prosecution of the prior application, an application data
sheet or separate paper identifying the correspondence address to be
used for the continuing application must be submitted. Otherwise, the
Office may not recognize the change of correspondence address effected
during the prosecution of the prior application. Historically, some
applicants would file continuing applications with copies of papers
from the prior application that include correspondence addresses to
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 119 |
former law firms or correspondence addresses that are no longer
current. This change will facilitate the processing of patent
applications by the Office by making it easier to determine the correct
correspondence address and reduce the number of instances where the
Office mails correspondence to an incorrect address.
Section 1.33(g) is added to provide that a practitioner acting in a
representative capacity whose correspondence address is the
correspondence address of record in an application may change the
correspondence address after the patent has issued, provided that the
change of correspondence address is accompanied by a statement that
notice has been given to the patentee or owner. Section 1.33(g)
provides a means for practitioners acting in a representative capacity
in an application to effect a change in correspondence address after
the patent has granted but would not provide authority to a
practitioner acting under § 1.34 to change the correspondence
address in an application. See § 1.33(a).
Practitioners that file and prosecute an application in a
representative capacity, pursuant to § 1.34, usually provide their
business address as the correspondence address of record. Once the
patent issues, practitioners have attempted to withdraw as attorney or
agent by filing a petition, and also attempt to change the
correspondence address to direct correspondence to the patentee's or
owner's address. Such attempts have not been successful as the rules
did not permit the correspondence address to be changed by a
practitioner acting in a representative capacity, nor would the Office
grant withdrawal where a practitioner is not of record. See Change in
Procedure for Requests to Withdraw from Representation In a Patent
Application, 1329 Off. Gaz. Pat. Office 99 (Apr. 8, 2008). There have
been instances where practitioners acting in a representative capacity
have indicated that they have repeatedly requested that the client
change the correspondence address, but the client has refused to submit
the change of correspondence address to the Office. Section 1.33(g)
will permit practitioners to change the correspondence address after a
patent has issued where practitioners have provided notice to the
patentees or owners.
Section 1.36: Section 1.36(a) is amended to change "by an
applicant for patent (§ 1.41(b)) or an assignee of the entire
interest of the applicant, or the owner of the entire interest of a
patent" to "by the applicant or patent owner." An assignee
conducting prosecution of a national patent application does so as
the applicant (note that all papers submitted on behalf of a juristic
entity must be signed by a patent practitioner). Thus, there is no need
to refer separately to the applicant and an assignee of the entire
interest of the applicant. This change is for consistency with the
change in practice concerning the applicant for patent in § 1.42.
In addition, the patent owner is the owner of the entire interest of a
patent. Section 1.36(a) is also amended to change the parenthetical
"or fewer than all of the assignees of the entire interest of the
applicant or, in a reexamination proceeding, fewer than all the owners
of the entire interest of a patent" in the third sentence to "or
fewer than all patent owners in a supplemental examination or
reexamination proceeding." Section 1.36(a) is also amended to change
the phrase "but the assignee of the entire interest of the applicant
may revoke previous powers of attorney and give another power of
attorney of the assignee's own selection as provided in § 1.32(b)"
in the ultimate sentence to "but the assignee may become the applicant
under § 1.46(c) and revoke any previous power of attorney and grant
a power of attorney as provided in § 1.32(b)."
Section 1.41: Section 1.41(a) provides that an application must
include, or be amended to include, the name of the inventor for any
invention claimed in the application (the inventorship). See 35 U.S.C.
115(a). As discussed previously, the "applicant" is provided for in
§ 1.42.
Section 1.41(b) provides that the applicant may name the
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 120 |
inventorship of a nonprovisional application under 35 U.S.C. 111(a) in
the application data sheet in accordance with § 1.76 or the
inventor's oath or declaration. Section 1.41(b) specifically provides
that the inventorship of a nonprovisional application under 35 U.S.C.
111(a) is the inventor or joint inventors set forth in the application
data sheet in accordance with § 1.76 filed before or concurrently
with the inventor's oath or declaration. An application data sheet must
be signed (§ 1.76(e)) to comply with § 1.76. An unsigned
application data sheet is treated as only an application transmittal
letter. See § 1.76(e). Section 1.41(b) also provides that if an
application data sheet is not filed before or concurrently with the
inventor's oath or declaration, the inventorship is the inventor or
joint inventors set forth in the inventor's oath or declaration, except
as provided for in §§ 1.53(d)(4) (continued prosecution
applications) and 1.63(d) (continuing applications). Section 1.41(b)
also provides that once an application data sheet or the inventor's
oath or declaration is filed in a nonprovisional application, any
correction of inventorship must be pursuant to § 1.48. Section
1.41(b) finally provides that if neither an application data sheet nor
the inventor's oath or declaration is filed during the pendency of a
nonprovisional application, the inventorship is the inventor or joint
inventors set forth in the application papers filed pursuant to § 1.53(b),
unless the applicant files a paper, including the processing
fee set forth in § 1.17(i), supplying the name or names of the
inventor or joint inventors.
Applicants who wish to take advantage of the ability to name the
inventors in an application data sheet rather than the inventor's oath
or declaration should take care to ensure that an application data
sheet under § 1.76 that is signed in compliance with § 1.33(b)
is present on filing, or at least is filed prior to the filing of any
inventor's oath or declaration in the application. If an inventor's
oath or declaration is filed in the application prior to the filing of
an application data sheet under § 1.76 that is signed in compliance
with § 1.33(b), the inventorship named in the inventor's oath or
declaration controls. For example, if an inventor's oath or declaration
naming only inventor "A" is present on filing without an accompanying
application data sheet, and a signed application data sheet naming
inventors "A" and "B" is subsequently filed in the application, the
application will be treated as naming only inventor "A" (the inventor
provided in the inventor's oath or declaration) until the inventorship
is corrected under § 1.48(a).
Section 1.41(c) provides that the inventorship of a provisional
application is the inventor or joint inventors set forth in the cover
sheet as prescribed by § 1.51(c)(1). Section 1.41(c) also provides
that once a cover sheet as prescribed by § 1.51(c)(1) is filed in a
provisional application, any correction of inventorship must be
pursuant to § 1.48. Section 1.41(c) finally provides that if a
cover sheet as prescribed by § 1.51(c)(1) is not filed during the
pendency of a provisional application, the inventorship is the inventor
or joint inventors set forth in the application papers filed pursuant
to § 1.53(c), unless the applicant files a paper including the
processing fee set forth in § 1.17(q), supplying the name or names
of the inventor or joint inventors.
Section 1.41(d) provides that in either a nonprovisional
application under 35 U.S.C. 111(a) filed without an application data
sheet or the inventor's oath or declaration, or in a provisional
application filed without a cover sheet as prescribed by § 1.51(c)(1),
the name and residence of each person believed to be an
actual inventor should be provided when the application papers pursuant
to § 1.53(b) or § 1.53(c) are filed.
Section 1.41(e) provides that the inventorship of an international
application entering the national stage under 35 U.S.C. 371 is the
inventor or joint inventors set forth in the application data sheet in
accordance with § 1.76 filed with the initial submission under 35
U.S.C. 371. Thus, the applicant in an international application may
change inventorship as to the U.S. at the time of national stage entry
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 121 |
by simply filing an application data sheet in accordance with § 1.76
with the initial submission under 35 U.S.C. 371 naming the
inventor or joint inventors. Section 1.41(e) also provides that unless
the initial submission under 35 U.S.C. 371 is accompanied by an
application data sheet in accordance with § 1.76 setting forth the
inventor or joint inventors, the inventorship is the inventor or joint
inventors set forth in the international application, which includes
any change effected under PCT Rule 92bis. Section 1.41(e) does not
provide the ability to name the inventors or joint inventors via the
inventor's oath or declaration even when an application data sheet in
accordance with § 1.76 is not provided.
Section 1.42: Section 1.42 defines who is the applicant for a
patent.
Section 1.42(a) provides that the word "applicant" when used in
this title refers to the inventor or all joint inventors, or to the
person applying for a patent as provided in §§ 1.43, 1.45, or
1.46.
Section 1.42(b) provides that if a person is applying for a patent
as provided in § 1.46, the word "applicant" refers to the
assignee, the person to whom the inventor is under an obligation to
assign the invention, or the person who otherwise shows sufficient
proprietary interest in the matter, who is applying for a patent under
§ 1.46 and not the inventor. Section 1.46 (discussed subsequently)
implements 35 U.S.C. 118 and provides that a person to whom the
inventor has assigned or is under an obligation to assign the invention
may make an application for patent, and that a person who otherwise
shows sufficient proprietary interest in the matter may make an
application for patent on behalf of and as agent for the inventor on
proof of the pertinent facts and a showing that such action is
appropriate to preserve the rights of the parties.
Section 1.42(c) provides that if fewer than all joint inventors are
applying for a patent as provided in § 1.45, the phrase "the
applicant" means the joint inventors who are applying for the patent
without the omitted inventor(s).
Section 1.42(d) provides that any person having authority may
deliver an application and fees to the Office on behalf of the
applicant. However, an oath or declaration, or substitute statement in
lieu of an oath or declaration, may be executed only in accordance with
§ 1.63 or 1.64, a correspondence address may be provided only in
accordance with § 1.33(a), and amendments and other papers must be
signed in accordance with § 1.33(b).
Section 1.42(e) provides that the Office may require additional
information where there is a question concerning ownership or interest
in an application, and a showing may be required from the person filing
the application that the filing was authorized where such authorization
comes into question.
Section 1.43: Section 1.43 provides that if an inventor is deceased
or under legal incapacity, the legal representative of the inventor may
make an application for patent on behalf of the inventor; and that if
an inventor dies during the time intervening between the filing of the
application and the granting of a patent thereon, the letters patent
may be issued to the legal representative upon proper intervention. See
35 U.S.C. 117 ("[l]egal representatives of deceased inventors and of
those under legal incapacity may make application for patent upon
compliance with the requirements and on the same terms and conditions
applicable to the inventor"). Section 1.43 refers to § 1.64
concerning the execution of a substitute statement by a legal
representative in lieu of an oath or declaration.
Section 1.45: Section 1.45 pertains to an application for patent by
joint inventors. Section 1.45(a) provides that joint inventors must
apply for a patent jointly, and that each joint inventor must make the
inventor's oath or declaration required by § 1.63, except as
provided for in § 1.64. See 35 U.S.C. 116(a) ("[w]hen an invention
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 122 |
is made by two or more persons jointly, they shall apply for patent
jointly and each make the required oath, except as otherwise provided
in this title."). Section 1.45(a) also provides that if a joint
inventor refuses to join in an application for patent or cannot be
found or reached after diligent effort, the other joint inventor or
inventors may make the application for patent on behalf of themselves
and the omitted inventor. See 35 U.S.C. 116(b) ("[i]f 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 and the omitted inventor."). Section
1.45(a) also cross-references § 1.64 concerning the execution of a
substitute statement by the other joint inventor or inventors in lieu
of an oath or declaration.
Sections 1.45(b) and (c) contain the provisions of pre-existing
§§ 1.45(b) and (c).
Section 1.46: Section 1.46 is amended to provide for the filing of
an application for patent by an assignee, a person to whom the inventor
is under an obligation to assign the invention, or a person who
otherwise shows sufficient proprietary interest in the matter under 35
U.S.C. 118. Section 1.46(a) provides that a person to whom the inventor
has assigned or is under an obligation to assign an invention may make
an application for patent. Section 1.46(a) also provides that a person
who otherwise shows sufficient proprietary interest in the matter may
make an application for patent on behalf of and as agent for the
inventor on proof of the pertinent facts and a showing that such action
is appropriate to preserve the rights of the parties. The ability for a
person who otherwise shows sufficient proprietary interest in the
matter was previously set forth in former § 1.47(b), which
restricted such ability to situations in which all of the inventors
refused to execute the application, or could not be found or reached
after diligent effort.
Section 1.46(b) provides that if an application under 35 U.S.C. 111
is made by a person other than the inventor under § 1.46(a), the
application must contain an application data sheet under § 1.76
specifying in the applicant information section (§ 1.76(b)(7)) the
assignee, the person to whom the inventor is under an obligation to
assign the invention, or the person who otherwise shows sufficient
proprietary interest in the matter. Section 1.46(b) further provides
that if the application is the national stage of an international
application, the person who is identified in the international stage as
an applicant for the United States is the person specified as the
original applicant for the national stage. While identifying the party
making the application for patent (the applicant) in an application
data sheet is not a filing date requirement, a delay in naming the
applicant under § 1.46 in an application data sheet may cause it to
appear that the applicant is the inventor and thus requiring the party
to proceed under §§ 3.71 and 3.73 to become the applicant.
Section 1.46(b)(1) provides that if the applicant is the assignee
or person to whom the inventor is under an obligation to assign an
invention, the documentary evidence of ownership (e.g., assignment for
an assignee, employment agreement for an obligated assignee) should be
recorded as provided for in 37 CFR part 3 no later than the date the
issue fee is paid in the application. Section 1.46(b)(2) provides that
if the applicant is a person who otherwise shows sufficient proprietary
interest in the matter, such applicant must submit a petition
including: (1) The fee set forth in § 1.17(g); (2) a showing that
such person has sufficient proprietary interest in the matter; and (3)
a statement that making the application for patent by a person who
otherwise shows sufficient proprietary interest on behalf of and as
agent for the inventor is appropriate to preserve the rights of the
parties. A discussion of the evidence necessary for a showing that a
person has sufficient proprietary interest in the matter is set forth
in MPEP § 409.03(f).
Section 1.46(c) provides that any request to correct or update the
name of the applicant after an applicant has been specified under
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 123 |
§ 1.46(b) must include an application data sheet under § 1.76
specifying the correct or updated name of the applicant in the
applicant information section (§ 1.76(b)(7)). Thus, if there is no
change in the applicant itself but just the applicant's name (due to a
correction or name change), the applicant need only submit an
application data sheet specifying the correct or updated name of the
applicant in the applicant information section (§ 1.76(b)(7)).
Section 1.46(c) also provides that any request to change the applicant
after an original applicant has been specified under § 1.46(b) must
include an application data sheet under § 1.76 specifying the
applicant in the applicant information section (§ 1.76(b)(7)) and
must comply with §§ 3.71 and 3.73. Thus, if there is a change
of applicant under § 1.46(b) (either from the inventor to the
assignee, or from one assignee to another assignee), the new applicant
must establish its ownership of the application under §§ 3.71(b) and 3.73.
Section 1.46(d) provides that even if the whole or a part interest
in the invention or in the patent to be issued is assigned or obligated
to be assigned, an oath or declaration must be executed by the actual
inventor or each actual joint inventor, except as provided for in § 1.64.
This provision is similar to the provisions of former § 1.46.
Section 1.46 also refers to § 1.64 concerning the execution of a substitute
statement by an assignee, person to whom the inventor is under an
obligation to assign the invention, or a person who otherwise shows
sufficient proprietary interest in the matter.
Section 1.46(e) provides that if a patent is granted on an
application filed under § 1.46 by a person other than the inventor,
the patent shall be granted to the real party in interest (e.g., the
current assignee for an application that has been assigned). Otherwise,
the patent may be issued to the assignee or jointly to the inventor and
the assignee as provided in § 3.81.
Section 1.46(e) also provides that where a real party in interest
has filed an application under § 1.46, the applicant shall notify
the Office of any change in the real party in interest no later than
payment of the issue fee, and that the Office will treat the absence of
such a notice as an indication that there has been no change in the
real party in interest. This provision implements the requirement of 35
U.S.C. 118 that: "[i]f the Director grants a patent on an application
filed under this section by a person other than the inventor, the
patent shall be granted to the real party in interest and upon such
notice to the inventor as the Director considers to be sufficient."
Section 3.81 provides that an "application may issue in the name of
the assignee * * * where a request for such issuance is submitted with
payment of the issue fee." This is accomplished by providing the
assignee information in box 3 of the Part B - Fee(s) Transmittal form,
PTOL-85B. The use of box 3 will be required where the real party in
interest has changed from filing of the application and the application
was filed pursuant to § 1.46.
Section 1.46(f) provides that the Office may publish notice of the
filing of the application by a person who otherwise shows sufficient
proprietary interest in the Official Gazette.
Section 1.47: Section 1.47 is removed and reserved. As discussed
previously, execution of a substitute statement in lieu of an oath or
declaration is now provided for in § 1.64.
Section 1.48: Section 1.48 is amended to no longer include a
"without deceptive intention" requirement as this requirement has
been eliminated from 35 U.S.C. 116 in section 20 of the AIA. Section
1.48 is also amended to no longer require the written consent of any
assignee as the Office does not require express written consent by an
assignee to other amendments to an application.
Section 1.48(a) provides for correction of inventorship in a
nonprovisional application filed either under 35 U.S.C. 111(a) or
resulting from an international application in which the basic national
fee under 35 U.S.C. 41(a)(1)(F) has been paid. Section 1.48(a) provides
that any request to correct or change the inventorship once the
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 124 |
inventorship has been established under § 1.41 must include: (1) An
application data sheet in accordance with § 1.76 that identifies
each inventor by his or her legal name; and (2) the processing fee set
forth in § 1.17(i). Due to the streamlining of the requirements for
correction of inventorship, it is no longer necessary to have separate
provisions based upon whether the correction is necessitated by the
original inventorship being in error or by an amendment to the claims.
Section 1.48(b) also provides that an oath or declaration as
required by § 1.63, or a substitute statement in compliance with
§ 1.64, will be required for any actual inventor who has not yet
executed such an oath or declaration.
Section 1.48(c) is currently reserved.
Section 1.48(d) provides for correction of inventorship in a
provisional application filed under 35 U.S.C. 111(b). Section 1.48(d)
provides that once a cover sheet as prescribed by § 1.51(c)(1) is
filed in a provisional application, any request to correct or change
the inventorship must include: (1) a request, signed by a party set
forth in § 1.33(b), to correct the inventorship that identifies
each inventor by his or her legal name; and (2) the processing fee set
forth in § 1.17(q).
Section 1.48(e) provides that the Office may require such other
information as may be deemed appropriate under the particular
circumstances surrounding the correction of inventorship.
Section 1.48(f) provides for corrections to the name of the
inventor or a joint inventor, or the order of the names of joint
inventors. Due to the streamlining of the requirements for correction
of inventorship, it is no longer necessary to have distinct procedures
for correction of inventorship and for correction to the name of an
inventor or to the order of the names of the inventors. Corrections to
the name of an inventor or to the order of the names of the inventors
were formerly provided for as exception processes, such as under § 1.182.
See MPEP §§ 605.04(b), (c), and (f). Section 1.48(f)
specifically provides that any request to correct or update the name of
the inventor or a joint inventor, or the order of the names of joint
inventors, in a nonprovisional application must include: (1) An
application data sheet in accordance with § 1.76 that identifies
each inventor by his or her legal name in the desired order; and (2)
the processing fee set forth in § 1.17(i).
Section 1.48(g) provides that the provisions of § 1.48 do not
apply to reissue applications. Section 1.48(g) also refers to
§§ 1.171 and 1.175 for correction of inventorship in a patent
via a reissue application.
Section 1.48(h) provides a cross reference to § 1.324 for
correction of inventorship in a patent.
Section 1.48(i) provides for correction of inventorship in an
interference or contested case before the Patent Trial and Appeal
Board. Section 1.48(i) provides that in an interference under part 41,
subpart D, of this title, a request for correction of inventorship in
an application must be in the form of a motion under § 41.121(a)(2)
of this title. Section 1.48(i) also provides that in a contested case
under part 42, subpart D, of this title, a request for correction of
inventorship in an application must be in the form of a motion under
§ 42.22 of this title. Section 1.48(i) finally provides that the
motion under §§ 41.121(a)(2) or 42.22 of this title must comply
with the requirements of § 1.48(a).
Section 1.51: Section 1.51(b)(2) is amended to refer to "the
inventor's oath or declaration" and to cross-reference §§ 1.63
and 1.64. See previous discussion of § 1.16(f).
Section 1.52: Section 1.52(b) and (c) are amended to refer to "the
inventor's oath or declaration." See previous discussion of § 1.16(f).
Section 1.52(b) is amended to also refer to supplemental
examination proceedings.
Section 1.52(c) is amended to provide that interlineation, erasure,
cancellation, or other alteration of the application papers may be made
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 125 |
before or after the signing of the inventor's oath or declaration
referring to those application papers, provided that the statements in
the inventor's oath or declaration remain applicable to those
application papers. Thus, § 1.52(c) no longer prohibits changes
after execution of the inventor's oath or declaration. Section 1.52(c)
also provides that a substitute specification (§ 1.125) may be
required if the application papers do not comply with paragraphs (a)
and (b) of this section.
Section 1.52(d) is amended to be limited to nonprovisional or
provisional applications filed under 35 U.S.C. 111(a) and (b),
respectively.
Section 1.53: Section 1.53 is amended to change the phrase "oath
or declaration" to the phrase "the inventor's oath or declaration"
throughout. See previous discussion of § 1.16(f).
Section 1.53(c) is also amended to replace "the first paragraph of
35 U.S.C. 112" with "35 U.S.C. 112(a)" for consistency with the
change to 35 U.S.C. 112 in the AIA.
Section 1.53(c)(3) is also amended to replace "the second
paragraph of 35 U.S.C. 112" with "35 U.S.C. 112(b)" for consistency
with the change to 35 U.S.C. 112 in the AIA.
Section 1.53(f) is amended to revise the missing parts practice to
allow applicants to postpone filing the inventor's oath or declaration
until the application is otherwise in condition for allowance.
Section 1.53(f)(1) provides for a notice (if the applicant has
provided a correspondence address) if the application does not contain
the basic filing fee, the search fee, or the examination fee, or if the
application under § 1.53(b) does not contain the inventor's oath or
declaration. Section 1.53(f)(1) provides that applicant must pay the
basic filing fee, search fee, and examination fee, and pay the
surcharge if required by § 1.16(f) within the time period set in
the notice to avoid abandonment. Section 1.53(f)(3) (discussed
subsequently) sets forth the time period for filing the inventor's oath
or declaration in an application under § 1.53(b) (an application
under § 1.53(d) uses the inventor's oath or declaration from the
prior application) and provides the conditions under which an applicant
may postpone filing the inventor's oath or declaration until the
application is otherwise in condition for allowance.
Section 1.53(f)(2) provides for the situation where applicant has
not provided a correspondence address in an application under § 1.53(b),
and the application does not contain the basic filing fee, the
search fee, or the examination fee, or does not contain the inventor's
oath or declaration. Section 1.53(f)(2) provides that if the applicant
has not provided a correspondence address, the applicant must pay the
basic filing fee, search fee, and examination fee, and pay the
surcharge if required by § 1.16(f), within two months from the
filing date of the application to avoid abandonment. As discussed
previously, § 1.53(f)(3) (discussed subsequently) sets forth the
time period for filing the inventor's oath or declaration in an
application under § 1.53(b) and provides the conditions under which
an applicant may postpone filing the inventor's oath or declaration
until the application is otherwise in condition for allowance.
Section 1.53(f)(3) sets forth the time period for filing the
inventor's oath or declaration in an application under § 1.53(b)
and provides the conditions under which an applicant may postpone
filing the inventor's oath or declaration until the application is
otherwise in condition for allowance. Section 1.53(f)(3) specifically
provides that the inventor's oath or declaration in an application
under § 1.53(b) must also be filed within the period specified in
§ 1.53(f)(1) or (f)(2), except that the filing of the inventor's
oath or declaration may be postponed until the application is otherwise
in condition for allowance under the conditions specified in
§ 1.53(f)(3)(i) through (f)(3)(ii). Section 1.53(f)(3)(i) provides that
the application must be an original (non-reissue) application that
contains an application data sheet in accordance with § 1.76
identifying: (1) each inventor by his or her legal name; and (2) a
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 126 |
mailing address where the inventor customarily receives mail, and
residence, if an inventor lives at a location which is different from
where the inventor customarily receives mail, for each inventor.
Section 1.53(f)(3)(ii) provides that the applicant must file an oath or
declaration in compliance with § 1.63, or substitute statement in
compliance with § 1.64, executed by or with respect to each actual
inventor no later than the expiration of the time period set in the
"Notice of Allowability" to avoid abandonment, when the applicant is
notified in a "Notice of Allowability" that an application is
otherwise in condition for allowance. The time period set in a "Notice
of Allowability" is not extendable. See § 1.136(c). The Office may
dispense with the notice provided for in § 1.53(f)(1) if an oath or
declaration under § 1.63, or substitute statement under § 1.64,
executed by or with respect to each actual inventor has been filed
before the application is in condition for allowance.
Under former practice, the Office issued a Notice to File Missing
Parts if an application under § 1.53(b) did not contain the basic
filing fee, the search fee, or the examination fee, or the inventor's
oath or declaration. If the Office issued a Notice to File Missing
Parts, the applicant was given a time period (usually two months)
within which to file the missing basic filing fee, the search fee, the
examination fee, or the inventor's oath or declaration and pay the
surcharge required by § 1.16(f) to avoid abandonment. See MPEP
§ 601.01(a). The Office is modifying this process such that if an
application under § 1.53(b) contains the applicable filing fees
(basic filing fee, search fee, the examination fee, any applicable
excess claims fee, and any applicable application size fee), the
surcharge required by § 1.16(f), and a signed application data
sheet providing the information required by § 1.53(f)(3)(i), but
does not include the inventor's oath or declaration, the Office will
not issue a Notice to File Missing Parts requiring the applicant to
file the inventor's oath or declaration. If an application under
§ 1.53(b) that does not contain the inventor's oath or declaration also
does not contain the applicable filing fees, or the surcharge required
by § 1.16(f), or a signed application data sheet providing the
information required by § 1.53(f)(3)(i), the Office will issue a
Notice to File Missing Parts giving the applicant a time period
(usually two months) within which to file the missing filing fees, the
surcharge required by § 1.16(f), or signed application data sheet
providing the information required by § 1.53(f)(3)(i) (or the
inventor's oath or declaration) to avoid abandonment. In either
situation, the inventor's oath or declaration will not be required
within the period for reply to the Notice to File Missing Parts if the
applicant provides a signed application data sheet providing the
information required by § 1.53(f)(3)(i) within the period for reply
to the Notice to File Missing Parts. The filing fees and surcharge
required by § 1.16(f), however, must be filed within the period for
reply to the Notice to File Missing Parts to avoid abandonment.
If an application is in condition for allowance and includes an
oath or declaration in compliance with § 1.63, or substitute
statement in compliance with § 1.64, executed by or with respect to
each actual inventor, the Office will issue a "Notice of
Allowability" (PTOL-37) and a "Notice of Allowance and Fee(s) Due"
(PTOL-85). If an application is in condition for allowance but does not
include an oath or declaration in compliance with § 1.63, or a
substitute statement in compliance with § 1.64, executed by or with
respect to each actual inventor, the Office will issue a "Notice of
Allowability" (PTOL-37) (but not a "Notice of Allowance and Fee(s)
Due" (PTOL-85)) giving the applicant three months to file an oath or
declaration in compliance with § 1.63, or substitute statement in
compliance with § 1.64, executed by or with respect to each actual
inventor, to avoid abandonment. This three-month time period is not
extendable under § 1.136(a). The "Notice of Allowance and Fee(s)
Due" (PTOL-85)) will not be issued until the application includes an
oath or declaration in compliance with § 1.63, or substitute statement
in compliance with § 1.64, executed by or with respect to each actual
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 127 |
inventor.
Section 1.53(f)(4) contains the provisions of former § 1.53(f)(3).
Section 1.53(f)(5) contains the provisions of former § 1.53(f)(4).
Section 1.53(f)(6) contains the provisions of former § 1.53(f)(5).
Section 1.53(h) is amended to provide an exception for the
situation in which the inventor's oath or declaration is not filed
until the application is otherwise in condition for allowance under
§ 1.53(f)(3).
Section 1.55: Sections 1.55(a)(1)(i), (c), and (d)(1)(ii) are
amended to require a foreign priority claim be identified in an
application data sheet (§ 1.76). 35 U.S.C. 119(b) does not specify
the particular location in the application for setting forth a claim to
the benefit of a prior foreign application. Additionally, § 1.55
formerly did not specify where in the application a foreign priority
claim must be, but former § 1.63(c) required that the foreign
priority claim be in an application data sheet or identified in the
oath or declaration. The change to § 1.55 in this final rule
establishes a single location for the foreign priority claim in the
application data sheet, which would facilitate application processing
by providing practitioners with a clear location for the foreign
priority claim, and the Office with one location to locate the foreign
priority claim quickly. Formerly, the Office had to look at the
specification, amendments to the specification, the oath or
declaration, the application data sheet (if provided), and elsewhere to
determine the priority claim. In addition, when applicants provided
inconsistent information relating to the claim for foreign priority,
the Office had to then determine which priority claim governed.
Additionally, providing this information in a single location will
facilitate review of patents and patent application publications,
because applications frequently set forth a benefit and/or foreign
priority claim in the first sentence(s) of the specification, which is
superseded by an application data sheet that includes a different
benefit or foreign priority claim, and thus the benefit claim and/or
foreign priority information contained on the front page of the patent
or patent application publication is different from the benefit claim
and/or foreign priority claim included in the first sentence(s) of the
specification. While the benefit and/or foreign priority claim on the
front page of the patent or patent application publication is usually
correct, anyone (including an examiner, a practitioner or the public)
reviewing the patent or patent application publication must review the
file history of the application to be certain of its correctness. Since
most applications are filed with an application data sheet, requiring
the benefit and/or foreign priority claims to be included in the
application data sheet will not require most practitioners to change
their practice.
35 U.S.C. 119(b) provides that the foreign application is
identified by specifying the application number, country or
intellectual property authority, and filing date of each foreign
application for which priority is claimed. Section 1.55(a)(1) and (c)
thus provide that the foreign priority claim must identify the foreign
application for which priority is claimed by specifying the application
number, country (or intellectual property authority), day, month, and
year of its filing. In addition, § 1.55(a)(1)(i) requires
identification of any foreign application having a filing date before
that of the application for which priority is claimed by specifying the
application number, country (or intellectual property authority), day,
month, and year of its filing. Providing this information in the
application data sheet constitutes the claim for foreign priority as
required by 35 U.S.C. 119(b) and § 1.55(a).
Section 1.56: Section 1.56(c)(3) is amended to indicate that its
provisions also apply to every other person who is substantively
involved in the preparation or prosecution of the application and who
is associated with the inventor, the applicant, an assignee, or anyone
to whom there is an obligation to assign the application. This change
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 128 |
is for consistency with the change in practice concerning who is the
applicant for patent in § 1.42.
Section 1.59: Section 1.59(a)(2) is amended to refer to any
preliminary amendment present on the filing date of the application in
the parenthetical for consistency with § 1.115(a)(1).
Section 1.63: Section 1.63(a) provides that the inventor, or each
individual who is a joint inventor of a claimed invention, in an
application for patent must execute an oath or declaration directed to
the application, except as provided for in § 1.64. See 35 U.S.C.
115(a). Section 1.63(a) further provides that an oath or declaration
must: (1) Identify the inventor or joint inventor exeuting the oath or
declaration by his or her legal name; (2) identify the application to
which it is directed; (3) include a statement that the person executing
the oath or declaration believes the named inventor or joint inventor
to be the original inventor or an original joint inventor of a claimed
invention in the application for which the oath or declaration is being
submitted; and (4) state that the application was made or was
authorized to be made by the person executing the oath or declaration.
The requirements that an oath or declaration include a statement that
the person executing the oath or declaration believes the named
inventor or joint inventor to be the original inventor or an original
joint inventor of a claimed invention in the application for which the
oath or declaration is being submitted, and state that the application
was made or was authorized to be made by the person executing the oath
or declaration are requirements of 35 U.S.C. 115(a) and (b). The
requirements that an oath or declaration must identify the inventor or
joint inventor executing the oath or declaration by his or her legal
name and identify the application to which it is directed are necessary
for the Office to ensure that there is compliance with the requirement
of 35 U.S.C. 115(a) that each individual who is the inventor or a joint
inventor of a claimed invention in an application for patent has
executed an oath or declaration in connection with the application
(except as provided in 35 U.S.C. 115).
Section 1.63(a)(1) simplifies the requirement for the inventor's
name to be his or her legal name without reference to a family or given
name. The requirement for the inventor's legal name is sufficient,
given that individuals do not always have both a family name and a
given name, or have varying understandings of what a "given" name
requires.
Section 1.63(a)(2) contains the language of former § 1.63(b)(1)
(requiring identification of the application to which the oath or
declaration is directed).
Section 1.63(a)(3) no longer includes a requirement for identifying
the country of citizenship for each inventor, as this information is no
longer required by 35 U.S.C. 115.
Section 1.63(a)(4) no longer includes the requirement that the
person executing the oath or declaration state that he or she is
believed to be the "first" inventor, as this statement is no longer
provided for by 35 U.S.C 115(b)(2) and would not be consistent with a
first inventor to file system. Section 1.63(a)(4) does include a
requirement from 35 U.S.C. 115(b)(1), not present in former 35 U.S.C.
115 or § 1.63, that the oath or declaration state that the
application was made or was authorized to be made by the person
executing the oath or declaration.
Section 1.63(b) provides that unless such information is supplied
in an application data sheet in accordance with § 1.76, the oath or
declaration must also identify: (1) each inventor by his or her legal
name; and (2) a mailing address where the inventor customarily receives
mail, and (3) residence, if an inventor lives at a location which is
different from where the inventor customarily receives mail, for each
inventor. Therefore, the applicant is not required to name each
inventor in a single oath or declaration as long as the inventorship is
provided in an application data sheet in accordance with § 1.76.
This will permit each joint inventor to execute an oath or declaration
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 129 |
stating only that the joint inventor executing the oath or declaration
is an original joint inventor of the claimed invention in the
application for which the oath or declaration is being submitted. The
phrase "application data sheet in accordance with § 1.76"
requires that the application data sheet be signed in compliance with
§ 1.33(b). An unsigned application data sheet will be treated only
as a transmittal letter.
The requirement for identification of a mailing address is
clarified by noting that it is the address where the inventor
"customarily receives mail," which may encompass an address where the
inventor works, a post office box, or other address where mail is
received even if it is not the main mailing address of the inventor.
The mailing address is for the benefit of the inventor in the event
that the Office would need to contact the inventor directly.
Section 1.63 is also amended to eliminate the requirement for
identifying the claim for foreign priority under § 1.55 in the oath
or declaration. This change reflects the Office's desire to have claims
for foreign priority under § 1.55 and claims for domestic benefit
under § 1.78 be presented in an application data sheet (§ 1.76).
The former requirement that the domestic claim for benefit be
placed in the first sentence(s) of the specification or an application
data sheet (§ 1.76), while requiring that a foreign priority claim
be identified in an oath or declaration or application data sheet, has
led to confusion by applicants as to the proper placement of these
priority or benefit claims and to Office processing issues of such
claims. As section 3 of the AIA placed foreign priority claims on equal
footing with domestic benefit claims in regard to what may be relied
upon as a prior art date, it is important that there be one unified
place that the Office and the public rely upon in determining these
claims. Accordingly, §§ 1.55 and 1.78 are amended to provide a
unified way (the application data sheet) to present the claims that
will lead to a more reliable placement of the claims in a printed
patent or a patent application publication.
Section 1.63(c) provides that a person may not execute an oath or
declaration for an application unless that person has reviewed and
understands the contents of the application, including the claims, and
is aware of the duty to disclose to the Office all information known to
the person to be material to patentability as defined in § 1.56.
Thus, an oath or declaration under § 1.63 is no longer required to
contain the "reviewed and understands" clause and "duty to
disclose" clause of former § 1.63(b)(2) and (b)(3). However, § 1.63
still requires that a person executing an oath or declaration for
an application review and understand the contents of the application,
and be aware of the duty of disclosure under § 1.56. Section
1.63(c) also provides that there is no minimum age for a person to be
qualified to execute an oath or declaration, but the person must be
competent to execute, i.e., understand, the document that the person is
executing. This provision contains the language of former § 1.63(a)(1).
Section 1.63(d) implements the provisions of 35 U.S.C. 115(g).
Section 1.63(d)(1) provides that a newly executed oath or declaration
under § 1.63, or substitute statement under § 1.64, is not
required under § 1.51(b)(2) and § 1.53(f) or § 1.497 for an
inventor in a continuing application that claims the benefit under 35
U.S.C. 120, 121, or 365(c) in compliance with § 1.78 of an earlier-
filed application, provided that an oath or declaration in compliance
with § 1.63, or substitute statement under § 1.64, was executed
by or with respect to such inventor and was filed in the earlier-filed
application, and a copy of such oath, declaration, or substitute
statement showing the signature or an indication thereon that it was
executed, is submitted in the continuing application. Section
1.63(d)(2) provides that the inventorship of a continuing application
filed under 35 U.S.C. 111(a) is the inventor or joint inventors
specified in the application data sheet filed before or concurrently
with the copy of the inventor's oath or declaration from the earlier-
filed application. If an application data sheet is not filed before or
concurrently with the copy of the inventor's oath or declaration from
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 130 |
the earlier-filed application, the inventorship is the inventorship set
forth in the copy of the inventor's oath or declaration from the
earlier-filed application, unless the copy of the inventor's oath or
declaration is accompanied by a statement signed pursuant to § 1.33(b)
stating the name of each inventor in the continuing
application. Section 1.63(d)(3) provides that any new joint inventor
named in the continuing application must provide an oath or declaration
in compliance with § 1.63, except as provided for in § 1.64.
Section 1.63(e) implements the provisions of 35 U.S.C. 115(e).
Section 1.63(e)(1) provides that an assignment may also serve as an
oath or declaration required by § 1.63 if the assignment: (1)
includes the information and statements required under § 1.63(a)
and (b); and (2) a copy of the assignment is recorded as provided for
in 37 CFR part 3. The assignment, including the information and
statements required under § 1.63(a) and (b), must be executed by
the individual who is under the obligation of assignment. Section
1.63(e)(2) provides that any reference to an oath or declaration under
§ 1.63 includes an assignment as provided for in § 1.63(e).
Applicants should be mindful of the change to § 3.31 requiring
a conspicuous indication, such as by use of a check-box on the
assignment cover sheet, to alert the Office that an assignment
submitted with an application is submitted for a dual purpose:
recording in the assignment database, such as to support a power of
attorney, and for use in the application as the oath or declaration.
Assignments cannot be recorded unless an application number is provided
against which the assignment is to be recorded. When an assignment is
submitted for recording along with a paper application, the assignment
is separated from the paper application and forwarded to the Assignment
Recordation Branch for recording in its database at the time where the
application is assigned an application number. The assignment does not
become part of the application file. If the applicant indicates that an
assignment-statement is also an oath or declaration, the Office will
scan the assignment into the Image File Wrapper (IFW) file for the
application before forwarding it to the Assignment Recordation Branch.
Failure to utilize the check-box will result in a Notice to File
Missing Parts of Nonprovisional Application requiring an inventor's
oath or declaration as the assignment will not be made part of the
application file nor will the Office recognize that the § 1.63 oath
or declaration requirement has been satisfied. A copy of the assignment
would need to be submitted in reply to the Notice along with the
surcharge for the late submission of the inventor's oath or
declaration.
For EFS-Web filing of application papers, EFS-Web does not accept
assignments for recording purposes when filing an application. See
Legal Framework for Electronic Filing System - Web (EFS-Web), 74 FR
55200, 55202 (Oct. 27, 2009). Recording of assignments may only be done
electronically in EPAS (Electronic Patent Assignment System),
notwithstanding the existence of a link from EFS-Web to EPAS that can
be utilized to file an assignment after the application is filed.
Accordingly, for EFS-Web submissions, all assignments submitted on
filing of the application or later submitted will be made of record in
the application (entered into the Image File Wrapper (IFW)), and will
not be forwarded to the Assignment Recordation Branch for recordation
by the Office. Thus, an assignment must be submitted to the Assignment
Recordation Branch in order to comply with § 1.63(e)(1)(ii). If an
applicant files the assignment-statement for recording via EPAS and
utilizes the check-box, the Office will place a copy of the assignment-
statement in the related application file.
Section 1.63(f) provides that with respect to an application naming
only one inventor, any reference to the inventor's oath or declaration
in 37 CFR chapter I also includes a substitute statement executed under
§ 1.64. Thus, any requirement in 37 CFR chapter I for the
inventor's oath or declaration with respect to an application naming
only one inventor is met if an oath or declaration under § 1.63, an
assignment-statement under § 1.63(e), or a substitute statement
under § 1.64 executed by or with respect to the inventor is filed.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 131 |
Section 1.63(f) also provides that with respect to an application
naming more than one inventor, any reference to the inventor's oath or
declaration in 37 CFR chapter I means the oaths, declarations, or
substitute statements that have been collectively executed by or with
respect to all of the joint inventors, unless otherwise clear from the
context. Thus, any requirement in 37 CFR chapter I for the inventor's
oath or declaration with respect to an application naming more than one
inventor is met if an oath or declaration under § 1.63, an
assignment-statement under § 1.63(e), or a substitute statement
under § 1.64 executed by or with respect to each joint inventor is
filed.
Section 1.63(g) provides that an oath or declaration under § 1.63,
including the statement provided for in § 1.63(e), must be
executed (i.e., signed) in accordance either with § 1.66, or with
an acknowledgment that any willful false statement made in such
declaration or statement is punishable under 18 U.S.C. 1001 by fine or
imprisonment of not more than five (5) years, or both. See 35 U.S.C.
115(i). The inventor's oath or declaration must be executed (i.e.,
signed) by the inventor or the joint inventors, unless the oath or
declaration is a substitute statement under § 1.64, which must be
signed by the party or parties making the statement, or an assignment
under § 1.63(e), which must be signed by the individual who is
under the obligation of assignment of the patent application.
35 U.S.C. 115(h)(1) provides that any person making a statement
under this section may at any time "withdraw, replace, or otherwise
correct the statement at any time." Section 1.63(h) provides that an
oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1)
will be placed in the file record of the application or patent, but may
not necessarily be reviewed by the Office. Oaths or declarations
submitted pursuant to 35 U.S.C. 115(h)(1) that are filed prior to the
mailing of a notice of allowance in an application would continue to be
reviewed by the Office for compliance with 35 U.S.C. 115 and the
applicable regulations. Oaths or declarations submitted pursuant to 35
U.S.C. 115(h)(1) that are filed after the mailing of a notice of
allowance in an application or patent would generally not be reviewed
by the Office. Section 1.63(h) further provides that any request for
correction of the named inventorship must comply with § 1.48 in an
application and § 1.324 in a patent. This is a reminder that the
mere submission of an oath or declaration pursuant to 35 U.S.C.
115(h)(1) will not operate to correct inventorship in compliance with
§ 1.48 in an application and § 1.324 in a patent.
The provisions in former § 1.63 concerning the power of
attorney in a continuing application are now contained in § 1.32
and the correspondence address in a continuing application are now
contained in § 1.33(f).
Section 1.64: Section 1.64 implements the substitute statement
provisions of 35 U.S.C. 115(d). The provisions of former § 1.64
concerning who must execute an oath or declaration are now contained in
§ 1.63 with respect to an oath, declaration, or assignment-
statement under § 1.63 and are now contained within § 1.64 with
respect to who may execute a substitute statement.
Section 1.64(a) provides that an applicant under § 1.43, 1.45
or 1.46 may execute a substitute statement in lieu of an oath or
declaration under § 1.63 if the inventor is deceased, is under a
legal incapacity, has refused to execute the oath or declaration under
§ 1.63, or cannot be found or reached after diligent effort. 35
U.S.C. 115(d) provides that, in lieu of execution of an oath or
declaration by an inventor, the applicant for patent may provide a
substitute statement under the circumstances described in 35 U.S.C.
115(d)(2) and such additional circumstances as the Director specifies
by regulation. See 35 U.S.C. 115(d)(1). The circumstances set forth in
35 U.S.C. 115(d)(2) in which the applicant may provide a substitute
statement are the situations where the inventor is deceased, under
legal incapacity, or cannot be found or reached after diligent effort,
or is under an obligation to assign the invention but has refused to
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 132 |
execute the oath or declaration. See 35 U.S.C. 115(d)(2).
As discussed previously, 35 U.S.C. 115(d)(1) provides that the
applicant for patent may provide a substitute statement in lieu of
execution of an oath or declaration by an inventor under 35 U.S.C.
115(a) under such additional circumstances as the Director specifies by
regulation. The Office is permitting the applicant to provide a
substitute statement in lieu of an oath or declaration whenever the
inventor has refused to execute the oath or declaration, even if the
inventor is not under an obligation to assign the invention. 35 U.S.C.
118 and § 1.46, as adopted in this final rule, provide that a
person who otherwise shows sufficient proprietary interest in the
matter may make an application for patent on behalf of and as agent for
the inventor on proof of the pertinent facts and a showing that such
action is appropriate to preserve the rights of the parties. Thus,
§ 1.64, as adopted in this final rule, permits a person who
otherwise shows sufficient proprietary interest in the matter to
execute a substitute statement in lieu of execution of an oath or
declaration by the inventor or a joint inventor if the inventor or a
joint refuses to join in an application for patent regardless of
whether there is an obligation to assign. 35 U.S.C. 116(b) and § 1.45,
as adopted in this final rule, provide that 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 and the omitted inventor. See 35 U.S.C.
116(b). Thus, § 1.64, as adopted in this final rule, permits
another joint inventor to execute a substitute statement in lieu of
execution of an oath or declaration by the omitted inventor if a joint
inventor refuses to join in an application for patent regardless of
whether there is an obligation to assign the invention. If the
Office does not permit the applicant to also provide a substitute
statement in lieu of an oath or declaration whenever the inventor or a
joint inventor has refused to execute the oath or declaration (even if
the inventor or joint inventor is not under an obligation to assign the
invention), a person who otherwise shows sufficient proprietary
interest in the matter who provides a showing that such action is
appropriate to preserve the rights of the parties, or the remaining
inventor or inventors, may be the applicant under either 35 U.S.C. 118
or 116(b), respectively, but may be precluded from providing a
substitute statement in lieu of an oath or declaration. This is
consistent with existing Office practice under which a person who
otherwise shows sufficient proprietary interest in the matter or the
remaining inventor or inventors may execute the oath or declaration as
the applicant if all of the inventors have refused to execute the oath
or declaration.
Section 1.64(b) provides that a substitute statement under
§ 1.64 must: (1) comply with the requirements of § 1.63(a),
identifying the inventor or joint inventor with respect to whom a
substitute statement in lieu of an oath or declaration is executed, and
stating upon information and belief the facts which such inventor is
required to state; (2) identify the person executing the substitute
statement and the relationship of such person to the inventor or joint
inventor with respect to whom the substitute statement is executed, and
unless such information is supplied in an application data sheet in
accordance with § 1.76, the residence and mailing address of the
person signing the substitute statement; and (3) identify the
circumstances permitting the person to execute the substitute statement
in lieu of an oath or declaration under § 1.63, namely whether the
inventor is deceased, is under a legal incapacity, cannot be found or
reached after a diligent effort was made, or has refused to execute the
oath or declaration under § 1.63. Section 1.64(b) also provides
that, unless such information is supplied in an application data sheet
in accordance with § 1.76, the substitute statement must also
identify: (1) each inventor by his or her legal name; and (2) the last
known mailing address where the inventor customarily receives mail, and
last known residence, if an inventor lives at a location which is
different from where the inventor customarily receives mail, for each
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 133 |
inventor who is not deceased or under a legal incapacity.
Section 1.64(c) provides that a person may not execute a substitute
statement under § 1.64 for an application unless that person has
reviewed and understands the contents of the application, including the
claims, and is aware of the duty to disclose to the Office all
information known to the person to be material to patentability as
defined in § 1.56.
Section 1.64(d) provides that any reference to an inventor's oath
or declaration also includes a substitute statement provided for in
§ 1.64.
Section 1.64(e) provides that a substitute statement under § 1.64
must contain an acknowledgment that any willful false statement
made in such statement is punishable under 18 U.S.C. 1001 by fine or
imprisonment of not more than five (5) years, or both.
Section 1.64(f) provides that a nonsigning inventor or legal
representative may subsequently join in the application by submitting
an oath or declaration under § 1.63. Section 1.64(f) also provides
that the submission of an oath or declaration by a nonsigning inventor
or legal representative in an application filed under § 1.43, 1.45
or 1.46 will not permit the nonsigning inventor or legal representative
to revoke or grant a power of attorney.
Section 1.66: Section 1.66 is amended to eliminate the special
provisions for oaths taken before an officer in a country other than
the United States.
Section 1.67: Section 1.67 provides for a supplemental inventor's
oath or declaration (which includes oaths, declarations, assignment-
statements under § 1.63(e), and substitute statements under § 1.64)
under 35 U.S.C. 115(h).
Section 1.67(a) provides that the applicant may submit an
inventor's oath or declaration meeting the requirements of § 1.63,
§ 1.64, or § 1.162 to correct any deficiencies or inaccuracies
present in an earlier-filed inventor's oath or declaration. See 35
U.S.C. 115(h)(1). Section 1.67(a) also provides that deficiencies or
inaccuracies due to the failure to meet the requirements of § 1.63(b)
in an oath or declaration may be corrected with an application
data sheet in accordance with § 1.76, except that any correction of
inventorship must be pursuant to § 1.48.
Section 1.67(b) provides that a supplemental inventor's oath or
declaration under § 1.67 must be executed by the person whose
inventor's oath or declaration is being withdrawn, replaced, or
otherwise corrected.
Section 1.67(c) provides that the Office will not require a person
who has executed an oath or declaration in compliance with 35 U.S.C.
115 and § 1.63 or § 1.162 for an application to provide an
additional inventor's oath or declaration for the application. See 35
U.S.C. 115(h)(2).
Section 1.67(d) contains the provision of former § 1.67(b) that
no new matter may be introduced into a nonprovisional application after
its filing date even if an inventor's oath or declaration is filed to
correct deficiencies or inaccuracies present in the earlier-filed oath
or declaration.
Section 1.76: Section 1.76(a) is amended to clarify that an
application data sheet may be submitted in a provisional application
under 35 U.S.C. 111(b), a nonprovisional application under 35 U.S.C.
111(a), or a national stage application under 35 U.S.C. 371. Section
1.76(a) is also amended to require that an application data sheet must
be submitted to claim priority to or the benefit of a prior-filed
application under 35 U.S.C. 119, 120, 121, or 365 for consistency with
the changes to §§ 1.55 and 1.78. Including foreign priority and
domestic benefit claims in the Office's Application Data Sheet form
(PTO/SB/14) can benefit applicants as the data can be loaded directly
into the Office's electronic systems; thus ensuring the data is
accurately captured. The data will only load directly into the Office's
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 134 |
electronic systems when the PTO/SB/14 is submitted as an EFS-Web
Fillable Form, rather than a scanned portable document format (PDF)
image submitted electronically via EFS-Web. Section 1.76(a) is also
amended to provide that the provisions of § 1.76(c)(2) (discussed
subsequently) are an exception to the requirement that an application
data sheet must contain all of the section headings listed in
§ 1.76(b), with any appropriate data for each section heading.
Section 1.76(b)(1) is amended to pertain to inventor information,
rather than applicant information. As discussed previously, the Office
plans to continue to use the inventor's name for application and patent
identification purposes as inventor names tend to provide a more
distinct identification than assignee name. Section 1.76(b)(1)
indicates that inventor information includes the legal name, residence,
and mailing address of the inventor or each joint inventor.
Section 1.76(b)(3) is amended to eliminate a suggested
classification, by class and subclass, and the Technology Center, from
the application information portion of the application data sheet. This
information is no longer utilized by the Office in view of internal
changes relating to how applications are classified.
Section 1.76(b)(5) is amended to provide that domestic benefit
information includes the application number, the filing date, the
status (including patent number if available), and relationship of each
application for which a benefit is claimed under 35 U.S.C. 119(e), 120,
121, or 365(c). Section 1.76(b)(5) further provides that providing this
information in the application data sheet constitutes the specific
reference required by 35 U.S.C. 119(e) or 120, and § 1.78(a)(2) or
§ 1.78(a)(5).
Section 1.76(b)(7) is amended to pertain to "applicant" rather
than "assignee" information. Section 1.76(b)(7) provides that
applicant information includes the name (either natural person or
juristic entity) and address of the legal representative, assignee,
person to whom the inventor is under an obligation to assign the
invention, or person who otherwise shows sufficient proprietary
interest in the matter who is the applicant under § 1.43 or 1.46.
Thus, § 1.76(b)(7) provides for the situation in which the
applicant is a person other than the inventor under § 1.43 (legal
representative) or § 1.46 (assignee, person to whom the inventor is
under an obligation to assign the invention, or person who otherwise
shows sufficient proprietary interest in the matter). This section may
be left blank if the applicant is the inventor or is the remaining
joint inventor or inventors (§ 1.45).
As discussed previously, § 1.46(b) provides that if an
application is filed by the assignee, a person to whom the inventor is
under an obligation to assign the invention, or a person who otherwise
shows sufficient proprietary interest in the matter, the application
must contain an application data sheet under § 1.76 specifying the
assignee, person to whom the inventor is under an obligation to assign
the invention, or person who otherwise shows sufficient proprietary
interest in the matter in the applicant information section. As also
discussed previously, § 1.46(c) provides that any request to
correct or update the name of the applicant, or change the applicant,
must include an application data sheet under § 1.76 specifying the
applicant in the applicant information section. Section 1.76(b)(7)
continues to provide that providing assignment information in the
application data sheet does not substitute for compliance with any
requirement of 37 CFR part 3 to have an assignment recorded by the
Office.
Section 1.76(c) is amended to eliminate the distinction between an
application data sheet and a supplemental application data sheet. An
application data sheet provided on filing and an application data sheet
submitted after the filing date of the application are both considered
an application data sheet.
Section 1.76(c)(1) provides that information in a previously
submitted application data sheet, the inventor's oath or declaration
under § 1.63, § 1.64, or § 1.67, or otherwise of record,
may be corrected or updated until payment of the issue fee by a new
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 135 |
application data sheet providing corrected or updated information,
except that inventorship changes must comply with the requirements of
§ 1.48, foreign priority and domestic benefit information changes
must comply with §§ 1.55 and 1.78, and correspondence address
changes must comply with § 1.33(a).
Section 1.76(c)(2) provides that an application data sheet
providing corrected or updated information may include all of the
sections listed in § 1.76(b) or only those sections containing
changed or updated information. Section 1.76(c)(2) further provides
that the application data sheet must include the section headings
listed in § 1.76(b) for each section included in the application
data sheet, and must identify the information that is being changed,
with underlining for insertions, and strike-through or brackets for
text removed, except that identification of information being changed
is not required for an application data sheet included with an initial
submission under 35 U.S.C. 371.
Section 1.76(d) governs the situation in which there are
inconsistencies between the application data sheet and other documents.
Section 1.76(d)(1) provides that the most recent submission will
govern (control) with respect to inconsistencies as between the
information provided in an application data sheet, a designation of a
correspondence address, or by the inventor's oath or declaration,
except that: (1) the most recent application data sheet will govern
with respect to foreign priority (§ 1.55) or domestic benefit
(§ 1.78) claims; and (2) the naming of the inventorship is governed
by § 1.41 and changes to inventorship or the names of the inventors
is governed by § 1.48. Section 1.76(d)(1) no longer references "an
amendment to the specification" as governing with respect to
inconsistencies in view of the changes to § 1.78.
Section 1.76(d)(2) provides that the information in the application
data sheet will govern when the inconsistent information is supplied at
the same time by a designation of correspondence address or the
inventor's oath or declaration.
Section 1.76(d)(3) provides that the Office will capture
bibliographic information from the application data sheet. Section
1.76(d)(3) further provides that the Office will generally not review
the inventor's oath or declaration to determine if the bibliographic
information contained therein is consistent with the bibliographic
information provided in an application data sheet. Section 1.76(d)(3)
further provides that incorrect bibliographic information contained in
an application data sheet may be corrected as provided in § 1.76(c)(1).
Section 1.76(e) provides that an application data sheet must be
signed in compliance with § 1.33(b). Section 1.76(e) further
provides that an unsigned application data sheet will be treated only
as a transmittal letter. Thus, an unsigned application data sheet will
not be effective to provide the name of the inventor for any invention
claimed in the application (§ 1.41(b)), to make a claim to priority
of a foreign application (§§ 1.55(a)(1)(i), (c) and
(d)(1)(ii)), or make a claim to the benefit of a prior-filed domestic
application (§§ 1.78(a)(2)(iii) and (a)(5)(iii)).
The Office published a notice in March of 2008 indicating that the
requirement under § 1.14(h)(2) that the written authority must be
submitted on a separate document is waived in the event the applicant
files a properly executed oath or declaration (e.g., the modified Form
PTO/SB/01) with the Authorization to Permit Access to Application by
Participating Offices. See Enhancement of Priority Document Exchange
Program and USPTO Declaration Form, 1328 Off. Gaz. Pat. Office 90, 91
(Mar. 11, 2008). In view of the changes to §§ 1.63 and 1.76 in
this final rule, the Office is now providing that the requirement under
§ 1.14(h)(2) that the written authority must be submitted on a
separate document is not applicable if the applicant files a properly
executed application data sheet (e.g., the modified Form PTO/SB/14)
with the Authorization to Permit Access to Application by Participating
Offices
Section 1.77: Section 1.77(a)(6) is amended to refer to "the
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 136 |
inventor's oath or declaration." See previous discussion of § 1.16(f).
Section 1.78: Section 1.78(a)(2)(iii) is amended to provide that
the reference to the prior-filed application that is required for
benefit claim to a prior-filed nonprovisional application or
international application designating the U.S. by a nonprovisional
application must be in the application data sheet.
Sections 1.78(a)(5)(iii) is amended to provide that the reference
requirement for a benefit claim to a prior-filed provisional
application by a nonprovisional application must be in the application
data sheet.
Providing this information in the application data sheet
constitutes the specific reference required by 35 U.S.C. 119(e) or 120.
The patent statute requires that a claim to the benefit of (specific
reference to) a provisional application (35 U.S.C. 119(e)(1)) or
nonprovisional application (35 U.S.C. 120) be in the application. Since
the application data sheet (if provided) is considered part of the
application, the specific reference to an earlier filed provisional or
nonprovisional application in the application data sheet meets the
"specific reference" requirement of 35 U.S.C. 119(e)(1) or 120.
Providing this information in a single location will also
facilitate more efficient processing of applications, as the Office
will only have to look at one location for the benefit claim and the
most recent application data sheet will govern. Formerly, the Office
had to look at the specification, amendments to the specification and
the application data sheet if provided to determine the benefit claim.
When applicants provided inconsistent information among the three
sources, the Office had to then determine which benefit claim governs
in accordance with the rule.
Providing this information in a single location will facilitate
review of patents and patent application publications, because
applications frequently provide a benefit and/or foreign priority claim
in the first sentence(s) of the specification, which is amended by an
application data sheet that includes a different benefit or foreign
priority claim, and thus the benefit claim and/or foreign priority
information contained on the front page of the patent or patent
application publication is different from the benefit claim and/or
foreign priority claim included in the first sentence(s) of the
specification. While the benefit and/or foreign priority claim on the
front page of the patent or patent application publication is usually
correct, anyone (including an examiner, a practitioner or the public)
reviewing the patent or patent application publication must review the
file history of the application. Since most applications are filed with
an application data sheet, requiring benefit and/or foreign priority
claims be included in the application data sheet will not require most
practitioners to change their practice.
Section 1.78(a)(5)(iv) is amended to delete the reference to "an
amendment" and to delete the word "Supplemental." Section
1.78(a)(5)(iv) is also amended to change thre phrase "withdrawing the
benefit claim" to "eliminating the reference under this paragraph to
the prior-filed provisional application."
Section 1.78(c) is amended to change "assignee" to "applicant."
This change is for consistency with the change in practice concerning
who is the applicant for patent in § 1.42.
Section 1.81: Section 1.81(a) is amended to change "his or her
invention" to "the invention." This change is for consistency with
the change in practice concerning who is the applicant for patent in
§ 1.42.
Section 1.105: Section § 1.105 is amended to remove § 1.105(a)(2)
(and redesignate §§ 1.105(a)(3) and (a)(4) as §§ 1.105(a)(2) and (a)(3),
respectively) as an assignee that has asserted its right to prosecute
the application is the applicant. See § 1.46.
Section 1.131: Section 1.131(a) is amended to change "the inventor
of the subject matter of the rejected claim, the owner of the patent
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 137 |
under reexamination, or the party qualified under §§ 1.42,
1.43, or 1.47" to "the applicant or patent owner." This change is
for consistency with the change in practice concerning who is the
applicant for patent in § 1.42.
Section 1.136: Section 1.136(c)(1) is amended to refer to "the
inventor's oath or declaration." See previous discussion of § 1.16(f).
Section 1.153: Section 1.153(b) is amended to refer to "the
inventor's oath or declaration." See previous discussion of § 1.16(f).
Section 1.154: Section 1.154(a)(6) is amended to refer to "the
inventor's oath or declaration." See previous discussion of § 1.16(f).
Section 1.162: Section 1.162 is amended to state that the inventor
named for a plant patent application must be the person who has
invented or discovered and asexually reproduced the new and distinct
variety of plant for which a patent is sought. This change from
"applicant" to "inventor" is for consistency with the change in
practice concerning who is the applicant for patent in § 1.42.
Section 1.162 is also amended to refer to "the inventor's oath or
declaration." See previous discussion of § 1.16(f).
Section 1.163: Section 1.163(b)(6) is amended to refer to "the
inventor's oath or declaration." See previous discussion of § 1.16(f).
Section 1.172: Section 1.172(a) is revised to state that the
reissue applicant is the original patentee, or the current patent owner
if there has been an assignment. Section 1.172(a) requires that a
reissue application be accompanied by the written consent of all
assignees, if any, currently owning an undivided interest in the
patent, and that all assignees consenting to the reissue must establish
their ownership in the patent by filing in the reissue application a
submission in accordance with the provisions of § 3.73(c). Section
1.172(b) provides that a reissue will be granted to the original
patentee, his legal representatives or assigns as the interest may
appear.
Section 1.175: Section 1.175(a) provides that the inventor's oath
or declaration for a reissue application, in addition to complying with
the requirements of § 1.63, § 1.64, or§ 1.67, must also
specifically identify at least one error pursuant to 35 U.S.C. 251
being relied upon as the basis for reissue and state that the applicant
believes the original patent to be wholly or partly inoperative or
invalid by reason of a defective specification or drawing, or by reason
of the patentee claiming more or less than the patentee had the right
to claim in the patent. Examples of proper error statements are
discussed in MPEP § 1414, II. The reissue oath or declaration may
identify more than one specific error that forms the basis of the
reissue, but at least one error must be identified.
Section 1.175(b) provides that if the reissue application seeks to
enlarge the scope of the claims of the patent (a basis for the reissue
is the patentee claiming less than the patentee had the right to claim
in the patent), the inventor's oath or declaration for a reissue
application must identify a claim that the application seeks to
broaden.
Section 1.175(b) indicates that a claim is a broadened claim if the
claim is broadened in any respect for purposes of 35 U.S.C. 251. See
Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir.
1987), In re Ruth, 278 F.2d 729, 730 (CCPA 1960), and In re Rogoff, 261
F.2d 601, 603 (CCPA 1958). The requirement that a claim broadened in
any respect be treated as a broadened claim is important to determine
who can sign the reissue oath or declaration. It also is important
because a reissue application that broadens the scope of the original
patent may only be filed within two years from the grant of the
original patent. See 35 U.S.C. 251(d).
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 138 |
Section 1.175(c) provides that the inventor, or each individual who
is a joint inventor of a claimed invention, in a reissue application
must execute an oath or declaration for the reissue application, except
as provided for in § 1.64, and except that the inventor's oath or
declaration for a reissue application may be signed by the
assignee of the entire interest if: (1) The application does not seek
to enlarge the scope of the claims of the original patent; or (2) the
application for the original patent was filed under § 1.46 by the
assignee of the entire interest. See 35 U.S.C. 251(c).
Section 1.175(d) provides that where all errors previously
identified in the inventor's oath or declaration for a reissue
application pursuant to § 1.175(a) are no longer being relied upon
as the basis for reissue, the applicant must identify an error being
relied upon as the basis for reissue. Thus, a supplemental reissue oath
or declaration is no longer required where all errors previously
identified in the inventor's oath or declaration for a reissue
application pursuant to § 1.175(a) are no longer being relied upon
as the basis for reissue. However, the applicant must still identify an
error being relied upon as the basis for reissue (e.g., in the remarks
of an amendment). A new reissue oath or declaration would be still
required if the reissue oath or declaration pursuant to § 1.175(a)
fails to identify any error or fails to identify at least one error of
the type that would support a reissue. See MPEP § 1402.
Section 1.175 does not contain a requirement for supplemental
reissue oaths or declarations in view of the change to 35 U.S.C. 251 in
section 20 of the AIA (i.e., removal of the "without any deceptive
intention" provision in section 20 of the AIA).
Section 1.175(e) provides that the inventor's oath or declaration
for a reissue application required by § 1.175(a) may be submitted
under the provisions of § 1.53(f), except that the provisions of
§ 1.53(f)(3) do not apply to a reissue application. Thus, the
inventor's oath or declaration for a reissue application must be
present before a reissue application will be examined.
Section 1.175(f) provides that the requirement for the inventor's
oath or declaration for a continuing reissue application that claims
the benefit under 35 U.S.C. 120, 121, or 365(c) in compliance with
§ 1.78 of an earlier-filed reissue application may be satisfied by
a copy of the inventor's oath or declaration from the earlier-filed
reissue application, provided that: (1) The inventor, or each
individual who is a joint inventor of a claimed invention, in the
reissue application executed an inventor's oath or declaration for the
earlier-filed reissue application, except as provided for in § 1.64;
(2) the continuing reissue application does not seek to enlarge
the scope of the claims of the original patent; or (3) the application
for the original patent was filed under § 1.46 by the assignee of
the entire interest. Thus, the requirement for the inventor's oath or
declaration for a continuing reissue application may be satisfied by a
copy of the inventor's oath or declaration from the earlier-filed
reissue application except when all of the following conditions exist:
(1) The inventor's oath or declaration for the earlier-filed reissue
application was executed by the patent owner and not by or with respect
to the inventor, (2) the continuing reissue application seeks to
enlarge the scope of the claims of the original patent; and (3) the
application for the original patent was not filed under § 1.46 by
the assignee of the entire interest. Section 1.175(f) further provides
that if all errors identified in the inventor's oath or declaration
from the earlier-filed reissue application are no longer being relied
upon as the basis for reissue, the applicant must identify an error
being relied upon as the basis for reissue.
Section 1.175(g) provides that an oath or declaration filed at any
time pursuant to 35 U.S.C. 115(h)(1), will be placed in the file record
of the reissue application, but may not necessarily be reviewed by the
Office.
Section 1.211: Section 1.211(c) is amended to no longer require
"an executed oath or declaration" for publication of the application.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 139 |
Section 1.211(c) is also amended to state that the Office may delay
publishing any application until it includes "the inventor's oath or
declaration or application data sheet containing the information
specified in § 1.63(b)" and to no longer reference a petition under
§ 1.47. These changes are due to the change to §§ 1.53 and 1.495 to allow
applicants to postpone filing the inventor's oath or declaration until
the application is otherwise in condition for allowance.
Section 1.215: Section 1.215(a) is amended to replace "executed
oath or declaration" with "application data sheet and/or the
inventor's oath or declaration." This change is due to the change to
§§ 1.53 and 1.495 to allow applicants to postpone filing the
inventor's oath or declaration until the application is otherwise in
condition for allowance.
Section 1.215(b) is amended to state that the patent application
publication will include the name of the assignee, person to whom the
inventor is under an obligation to assign the invention, or person who
otherwise shows sufficient proprietary interest in the matter if that
information is provided in the application data sheet in an application
filed under § 1.46.
Section 1.215(c) is amended to replace "oath or declaration" with
"application data sheet and/or the inventor's oath or declaration."
This change is due to the change to §§ 1.53 and 1.495 to allow
applicants to postpone filing the inventor's oath or declaration until
the application is otherwise in condition for allowance.
Section 1.321: Section 1.321(b) is amended to provide that a
terminal disclaimer must be signed by the applicant or an attorney or
agent of record and state the present extent of applicant's ownership
interest in the patent to be granted.
Section 1.324: Section 1.324 is amended to no longer include a
"without deceptive intention" requirement (as this requirement has
been eliminated from 35 U.S.C. 256 in section 20 of the AIA). Section
1.324(a) provides that whenever through error a person is named in an
issued patent as the inventor, or an inventor is not named in an issued
patent, 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. See 35 U.S.C. 256.
Section 1.324(b) provides that any request to correct inventorship
of a patent pursuant to 1.324(a) must be accompanied by: (1) A
statement from each person who is being added as an inventor and each
person who is currently named as an inventor either agreeing to the
change of inventorship or stating that he or she has no disagreement in
regard to the requested change; (2) a statement from all assignees of
the parties submitting a statement under 1.324(b)(1) agreeing to the
change of inventorship in the patent, which statement must comply with
the requirements of § 3.73(c); and (3) the fee set forth in § 1.20(b).
Section 1.324(c) provides a cross reference to § 1.48 for
correction of inventorship in an application.
Section 1.324(d) provides that in an interference under part 41,
subpart D, of this title, a request for correction of inventorship in a
patent must be in the form of a motion under § 41.121(a)(2) of this
title, and that in a contested case under part 42, subpart D, of this
title, a request for correction of inventorship in a patent must be in
the form of a motion under § 42.22 of this title. Section 1.324(d)
further provides that the motion under § 41.121(a)(2) or 42.22 of
this title must comply with the requirements of § 1.324.
Section 1.414: Section 1.414(c)(2) is amended to replace "[a]ccepting
for national stage examination international applications which satisfy
the requirements of 35 U.S.C. 371" with "[n]ational stage processing for
international applications entering the national stage under 35 U.S.C.
371." As discussed previously, an international application does not
satisfy the requirements of 35 U.S.C. 371 until the inventor's oath or
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 140 |
declaration has been filed. Thus, under the changes to inventor's oath
or declaration practice in this final rule, the Office must process and
conduct national examination of international applications before they
satisfy the requirements of 35 U.S.C. 371.
Section 1.421: Section 1.421(b) is amended to provide that
"[a]lthough the United States Receiving Office will accept
international applications filed by any applicant who is a resident or
national of the U.S. for international processing, for the purposes of
the designation of the U.S., an international application will be
accepted by the Patent and Trademark Office for the national stage only
if the applicant is the inventor or other person as provided in § 1.422
or § 1.424." Section 1.421(b) continues to provide that
joint inventors must jointly apply for an international application.
Section 1.421 is amended to delete the provision of former
§ 1.421(c) that for purposes of designations other than the U.S.,
international applications may be filed by the assignee or owner. This
provision is deleted in view of the changes to 35 U.S.C. 118 under the
AIA.
Sections 1.421(c), (d), and (e) contain the provisions of former
§§ 1.421(d), (e), and (f), respectively.
Section 1.421(f) contains the provisions of former § 1.421(g),
except for the provision that the submission of a separate power of
attorney may be excused upon the request of another applicant where one
or more inventors cannot be found or reached after diligent effort, and
that such a request must be accompanied by a statement explaining to
the satisfaction of the Director the lack of the signature concerned.
Section 1.422: Section 1.422 is amended to provide that if an
inventor is deceased or under legal incapacity, the legal
representative of the inventor may be an applicant in an international
application which designates the United States.
Section 1.423: Section 1.423 is removed and reserved as its
provisions are now in § 1.422.
Section 1.424: Section 1.424 is added to provide for an assignee,
obligated assignee, or person who otherwise shows sufficient
proprietary interest in the matter as the applicant under 35 U.S.C. 118
in an international application.
Section 1.424(a) provides that a person to whom the inventor has
assigned or is under an obligation to assign the invention may be an
applicant in an international application which designates the U.S.
Section 1.424(a) also provides that a person who otherwise shows
sufficient proprietary interest in the matter may be an applicant in an
international application which designates the U.S. on proof of the
pertinent facts and a showing that such action is appropriate to
preserve the rights of the parties.
Section 1.424(b) provides that neither any showing required under
§ 1.424(a) nor documentary evidence of ownership or proprietary
interest will be required or considered by the Office in the
international stage, but such showings will be required in the national
stage in accordance with the conditions and requirements of § 1.46.
Section 1.431: Section 1.431(b)(3)(iii) is amended to reference
§§ 1.421, 1.422 and 1.424 for consistency with the removal of
§ 1.423 and the addition of § 1.424.
Section 1.491: Section 1.491(b) is amended by stating that an
international application enters the national stage when the applicant
has filed "the documents and fees required by 35 U.S.C. 371(c)(1) and
(c)(2) within the period set in § 1.495" rather than "the
documents and fees required by 35 U.S.C. 371(c) within the period set
in § 1.495." 35 U.S.C. 371 provides that "[a]fter an
international application has entered the national stage, no patent may
be granted or refused thereon before the expiration of the applicable
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 141 |
time limit under [PCT Article 28 or 41], except with the express
consent of the applicant." See 35 U.S.C. 371(e). 35 U.S.C. 371,
however, does not define when an international application enters the
national stage. The Office formerly defined when an international
application enters the national stage as when the applicant files the
documents and fees required by 35 U.S.C. 371(c) within the period set
in § 1.495, which means that an international application would not
enter the national stage until the applicant files the inventor's oath
or declaration. See 35 U.S.C. 371(c)(4). As the Office is changing
inventor's oath or declaration practice to allow applicants to postpone
filing the inventor's oath or declaration until the application is
otherwise in condition for allowance, the Office would be examining
international applications prior to national stage entry under the
definition of national stage entry provided in former § 1.491(b).
Section 1.491(c) is added to state that an international
application fulfills the requirements of 35 U.S.C. 371 when all
applicable requirements of 35 U.S.C. 371, including commencement under
35 U.S.C. 371(b) or (f), have been satisfied. As discussed previously,
the fourteen-month time frame in 35 U.S.C. 154(b)(1)(A)(i)(II) for
issuing an Office action under 35 U.S.C. 132 or notice of allowance
under 35 U.S.C. 151 is measured from "the date on which an
international application fulfilled the requirements of section 371 of
this title" (not the date of commencement of national stage processing
or entry into the national stage). An international application does
not fulfill the requirements of 35 U.S.C. 371 until the applicant files
the inventor's oath or declaration. See 35 U.S.C. 371(c)(4) and MPEP
§ 1893.03(b). Thus, § 1.491(c) is added as a reminder to PCT
applicants that an international application fulfills the requirements
of 35 U.S.C. 371 only when all applicable requirements of 35 U.S.C. 371
have been satisfied.
Section 1.492: Section 1.492(h) is amended to refer to "the
inventor's oath or declaration." See previous discussion of § 1.16(f).
Section 1.495: Section 1.495(a) is amended to remove the sentence
that stated "international applications for which the requirements of
§ 1.495 are timely fulfilled will enter the national stage and
obtain an examination as to the patentability of the invention in the
United States of America" as the sentence was confusing.
Section 1.495(c)(1)(ii) is amended to refer to "the inventor's
oath or declaration." See previous discussion of § 1.16(f).
Section 1.495(c)(2) provides that a notice under § 1.495(c)(1)
will set a time period within which applicant must provide any omitted
translation, search fee set forth in § 1.492(b), examination fee
set forth in § 1.492(c), and any application size fee required by
§ 1.492(j) in order to avoid abandonment of the application.
Section 1.495(c)(3) (discussed subsequently) sets forth the time period
for filing the inventor's oath or declaration and provides the
conditions under which an applicant may postpone filing the inventor's
oath or declaration until the application is otherwise in condition for
allowance.
Section 1.495(c)(3) sets forth the time period for filing the
inventor's oath or declaration and provides the conditions under which
an applicant may postpone filing the inventor's oath or declaration
until the application is otherwise in condition for allowance. Section
1.495(c)(3) specifically provides that the inventor's oath or
declaration must also be filed within the period specified in
§ 1.495(c)(2), except that the filing of the inventor's oath or
declaration may be postponed until the application is otherwise in
condition for allowance under the conditions specified in
§§ 1.495(c)(3)(i) through (c)(3)(iii). Section 1.495(c)(3)(i) provides
that the application must contain an application data sheet in
accordance with § 1.76 filed prior to the expiration of the time
period set in any notice under § 1.495(c)(1) identifying: (1) Each
inventor by his or her legal name; and (2) a mailing address where the
inventor customarily receives mail, and residence, if an inventor lives
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 142 |
at a location which is different from where the inventor customarily
receives mail, for each inventor. Section 1.495(c)(3)(ii) provides that
the applicant must file an oath or declaration in compliance with
§ 1.63, or substitute statement in compliance with § 1.64, executed
by or with respect to each actual inventor no later than the expiration
of the time period set in the "Notice of Allowability" to avoid
abandonment, when the applicant is notified in a "Notice of
Allowability" that an application is otherwise in condition for
allowance. The time period set in a "Notice of Allowability" is not
extendable. See § 1.136(c). The Office may dispense with the notice
provided for in § 1.495(c)(1) if an oath or declaration under § 1.63,
or substitute statement under § 1.64, executed by or with
respect to each actual inventor has been filed before the application
is in condition for allowance.
Under former practice, the Office issued a Notification of Missing
Requirements if the basic national fee and copy of the international
application (if required under § 1.495(b)(1)) have been received by
the expiration of thirty months from the priority date, but the
inventor's oath or declaration has not been filed. If the Office issued
a Notification of Missing Requirements, the applicant was given a time
period (the later of two months from the date of the notice or thirty-
two months from the priority date) within which to file the inventor's
oath or declaration and pay the surcharge required by § 1.492(h) to
avoid abandonment. See MPEP § 1893.01(e). The Office is modifying
this practice such that if a signed application data sheet providing
the information required by § 1.495(c)(3)(i) has been received, but
not the inventor's oath or declaration, the Office will not issue a
Notification of Missing Requirements requiring the applicant to file
the inventor's oath or declaration. This change will not affect the
practice of issuing a Notification of Missing Requirements if another
requirement is missing (e.g., an English translation of the
international application required under § 1.495(c) or the
surcharge required by § 1.492(h) for filing the inventor's oath or
declaration after the date of commencement). If the basic national fee
and required copy of the international application have been received
by the expiration of thirty months from the priority date, but neither
the inventor's oath or declaration as required under § 1.497 nor a
signed application data sheet providing the information required by
§ 1.495(c)(3)(i) have been received, the Office will issue a
Notification of Missing Requirements giving the applicant a time period
(at least two months) within which to file the inventor's oath or
declaration (or signed application data sheet providing the information
required by § 1.495(c)(3)(i)) and surcharge required by § 1.492(h)
(unless previously paid) to avoid abandonment. In this
situation, the inventor's oath or declaration will not be required
within the period for reply to the Notification of Missing Requirements
if the applicant provides a signed application data sheet providing the
information required by § 1.495(c)(3)(i) within the period for
reply to the Notification of Missing Requirements. The surcharge
required by § 1.492(h), and any other item required by the
Notification, however, must be filed within the period for reply to the
Notification of Missing Requirements to avoid abandonment.
If an application is in condition for allowance and includes an
oath or declaration in compliance with § 1.63, or substitute
statement in compliance with § 1.64, executed by or with respect to
each actual inventor, the Office will issue a "Notice of
Allowability" (PTOL-37) and a "Notice of Allowance and Fee(s) Due"
(PTOL-85). If an application is in condition for allowance but does not
include an oath or declaration in compliance with § 1.63, or
substitute statement in compliance with § 1.64, executed by or with
respect to each actual inventor, the Office will issue a "Notice of
Allowability" (PTOL-37) (but not a "Notice of Allowance and Fee(s)
Due" (PTOL-85)) giving the applicant three months to file an oath or
declaration in compliance with § 1.63, or substitute statement in
compliance with § 1.64, executed by or with respect to each actual
inventor, to avoid abandonment. This three-month time period is not
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 143 |
extendable under § 1.136(a). The "Notice of Allowance" (PTOL-85)
will not be issued until the application includes an oath or
declaration in compliance with § 1.63, or substitute statement in
compliance with § 1.64, executed by or with respect to each actual
inventor.
Section 1.495(c)(3)(iii) provides that an international application
in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been
paid and for which an application data sheet in accordance with
§ 1.76 has been filed may be treated as complying with 35 U.S.C. 371 for
purposes of eighteen-month publication under 35 U.S.C. 122(b) and
§ 1.211 et seq. Section 4508 of the American Inventors Protection Act of
1999 provides that its eighteen-month publication provisions apply to
applications (other than for a design patent) filed under 35 U.S.C.
111(a) on or after November 29, 2000, and to applications in compliance
with 35 U.S.C. 371 that resulted from international applications filed
under 35 U.S.C. 363 on or after November 29, 2000. See Pub. L. 106-113,
113 Stat. 1501, 1501A-566 through 1501A-567 (1999). As discussed
previously, an international application is not in compliance with 35
U.S.C. 371 until the applicant files the inventor's oath or
declaration. See 35 U.S.C. 371(c)(4). Thus, this provision permits the
Office to treat an international application in which the basic
national fee under 35 U.S.C. 41(a)(1)(F) has been paid and for which an
application data sheet in accordance with § 1.76 has been filed as
complying with 35 U.S.C. 371 for purposes of eighteen-month
publication.
There is a distinction between treating an international
application without the inventor's oath or declaration as complying
with 35 U.S.C. 371 for purposes of eighteen-month publication and
treating an international application without the inventor's oath or
declaration as fulfilling the requirements of 35 U.S.C. 371 for patent
term adjustment purposes. The PCT provides for eighteen-month
publication (PCT Article 21) and thus the publication by the Office of
an international application that is in compliance with 35 U.S.C. 371
is a republication of the application. See Changes to Implement
Eighteen-Month Publication of Patent Applications, 65 FR 57021, 57045
(Sept. 20, 2000) (comment 47 and response). Patent term adjustment,
however, has an impact on the rights of third parties to the
application process (the public). See 35 U.S.C. 282(c) (provides a
defense based upon invalidity of an extension under 35 U.S.C. 154(b)).
Sections 1.495(c)(4) and (c)(5) contain the provisions of former
§ 1.495(c)(3) and (c)(4).
Section 1.495(g) provides that if the documents and fees contain
conflicting indications as between an application under 35 U.S.C. 111
and a submission to enter the national stage under 35 U.S.C. 371, the
documents and fees will be treated as a submission to enter the
national stage under 35 U.S.C. 371. It is Office experience that, in
most cases, documents and fees that contain such conflicting
indications were intended as submissions under 35 U.S.C. 371.
Section 1.495(h) is amended to delete the provision that if the
requirements of § 1.495(b) are complied with within thirty months
from the priority date, but either any required translation of the
international application or the oath or declaration are not timely
filed, an international application will become abandoned as to the
U.S. upon expiration of the time period set pursuant to § 1.495(c).
Section 1.496: Section 1.496 is amended to provide that national
stage applications having paid therein the search fee as set forth in
§ 1.492(b)(1) and examination fee as set forth in § 1.492(c)(1)
may be amended subsequent to the date of commencement of national stage
processing only to the extent necessary to eliminate objections as to
form or to cancel rejected claims. Section 1.496 also provides that
such national stage applications will be advanced out of turn for
examination. Section 1.496 is also amended to eliminate the language
concerning when international applications are otherwise taken up for
examination as relating to an unnecessary internal Office instruction.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 144 |
Section 1.497: Section 1.497(a) provides that when an applicant of
an international application desires to enter the national stage under
35 U.S.C. 371 pursuant to § 1.495, and a declaration in compliance
with § 1.63 has not been previously submitted in the international
application under PCT Rule 4.17(iv) within the time limits provided for
in PCT Rule 26ter.1, the applicant must file the inventor's oath or
declaration. Section 1.497(a) further provides that the inventor, or
each individual who is a joint inventor of a claimed invention, in an
application for patent must execute an oath or declaration in
accordance with the conditions and requirements of § 1.63, except
as provided for in § 1.64.
Section 1.497(b) provides that an oath or declaration under § 1.63
will be accepted as complying with 35 U.S.C. 371(c)(4) if it
complies with the requirements of §§ 1.63(a), (c) and (g).
Section 1.497(b) provides that a substitute statement under § 1.64
will be accepted as complying with 35 U.S.C. 371(c)(4) if it complies
with the requirements of §§ 1.64(b)(1), (c) and (e) and
identifies the person executing the substitute statement. Section
1.497(b) further provides that if a newly executed inventor's oath or
declaration under § 1.63 or substitute statement under § 1.64
is not required pursuant to § 1.63(d), submission of the copy of
the previously executed oath, declaration, or substitute statement
under § 1.63(d)(1) is required to comply with 35 U.S.C. 371(c)(4).
Section 1.497(c) provides that if an oath or declaration under
§ 1.63, or substitute statement under § 1.64, meeting the
requirements of § 1.497(b) does not also meet the requirements of
§ 1.63 or 1.64, an oath, declaration, substitute statement, or
application data sheet in accordance with § 1.76 to comply with
§ 1.63 or § 1.64 will be required.
Section 1.530: Section 1.530(l)(1) is amended to eliminate the
"without deceptive intention" requirement (as this requirement has
been eliminated from 35 U.S.C. 256 in section 20 of the AIA).
Section 1.730: Section 1.730(b)(1) is amended to change the
reference to "3.73(b)" to "3.73(c)" for consistency with the change
to § 3.73.
37 CFR Part 3
Section 3.31: Section 3.31(h) is amended to provide that the
assignment cover sheet required by § 3.28 must contain a
conspicuous indication of an intent to utilize the assignment as the
required oath or declaration under § 1.63. This implements the
provision of 35 U.S.C. 115(e) which allows use of an assignment in lieu
of an oath or declaration to meet the oath or declaration requirements
of § 1.63. See previous discussion of § 1.63(e).
Section 3.71: Section 3.71(a) is amended to provide that one or
more assignees as defined in § 3.71(b) may conduct prosecution of a
national patent application as the applicant under § 1.46 of this
title, or conduct prosecution of a supplemental examination or
reexamination proceeding, to the exclusion of the inventor or previous
applicant or patent owner. Section 3.71(a) formerly provided that an
assignee may take over prosecution of a national patent application to
the exclusion of the inventor or previous assignee. As discussed
previously, in view of the changes to § 1.46 to implement the
provisions of 35 U.S.C. 118, an assignee who files the application or
takes over prosecution of a national patent application does so as the
applicant under § 1.46. Section 3.71(a) also includes a reference
to the supplemental examination proceedings that have been added by
section 12 of the AIA. Section 3.71(a) also provides that conflicts
between purported assignees are handled in accordance with § 3.73(c)(3).
Section 3.71(b) provides that the assignee(s) who may conduct
either the prosecution of a national application for patent as the
applicant under § 1.46 of this title or a supplemental examination
or reexamination proceeding are: (1) a single assignee who is the
assignee of the entire right, title and interest in the application or
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 145 |
patent, or (2) all partial assignees, or all partial assignees and
inventors who have not assigned their right, title and interest in the
application or patent, who together own the entire right, title and
interest in the application or patent. Section 3.71(b) provides that a
partial assignee is any assignee having less than the entire right,
title and interest in the application or patent. Section 3.71(b)
further provides that the word "assignee" as used in this chapter
means with respect to patent matters the single assignee of the entire
right, title and interest in the application or patent if there is such
a single assignee, or all of the partial assignees, or all of the
partial assignees and inventors who have not assigned their interest in
the application or patent, who together own the entire right, title and
interest in the application or patent.
Section 3.71(c) provides that an assignee becomes of record as the
applicant in a national patent application under § 1.46 of this
title, and in a supplemental examination or reexamination proceeding,
by filing a statement in compliance with § 3.73(c) that is signed
by a party who is authorized to act on behalf of the assignee.
Section 3.73: Section 3.73(a) provides with respect to patents that
the original applicant is presumed to be the owner of an application
for an original patent, and any patent that may issue therefrom, unless
there is an assignment. Thus, in view of the changes to § 1.46 to
implement the provisions of 35 U.S.C. 118, the presumption is now that
the original applicant (and not the inventor(s)) is the owner of an
application for an original patent. Section 3.73(a) continues to
provide with respect to trademarks that the original applicant is
presumed to be the owner of a trademark application or
registration, unless there is an assignment.
Section 3.73(b) is amended to provide only for trademark matters
(patent matters are provided for in § 3.73(c)). Section 3.73(b)
provides that in order to request or take action in a trademark matter,
the assignee must establish its ownership of the trademark property of
§ 3.73(a) to the satisfaction of the Director, and that the
establishment of ownership by the assignee may be combined with the
paper that requests or takes the action. Section 3.73(b) further
provides that ownership is established by submitting to the Office a
signed statement identifying the assignee, accompanied by either: (1)
documentary evidence of a chain of title from the original owner to the
assignee (e.g., copy of an executed assignment), which documents
submitted to establish ownership may be required to be recorded
pursuant to § 3.11 in the assignment records of the Office as a
condition to permitting the assignee to take action in a matter pending
before the Office; or (2) a statement specifying where documentary
evidence of a chain of title from the original owner to the assignee is
recorded in the assignment records of the Office (e.g., reel and frame
number).
Section 3.73(c) provides that in order to request or take action in
a patent matter, an assignee who is not the original applicant must
establish its ownership of the patent property of § 3.73(a) to the
satisfaction of the Director, and that the establishment of ownership
by the assignee may be combined with the paper that requests or takes
the action. Section 3.73(c) further provides that ownership is
established by submitting to the Office a signed statement identifying
the assignee, accompanied by either: (1) Documentary evidence of a
chain of title from the original owner to the assignee (e.g., copy of
an executed assignment), and that the submission of the documentary
evidence must be accompanied by a statement affirming that the
documentary evidence of the chain of title from the original owner to
the assignee was or concurrently is being submitted for recordation
pursuant to § 3.11; or (2) a statement specifying where documentary
evidence of a chain of title from the original owner to the assignee is
recorded in the assignment records of the Office (e.g., reel and frame
number).
Section 3.73(c)(2) provides that if the submission is by an
assignee of less than the entire right, title and interest (e.g., more
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 146 |
than one assignee exists), the Office may refuse to accept the
submission as an establishment of ownership unless: (1) Each assignee
establishes the extent (by percentage) of its ownership interest, so as
to account for the entire right, title and interest in the application
or patent by all parties including inventors; or (2) each assignee
submits a statement identifying the parties including inventors who
together own the entire right, title and interest and stating that all
the identified parties own the entire right, title and interest.
Section 3.73(c)(3) provides that if two or more purported assignees
file conflicting statements under § 3.73(c)(1), the Director will
determine which, if any, purported assignee will be permitted to
control prosecution of the application. This provision sets out the
Office's practice for treating two or more conflicting statements under
§ 3.73(c), currently discussed in MPEP § 324, IX.
Section 3.73(d) provides that the submission establishing ownership
under § 3.73(b) (for trademark matters) or § 3.73(c) (for
patent matters) must show that the person signing the submission is a
person authorized to act on behalf of the assignee by: (1) Including a
statement that the person signing the submission is authorized to act
on behalf of the assignee; (2) being signed by a person having apparent
authority to sign on behalf of the assignee; or (3) for patent matters
only, being signed by a practitioner of record.
37 CFR Part 5
Section 5.25: Sections 5.25(a)(3)(iii) and 5.25(b) are amended to
deleted the "without deceptive intention" clauses for consistency
with the change to 35 U.S.C. 184 in section 20 of the AIA.
37 CFR Part 10
Section 10.23: Section 10.23(c)(11) is removed and reserved.
Section 1.52(c) no longer prohibits changes to the application papers
after execution of the inventor's oath or declaration. Thus, §
10.23 is amended to eliminate the clause concerning knowingly filing or
causing to be filed an application containing any material alteration
made in the application papers after the signing of the accompanying
oath or declaration without identifying the alteration at the time of
filing the application papers (except as permitted by § 1.52(c)) as
conduct which constitutes a violation of § 10.23.
37 CFR Part 41
Section 41.9: Section 41.9(a) is amended to change the reference to
"3.73(b)" to "§§ 3.71 and 3.73."
Comments and Responses to Comments: As discussed previously, the
Office published a notice on January 6, 2012, proposing to change the
rules of practice to implement the inventor's oath or declaration
provisions of section 4 of the AIA. See Changes to Implement the
Inventor's Oath or Declaration Provisions of the Leahy-Smith America
Invents Act, 77 FR at 982-1003. The Office received thirty-one written
comments from intellectual property organizations, academia, industry,
law firms, individual patent practitioners, and the general public in
response to this notice. The comments and the Office's responses to the
comments follow:
A. Assignee Filing.
B. Oath/Declaration.
1. Time of submission.
2. Averments.
3. Inventors named.
4. Copies in continuing applications.
5. Supplemental Oath or Declaration.
6. Effective date.
7. Miscellaneous.
C. Substitute statements.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 147 |
D. Combined declaration and assignment.
1. Generally.
2. Recordation of assignments.
E. Power of attorney.
F. PCT.
G. Reissue applications.
H. Application data sheet (§ 1.76).
1. Domestic benefit and foreign priority claims.
2. Form requirements.
I. Miscellaneous rules.
1. Mail stop (§ 1.1(e)).
2. Signatures (§ 1.4).
3. Juristic entity (§ 1.31).
4. Correspondence address (§ 1.33).
5. Person making declaration (§ 1.64).
6. Noncompliant declarations (§ 1.67).
7. Statement under § 3.73.
8. Lack of deceptive intent.
A. Assignee Filing
Comment 1: A number of comments questioned the Office permitting
assignee filing only under the narrow exceptions of death, incapacity,
absence or refusal. A number of comments suggested that the rules be
revised to recognize that "applicant" and "inventor" are no longer
interchangeable because assignees, parties to whom an inventor is
obligated to assign, and parties with a sufficient proprietary interest
in the matter, can also be applicants. One comment stated that by
replacing the language in 35 U.S.C. 118 (which formerly permitted
filing by other than the inventor only in the situations where the
inventor was unwilling or unavailable to execute the oath or
declaration) with broader language, Congress has in 35 U.S.C. 118
authorized an assignee to file an application for a patent as the
applicant. A number of comments requested that the rules be revised for
submission of the inventor statements in applications filed by assignees
and obligated assignees to simplify the submission of the inventor
statements, facilitate the process by which an assignee or obligated
assignee may file and prosecute applications, and accomplish greater
international harmonization. One comment suggested that, in the
interest of procedural harmonization with the patent laws of other
countries, the Office should dispense with the oath or declaration
entirely. One comment, however, expressed agreement with most of the
changes in the notice of proposed rulemaking, and agreement with the
requirement that inventors must execute oaths or declarations.
Response: The Office agrees that the AIA changes 35 U.S.C. 118 to
permit an assignee, an obligated assignee, or a person who otherwise
shows sufficient proprietary interest in the matter to make an
application as the "applicant." Accordingly, this final rule revises
the rules of practice to provide that assignees, obligated assignees
(parties to whom an inventor is obligated to assign) and parties who
otherwise show sufficient proprietary interest in the matter may file
an application for patent as the applicant. Historically, being the
applicant was synonymous with being the one to execute the oath or
declaration under 35 U.S.C. 115. However, the AIA amends 35 U.S.C. 115
to separate being the applicant from being the one who must execute the
oath or declaration under 35 U.S.C. 115 (normally the inventor). Thus,
35 U.S.C. 115 and 118, as amended by the AIA, provide that an
application may be filed by a person other than the inventor as the
applicant, but 35 U.S.C. 115 still also requires an oath or declaration
from the inventor (except in certain situations). The situations in
which the applicant for patent may submit a substitute statement in
lieu of an oath or declaration with respect to an inventor are set
forth in 35 U.S.C. 115(d)(2).
Comment 2: A number of comments requested that the Office recognize
the ability of assignees, obligated assignees, and persons who
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 148 |
otherwise show sufficient proprietary interest in the matter to file an
application and have requested that the requirements be simplified. A
few comments suggested that in the case of an assignment or obligation
to assign, no documents should be required to perfect the right to file
the application. The comments stated that an application filed by the
assignee or an obligated assignee plus an oath or declaration by the
inventors would be sufficient. One comment suggested that the Office
should require no more than a copy of the assignment to perfect the
right to execute an oath or declaration, as the inventor no longer has
a property interest and thus the assignee should be able to make the
application without additional requirements. One comment suggested that
the Office permit assignees to make certifications regarding ownership
in the application data sheet.
Some comments recognized that the Office would likely want
documents containing "proof of the pertinent facts and a showing that
such action is appropriate to preserve the rights of the parties"
where an application is filed by a party with sufficient proprietary
interest. However, two comments stated that there is no need for the
Office to review these documents to determine sufficiency, but rather
the Office should only review them to determine whether they appear to
satisfy the requirements for submission, with one comment stating that
any challenge to a filing should be made in court. One comment
requested that the Office not include any confidential documents used
as "proof" in the public image file wrapper. The comment suggested
that the Office could state in the file wrapper that certain agreements
were reviewed by the Office and found to fulfill the criteria.
Response: Section 1.46 as adopted in this final rule permits the
filing of applications by assignees, obligated assignees, and persons
who otherwise show sufficient proprietary interest in the matter with
an application data sheet identifying the party filing the application
(the applicant). For assignees and obligated assignees, documentary
evidence of an ownership interest should be recorded no later than the
date the issue fee is paid. See § 1.46(b)(1).
Section 1.46 provides that parties who otherwise show sufficient
proprietary interest in the matter must also submit a petition with
documentary evidence of the sufficient proprietary interest. 35 U.S.C.
118 provides that a party with sufficient proprietary interest may file
an application, but the filing is done on behalf of and as agent for
the inventors on proof of the pertinent facts. The Office believes that
the petition is necessary in these situations to determine whether an
appropriate party is filing the application, which requires some
additional review as to the assertion of sufficient proprietary
interest. It is not the intent of the Office to make a definitive
factual determination of the showing of sufficiency of the proprietary
interest, but the showing will be reviewed to ensure that the party has
a valid basis for being treated as the applicant for patent on behalf
of and as agent for the inventors.
The documentary evidence submitted to establish proof of sufficient
proprietary interest is not always as clear-cut as an assignment or a
document showing an obligation to assign. Thus, it is appropriate that
the documentary evidence be visible in the file record when the
application becomes available to the public.
Comment 3: A number of comments suggested that all that should be
required on filing is a two-part statement affirming: (1) that the
applicant is either the inventor, or is authorized by the inventor to
file the application, and (2) that the applicant has filed with the
application or will file an inventor statement under 35 U.S.C. 115
before receiving a notice of allowance. In addition to the two-part
statement, one comment suggested that every application as filed could
be required to contain identifying information essential to the orderly
processing of the application, such as the name of the inventor, the
name of the applicant (if different from the inventor), residence, and
correspondence address. A number of comments suggested that, other than
the two-part statement and identifying information, no more than the
minimum averments mandated by 35 U.S.C. 115(b) should be required in an
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 149 |
inventor statement.
Response: In response to the comments, this final rule revises
§ 1.63 to require only the statements that are required by 35
U.S.C. 115(b), provided that an application data sheet is submitted to
provide inventor and other application information.
Comment 4: A number of comments suggested that the application data
sheet should be used to provide inventor information instead of an oath
or declaration. The comments suggested that the vast majority of
applications do not have inventorship or assignment issues and the
process of dealing with the formalities should be deferred until an
indication of allowable subject matter. Another comment stated that the
assignee-applicant is in the best position to decide who is to be named
as an inventor, based on a legal analysis of what it takes to be an
inventor, and the Office on its own should not raise inventorship
issues, as such issues are best handled through a derivation action or
a court action. One comment noted that early submission of the
declaration can be difficult for foreign applicants and entities whose
inventors are no longer available.
Response: The Office needs the correct identification of the inventive
entity prior to examination of the application to determine whether an
exception under 35 U.S.C. 102(b), as amended in the AIA, is applicable
and to conduct a double patenting analysis. Accordingly, an applicant
may file the application and identify the inventive entity in either an
application data sheet under § 1.76 or in the inventor's oath or
declaration. If an application data sheet is submitted with the
application or within the period provided in §§ 1.53(f)(1) or
(f)(2), an applicant may postpone submission of the inventor's oath or
declaration until the application is in condition for allowance. The
Office does not generally question whether the identified inventive
entity is the inventor except in interference and contested cases.
Comment 5: One comment suggested that the proposed rules not
include a requirement for notification of a change in ownership no
later than payment of the issue fee.
Response: 35 U.S.C. 118 requires the Office to grant the patent to
the real party in interest where the application was filed under 35
U.S.C. 118 by a person other than the inventor. In order for the Office
to carry out this statutory mandate, the Office must be notified of any
change in the real party in interest no later than payment of the issue
fee. Therefore, § 1.46, as adopted in this final rule, requires
applicants to notify the Office of any change in the real party in
interest no later than payment of the issue fee in the situation where
a real party in interest has filed the application under § 1.46.
B. Oath/Declaration
1. Time of Submission
Comment 6: A number of comments suggested that, in view of 35
U.S.C. 115(f), the Office should not require applicants to file the
inventor's oath or declaration until the application is in condition
for allowance. One comment supported early submission of the oath or
declaration as better for the examination process and patent pendency.
Response: In response to the comments, this final rule permits
delaying submission of the inventor's oath or declaration until the
application is otherwise in condition for allowance. The inventor's
oath or declaration will not be required within the period specified in
§§ 1.53(f)(1) or (f)(2) but may be filed when the application
is otherwise in condition for allowance if the application is an
original (non-reissue) application that contains an application data
sheet in accordance with § 1.76 identifying: (1) Each inventor by
his or her legal name; and (2) a mailing address where the inventor
customarily receives mail, and residence, if an inventor lives at a
location which is different from where the inventor customarily
receives mail, for each inventor.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 150 |
It should be noted that 35 U.S.C. 115(f) does not provide that an
applicant is entitled as a matter of right to postpone submission of
the inventor's oath or declaration until an application is in condition
for allowance. The Office's authority to set the period (and
conditions) under which the inventor's oath or declaration may be
submitted after the filing date of an application is set forth in 35
U.S.C. 111(a)(3) ("The application must be accompanied by the fee
required by law. The fee and oath or declaration may be submitted after
the specification and any required drawing are submitted, within such
period and under such conditions, including the payment of a surcharge,
as may be prescribed by the Director.") and (a)(4) ("Upon failure to
submit the fee and oath or declaration within such prescribed period,
the application shall be regarded as abandoned, unless it is shown to
the satisfaction of the Director that the delay in submitting the fee
and oath or declaration was unavoidable or unintentional."). See 35
U.S.C. 111(a)(3) and (a)(4) (AIA changes emphasized). Some previous
legislative proposals (e.g., S. 515 and H.R. 1260 in the 111th
Congress) would have changed this provision to delete any reference to
an oath (or declaration) such that the Office could not set the period
(and conditions) under which the inventor's oath or declaration could
be submitted after the filing date of an application. However, the AIA
maintains the existing provisions of 35 U.S.C. 111(a)(3) and (a)(4),
adding only "or declaration" after every instance. Thus, the Office
retains the authority to set the period (and conditions) under which
the inventor's oath or declaration must be submitted.
It should also be noted that 35 U.S.C 115(f) does not require the
Office to permit applicants to postpone submission of the inventor's
oath or declaration until allowance. The Office previously proposed
under existing 35 U.S.C. 111 and 115 to permit applicants to delay
submission of an oath or declaration until the expiration of a time
period set in the "Notice of Allowability." See Changes to Implement
the Patent Business Goals, 63 FR 53497, 53503-06 (Oct. 5, 1998). The
Office, however, did not proceed with that proposal. See Changes to
Implement the Patent Business Goals, 64 FR 53771, 53773-74 (Oct. 4,
1999). Thus, the only effect of 35 U.S.C. 115(f) is to preclude the
Office from issuing a notice of allowance until each required
inventor's oath or declaration has been filed.
Comment 7: Two comments expressed concern about the fees to be
charged for the late submission of an oath or declaration. One comment
stated that 35 U.S.C. 111(a) and 371 do not require a surcharge for
submitting the oath or declaration after the filing date. One comment
stated that the preliminary proposed patent fee schedule published
February 7, 2012, indicated that the $130 surcharge would be increased
to $140 and that no actual unit cost was associated with this fee
because there was no specific activity supporting it other than
collecting and depositing the fee. The comment stated that this
contradicts the Office's statement in the notice of proposed rulemaking
that applications filed without an oath or declaration require special
processing. The comment also questioned the proposed fee of $3,000 for
filing the oath or declaration up to the notice of allowance on the
same basis that there is no specific activity supporting the fee other
than collecting and depositing the fee.
Response: The notice of proposed rulemaking did not propose, and
this final rule does not adopt, any change to the late filing surcharge
under § 1.16(f). As discussed previously, 35 U.S.C. 111(a)(3)
provides that: "The fee and oath or declaration may be submitted after
the specification and any required drawing are submitted, within such
period and under such conditions, including the payment of a surcharge,
as may be prescribed by the Director." While the Office is not
"required" to charge this surcharge, the Office is permitted to
require it. The surcharge is due to the additional processing costs
incurred when the inventor's oath or declaration is submitted after
filing of the application and the initial processing of the
application. The fact that the cost of the additional processing of the
later-submitted oath or declaration is not tracked separately from
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 151 |
other pre-examination costs does not negate the existence of this cost.
In addition, under the changes in this final rule the Office will incur
additional costs due to the need to track submission of the inventor's
oath or declaration up to allowability of the application.
The Office published materials on its Internet Web site in February
2012, associated with a rulemaking to set and adjust patent fees using
the authority provided in section 10 of the AIA, which proposed a
$3,000 fee to postpone submission of the inventor's oath or declaration
until the application is in condition for allowance. The final rule to
set and adjust patent fees under section 10 of the AIA will not include
this proposal.
Comment 8: One comment suggested that examiners should be properly
compensated for any additional work required by delays in establishing
the proper inventorship.
Response: The Office will require that the inventorship be named in
an application data sheet (or the inventor's oath or declaration) prior
to examination. Thus, the inventorship will be established before an
application is examined and examiners should not experience any delays
with respect to the establishment of the proper inventorship.
Additionally, compensation of examiners is not a subject of this
rulemaking.
2. Averments
Comment 9: A number of comments suggested that the Office should
not require the inventor's oath or declaration to contain any
statements other than the statements required by 35 U.S.C. 115(b).
Response: 35 U.S.C. 115(c) provides that the Office may specify
additional information relating to the inventor and to the invention
that is required to be included in an oath or declaration under 35
U.S.C. 115(a). In response to comments, however, the Office is
requiring that an oath or declaration contain only the averments
required by 35 U.S.C. 115(b), if the inventor information is provided
in an application data sheet. The Office has not retained regulatory
averments to be made in the inventor's oath or declaration, such as
acknowledgement of the duty of disclosure under § 1.56. However, a
person may not execute an oath or declaration unless that person has
reviewed and understands the contents of the application, including the
claims, and is aware of the duty to disclose to the Office all
information that is material to patentability. See § 1.63(c).
Comment 10: One comment stated that the averment in proposed
§ 1.63(a)(5) that the application "was made or authorized to be made by
the inventor" should not be required in an oath or declaration that is
signed by the assignee.
Response: 35 U.S.C. 115(b)(1) requires that an oath or declaration
contain a statement that the application was made or was authorized to
be made by the affiant or declarant irrespective of whether the
application was filed by the assignee. Therefore, § 1.63(a)(4)
requires the oath or declaration to state that the application was made
or was authorized to be made by the person executing the oath or
declaration.
3. Inventors Named
Comment 11: A number of comments suggested that the Office should
not require the inventor's oath or declaration to provide the names of
all of the inventors, which could be provided together in another
document (such as an application data sheet).
Response: An inventor executing an oath or declaration need only
identify himself or herself as an inventor, provided an application
data sheet is submitted to identify the complete inventive entity.
Comment 12: One comment stated that proposed § 1.63(d)(2)
should be deleted since the naming of the inventive entity should be
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 152 |
established by filing an application data sheet in a continuing
application and thus there would be no need to request removal of
inventors.
Response: A request to remove one or more inventors is retained for
those situations where an application data sheet is not supplied
concurrently with or before submission of the inventor's oath or
declaration.
4. Copies in Continuing Applications
Comment 13: One comment suggested that the Office scan the inventor
statement or assignment into the Office's image file wrapper (IFW)
system so that a copy of any previously filed statement would not be
required in a later-filed application claiming benefit.
Response: Consistent with pre-existing practice and the notice of
proposed rulemaking, the Office is requiring a copy of the oath or
declaration or an assignment serving as the oath or declaration in
continuing applications so that the Office can determine whether an
oath or declaration has been executed by or with respect to each
inventor in a continuing application.
Comment 14: One comment questioned whether a combination assignment
and oath or declaration in a parent application would need to be
recorded against a continuation or a divisional application when also
used in the continuation or divisional application. The comment also
questioned whether the assignee listed on such an assignment would
still need to be the owner when submitting the oath or declaration in
the continuation or divisional application.
Response: Section 1.63(d)(1) provides that a newly executed oath or
declaration under § 1.63 is not required for a continuing
application where a copy of the oath or declaration from the earlier-
filed application is provided. Where the oath or declaration is set
forth in an assignment document that was recorded against the parent
application, there is no requirement that the copy be again recorded
against the continuing application. 35 U.S.C. 115(g)(1) provides that
the requirement under 35 U.S.C. 115 for an oath or declaration shall
not apply to an individual named as the inventor or a joint inventor in
an application that claims benefit under 35 U.S.C. 120, 121, or 365(c)
of an earlier-filed application, if: (1) An oath or declaration meeting
the requirements of 35 U.S.C. 115(a) was executed by the individual and
was filed in connection with the earlier-filed application; (2) a
substitute statement meeting the requirements of 35 U.S.C. 115(d) was
filed in connection with the earlier-filed application with respect to
the individual; or (3) an assignment meeting the requirements of 35
U.S.C. 115(e) was executed with respect to the earlier-filed
application by the individual and was recorded in connection with the
earlier-filed application.
Comment 15: One comment asserted an inconsistency between proposed
§ 1.63(d)(1)(iii) which requires a new oath or declaration from
those inventors being added and § 1.63(d)(2), which permits
deletion by a separate paper without a new oath or declaration. The
comment indicated that it is not clear how the statements in the oath
or declaration filed in the parent application can remain true where a
copy of the declaration from the parent is filed along with
declarations executed by only the newly added inventors. Other comments
noted that proposed §§ 1.63(a)(4) and (a)(6) would prevent the
use of a copy of an oath or declaration in continuation-in-part
applications and possibly continuation and divisional applications.
Response: Section 1.63(d), as adopted in this final rule, provides
for use of a copy of the inventor's oath or declaration from a prior-
filed application in a continuing application, including a
continuation-in-part application. 35 U.S.C. 115(g) does not require a
new inventor's oath or declaration if: (1) An oath or declaration
meeting the requirements of 35 U.S.C. 115(a) was executed by the
individual and was filed in connection with the earlier-filed
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 153 |
application; (2) a substitute statement meeting the requirements of 35
U.S.C. 115(d) was filed in connection with the earlier-filed
application with respect to the individual; or (3) an
assignment meeting the requirements of 35 U.S.C. 115(e) was executed
with respect to the earlier-filed application by the individual and was
recorded in connection with the earlier-filed application. Thus, an
additional inventor's oath or declaration would be necessary in a
continuing application only for an inventor for whom an oath or
declaration was not submitted in the prior-filed application. Section
1.63(d), as adopted in this final rule, does not include the proposed
requirement that the statements in the copy of the inventor's oath or
declaration from a prior-filed application also be applicable to the
continuing application.
5. Supplemental Oath or Declaration
Comment 16: One comment asserted that once a one-time statement
from an inventor has been made in satisfaction of 35 U.S.C. 115, 35
U.S.C. 115(h)(2) precludes the Office from requiring any supplemental
oath or declaration. Several comments objected to proposed § 1.67
and asserted that the Office was proposing to merely retain
requirements for supplemental oaths, notwithstanding the statutory
prohibition against them.
Response: Section 1.67(c) provides that the Office will not require
a person who has executed an oath or declaration in compliance with 35
U.S.C. 115 and § 1.63 or § 1.162 to provide an additional oath
or declaration. 35 U.S.C. 115(h)(2) precludes the Office from requiring
a supplemental oath or declaration only if the initial oath or
declaration complied with 35 U.S.C. 115 and § 1.63 or § 1.162.
Comment 17: One comment expressed concern about the elimination of
supplemental oaths (proposed § 1.67(b)), as they give the inventor
the opportunity to object to the assignee's interpretation of the
invention which may be broader than the inventor's understanding of the
description. The comment noted the existing requirement that reissue
oaths or declarations be signed by the inventors when one or more
claims are being broadened, and suggested that inventors be permitted
to request "post grant review" to clarify new matter issues that may
arise from differences in interpretation.
Response: 35 U.S.C. 115(h)(1) and § 1.67 provide that an
applicant may submit an inventor's oath or declaration to correct any
deficiencies or inaccuracies present in an earlier-filed inventor's
oath or declaration. 35 U.S.C. 115(h)(2) provides that supplemental
statements are not required where the oath or declaration meets 35
U.S.C. 115(a) or the assignment meets the requirements of 35 U.S.C.
115(e). Inventors still must execute an oath or declaration except
under the permitted circumstances. Thus, inventors would still have an
opportunity to review the application in connection with the execution
of the oath or declaration and raise any concerns regarding breadth of
the claimed invention with the assignee. Moreover, an inventor may have
access to the application file and can follow the prosecution. 35
U.S.C. 321(a) provides that a person who is not the owner may request
post grant review of a patent.
6. Effective Date
Comment 18: One comment questioned whether the Office would accept
oaths or declarations (1) In an application filed prior to September
16, 2012, in which the oath or declaration is filed on or after
September 16, 2012; and (2) in an application filed on or after
September 16, 2012, where the oath or declaration was executed prior to
September 16, 2012. One comment suggested that the Office clarify
§ 1.63 to address applications that bridge the effective date of the rule
to make clear that a new declaration will not be required in a
continuing application where the prior declaration was compliant with
the new required statutory statements. A few comments recommended that
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 154 |
oaths or declarations filed before September 16, 2012, be grandfathered
in and accepted in continuing applications filed on or after September
16, 2012, even though the oaths or declarations contain the language in
former 35 U.S.C. 115 and not the language in new 35 U.S.C. 115(b).
Response: The changes to 35 U.S.C. 115 in the AIA apply to any
application filed on or after September 16, 2012. Accordingly, the date
of execution of the oath or declaration is not relevant, particularly
as the Office does not check such dates of execution. MPEP § 602.05.
For applications filed prior to September 16, 2012, any oath or
declaration filed before, on, or after September 16, 2012, must comply
with the oath and declaration rules in effect prior to September 16,
2012. Any oath or declaration submitted in an application filed on or
after September 16, 2012, (regardless of the date of execution of the
oath or declaration) must meet the requirements of 35 U.S.C. 115 as
amended by the AIA.
With respect to continuing applications, 35 U.S.C. 115(g)(1)(A)
provides an exception to a newly executed oath or declaration only
where the oath or declaration in the earlier-filed application meets
the requirements of amended 35 U.S.C. 115(a) which must include the
required statements in 35 U.S.C. 115(b). Accordingly, a copy of an oath
or declaration from a prior application filed before September 16,
2012, must meet the requirements of 35 U.S.C. 115 as amended by the
AIA.
Nevertheless, in view of the changes to permit applicants to
postpone the submission of the inventor's oath or declaration until the
application is otherwise in condition for allowance, the Office will no
longer review an oath or declaration in an application under 35 U.S.C.
111(a) for compliance with § 1.63 (or a substitute statement for
compliance with § 1.64) during the examination process. The Office
will review applications to determine whether the application includes
an oath or declaration executed by or with respect to each inventor
when the application is in condition for allowance.
7. Miscellaneous
Comment 19: One comment noted that 35 U.S.C. 115 requires "the
name of the inventor," whereas proposed § 1.63(a)(2) requires
identification by "his or her full name without any abbreviation
(except for a middle initial)" and thus places further restrictions on
what would otherwise be an uncomplicated requirement. Another comment
stated that the rules should permit an inventor to abbreviate his or
her first name if he or she is known by his or her middle name.
Response: The Office agrees that the phrase "his or her full name
without any abbreviation (except for a middle initial)" is more
complicated than necessary. The requirement for identification of the
name of the inventor in the rules of practice (e.g., § 1.63(a)(1))
will be for the legal name of the inventor.
Comment 20: One comment suggested eliminating the requirement for
the residence in that: (1) It is still unclear what is intended by
residence (e.g., city, state, province, prefecture, etc.); (2) many
inventors would prefer to keep their residence private, especially
where the mailing address is the place of employment; and (3) it
requires assignees to violate their domestic privacy laws in some
countries (e.g., United Kingdom) by requiring inventors to make
residence information publicly available.
Response: The comment appears to confuse the separate requirements
for residence and mailing address. The residence, as noted in MPEP
§ 605.02, is a city and either a state or foreign country, while a
mailing address, as noted in MPEP § 605.03, is where one customarily
receives mail, such as one's home or business address. Additionally, a
post office box may be used as the mailing address. The Office reviews
residence information to ensure that a residence is provided, but the
Office does not review the manner in which the residence is stated. Thus,
applicants should not have concerns about distinctions between province
and prefecture.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 155 |
Comment 21: One comment requested revising the title to be
"Inventor's oath or declaration" to distinguish the declaration
requirements in § 1.63 from who may apply for a patent, which
should be addressed by § 1.41.
Response: The Office agrees that the title of § 1.63 should
read "Inventor's oath or declaration." The title has been revised as
suggested.
Comment 22: One comment stated that proposed § 1.63(c)(2) needs
to be corrected for grammatical clarity since it is unclear how a
reference itself would constitute an assignment.
Response: Section 1.63(e)(2) contains the language of proposed
§ 1.63(c)(2). The provision merely explains that the phrase "oath
or declaration" under § 1.63 as referred to in the rules covers a
combination assignment and oath or declaration document.
Comment 23: One comment suggested that since a "wet" signature is
required for a declaration, the practitioner should be allowed to
obtain a "wet" signature for the practitioner's file and then submit
an S-signature by the practitioner with a notice to the Office that a
"wet" signature is on file with this practitioner and will be
supplied to the Office if requested.
Response: An oath or declaration may be signed either with a wet
(handwritten, per § 1.4(d)(1)) signature or an S-signature (e.g., a
printed name inserted between forward slashes, per § 1.4(d)(2)),
regardless of whether the oath or declaration is filed with the Office
in paper, facsimile transmitted, or filed via the Office's Electronic
Filing System (EFS-Web). An S-signature is any signature not covered by
§ 1.4(d)(1), and an S-signature must be personally inserted by the
signer per § 1.4(d)(2)(i). The practice suggested in the comment
would not have the signer personally insert the S-signature. Thus, it
would not be a proper signature by the inventor.
Comment 24: One comment suggested retaining in § 1.63 the
statement that no minimum age is required to sign an oath or
declaration.
Response: Section 1.63(c) continues to recite that there is no
minimum age for a person to be qualified to execute an oath or
declaration.
Comment 25: One comment requested information as to whether the
Office will have updated forms to reflect the proposed rule changes at
the same time the rules take effect.
Response: The Office will have revised forms available prior to the
effective date of this final rule.
C. Substitute Statements
Comment 26: Several comments questioned the need for proof of facts
regarding the inventor who is not executing the inventor's oath or
declaration when filing a substitute statement where an assignee, party
to whom an inventor is under an obligation to assign or a party who
otherwise shows sufficient proprietary interest in the matter files the
application.
Response: In response to the comments, the Office is discontinuing
the practice of routinely requiring proof of facts when an oath or
declaration is not executed by each inventor. Section 1.64 provides
that an applicant under §§ 1.43, 1.45 or 1.46 may execute a
substitute statement with identifying information regarding (1) the
inventor and the person executing the statement, and (2) the particular
permitted circumstances involved, e.g., the inventor cannot be reached
or has refused to execute the oath or declaration. Furthermore, a
person may not execute a substitute statement unless that person has
reviewed and understands the contents of the application and is aware
of the duty to disclose to the Office all information that is material
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 156 |
to patentability. Proof of the circumstances (e.g., attempts to contact
the inventor) is no longer required.
Comment 27: One comment expressed concern about the effect of 35
U.S.C. 115(d)(2)(B). The comment identified the situation where one
joint inventor refuses to execute the oath or declaration and since
none of the inventors are under an obligation to assign, the other
executing inventors may not be able to provide a substitute statement
on behalf of the nonsigning inventor.
Response: 35 U.S.C. 116(b) provides that 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 and the omitted inventor. Section 1.45,
as amended in this final rule, permits the other joint inventor or
inventors to make the application for patent as the applicant on behalf
of themselves and the omitted inventor if a joint inventor refuses to
join in an application for patent or cannot be found or reached after
diligent effort. 35 U.S.C. 115(d)(1) provides that the applicant for
patent may provide a substitute statement in lieu of execution of an
oath or declaration by an inventor under 35 U.S.C. 115(a) under such
additional circumstances as the Director specifies by regulation. Thus,
§ 1.64 as adopted in this final rule permits another joint inventor
to execute a substitute statement in lieu of execution of an oath or
declaration by the omitted inventor if a joint inventor refuses to join
in an application for patent (regardless of whether there is an
obligation to assign) or cannot be found or reached after diligent
effort.
Comment 28: One comment noted proposed § 1.47 and requested
that the assignee be allowed to execute the oath or declaration on
behalf of the assigning inventor in general, and not only in
circumstances where the inventor has refused or cannot be found or
reached to execute the oath or declaration.
Response: 35 U.S.C. 115(a) explicitly requires execution of an
inventor's oath or declaration by each inventor except as otherwise
provided in 35 U.S.C. 115. The situations in which the applicant for
patent may submit a substitute statement in lieu of an oath or
declaration with respect to an inventor are set forth in 35 U.S.C.
115(d)(2).
D. Combined Declaration and Assignment
1. Generally
Comment 29: One comment recognized that the AIA provision for dual-
purpose documents (assignment and oath or declaration) is already
possible and asserted that the AIA prohibits the Office from making
rules that impede the use of dual-purpose documents, such as requiring
the recordation of the document before submission in the application as
required by proposed § 1.63(c)(1)(ii). The comment asserted that
the recordation requirement is neither beneficial to the public nor
beneficial to assignees. The comment noted that some assignees may save
up and then record multiple assignments at once to save on recording
fees. In the absence of an explanation as to why flexibility is to be
taken away, the comment suggested that the proposed requirement for
recordation should not be adopted and the assignment should be made of
record in the application file.
A few comments, however, opposed submitting a copy of an assignment
containing the statements required of an oath or declaration in the
application file and noted that Congress did not
require an assignment with such oath or declaration statements to be
included in the application file and did not envision that the
statement would be "examined" by a patent examiner. These comments
stated that 35 U.S.C. 115(e) permits the assignment to simply be
recorded in the assignment records without submitting a copy in the
application file.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 157 |
Response: 35 U.S.C. 115(e) provides for making the statements
required under 35 U.S.C. 115(b) and (c) in an "assignment of record,"
and 35 U.S.C. 115(f) provides that a notice of allowance under 35
U.S.C. 151 may be provided to an applicant only if the applicant has
filed each required oath or declaration under 35 U.S.C. 115(a), or has
filed a substitute statement under 35 U.S.C. 115(d), or recorded an
assignment meeting the requirements of 35 U.S.C. 115(e). 35 U.S.C.
115(e) and (f) (emphasis added). Thus, the recording requirement of
§ 1.63(e)(1)(ii) is required by 35 U.S.C. 115, which envisions that
the assignment containing the statements required of an oath or
declaration be "recorded." 35 U.S.C. 111(a)(2)(C) also requires that
an application contain an oath or declaration. If an applicant files in
paper an assignment-statement for recordation together with a patent
application, the Office will scan a copy of the assignment into the
Office IFW of the application and forward the submission to Assignment
Recordation Branch provided that there is a conspicuous indication of
an intent to utilize the assignment as the required oath or declaration
under § 1.63.
Comment 30: One comment stated that proposed § 1.63(a) should
be amended to clarify that an assignment that includes the statements
required by 35 U.S.C. 115(b) and (c) may be filed "in lieu of filing
such statements separately" pursuant to 35 U.S.C. 115(e).
Response: Section 1.63(e)(1) implements that portion of 35 U.S.C.
115(e) relating to the "in lieu of" language by its recitation that
an assignment may also serve as the oath or declaration.
Comment 31: With respect to the combined assignment and oath or
declaration document, one comment questioned the result if one portion
is determined to be void or voidable. The comment specifically
questioned whether the declaration portion would be void or invalid
where the assignment portion is found to be void or invalid. The
comment stated that the Office should clearly indicate that the
legality (or invalidity) of one part will not impact the other part.
Response: Where there is an error in the oath or declaration
portion, such as in bibliographic information, the rest of the oath or
declaration is still effective and only that error need be corrected.
See § 1.67(a). In other instances, such as a failure to provide a
statutorily required averment, the oath or declaration must be
resubmitted. Where the assignment portion of a combined assignment and
oath or declaration document is found to be invalid, the combined
assignment and oath or declaration document would remain effective for
the declaration portion provided that the assignment contains the
statements required of an oath or declaration.
2. Recordation of Assignments
Comment 32: One comment opposed the proposed addition to a
recordation cover sheet of a check-box indicating that the assignment
is to be used in an application to comply with § 1.63. The comment
asserted that the person filing the assignment is likely not a
registered practitioner and should not have the burden of arriving at a
legal conclusion as to whether the document is to serve as a
declaration. The comment further asserted that the application and
assignment are frequently separately filed electronically by different
individuals, and requested that the rule should be tailored for non-
electronic filing of the assignment containing the inventor statement.
Another comment suggested that the Office should update the Office's
Patent Application Information Retrieval (PAIR) system to directly link
recorded assignments to the application as recorded assignments are now
accessible only by physically traveling to the Office, at substantial
burden and cost on the requester.
Response: Section 3.31 requires that where an applicant has
included the statements required by 35 U.S.C. 115(b) and (c) in an
assignment, the applicant indicate as much to the Office via a check-
box on the assignment recordation cover sheet. Thus, the Office will
know both to record the assignment in the assignment database and to
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 158 |
place a copy of the assignment in its related application file, so that
applicants will not be required to submit an oath or declaration in the
application.
There are three ways to submit an assignment-statement document:
(1) In paper (including facsimile transmission); (2) through the
Electronic Patent Assignment System (EPAS); and (3) via EFS-Web. For
paper submissions, the Office frequently receives in the same envelope
a patent application, an assignment to be recorded in connection with
that application, the Assignment Recordation Cover Sheet (PTO-1595) and
the recordation fee. In such circumstances, the Office would simply
forward the assignment document and PTO-1595 to the Assignment
Recordation Branch for recording. As discussed previously, if an
applicant indicates that an assignment submitted for recording also
contains statements required of an oath or declaration, the Office will
scan a copy of the assignment into the Office IFW of the application
and forward the submission to Assignment Recordation Branch.
The Office notes the concern with the ability of a person
submitting the assignment-statement document for recordation being able
to make a legal conclusion as to the ability of an assignment to serve
as a combination assignment and oath or declaration document and so
indicate on the recordation cover sheet. The failure to check the box
to identify the submission as a combination assignment and oath or
declaration document, however, would not prevent the applicant from
submitting a copy of the assignment-statement in the application to
serve as the oath or declaration. More importantly, it is not necessary
for a person to make a legal conclusion as to the ability of an
assignment to serve as a combination assignment and oath or declaration
document and so indicate on the recordation cover sheet. The person
would only need to know the purpose for submission of the assignment.
E. Power of Attorney
Comment 33: One comment suggested that in regard to an application
filed by an assignee-applicant, the Office should permit only a power
of attorney from the assignee-applicant and not from the inventors. One
comment suggested that the reference in § 1.33(f) to § 3.71 (as
well as § 1.31) is unnecessary in that an assignee may easily apply
for a patent and thus be the applicant referred to in § 1.31.
Response: Section 1.33(b)(3) provides that a power of attorney can
be signed by the applicant. Section 1.42(b) provides that if a person
is applying for a patent as provided in § 1.46, the person applying
for a patent under § 1.46 (and not the inventor) is the applicant.
Accordingly, an assignee or obligated assignee who has filed an
application may supply an effective power of attorney without the need
to establish the right to take action under § 3.71. For example, an
assignee who files an application can appoint a power of attorney,
provided that the party granting the power is the same party who filed
the application. Persons who otherwise show sufficient proprietary
interest in the matter may supply a power of attorney along with a petition
under § 1.46(b)(2), which power would be effective once the petition is
granted. If an assignee is, an obligated assignee, or person who otherwise
show sufficient proprietary interest in the matter is applying for a patent
as provided in § 1.46, the inventor is not the applicant and the Office
would not accept a power of attorney from the inventor.
Comment 34: One comment suggested that where the original
declaration provides a power of attorney by the inventors, the power of
attorney should automatically "transfer" as being a power of attorney
by the assignee where the inventors have or are obligated to assign
their portion to the assignee. The comment also stated that the power
of attorney should continue in an application when ownership is
transferred. Where a "new" assignee/applicant does not wish the
original attorney to have power of attorney, the "new" assignee/
applicant should then prepare and file the appropriate revocation and
new power of attorney and correspondence forms.
Response: Under this final rule, an assignee may file an
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 159 |
application on its own behalf as the applicant and should provide the
initial power of attorney. The transfer of ownership of an application
is external to the Office and would not affect any existing power of
attorney in the application file. See § 1.36(a). It is the Office's
experience that where ownership of an application is changed, the new
assignee takes over the prosecution and provides a new power of
attorney.
Comment 35: Two comments stated that, with respect to proposed
§ 1.32(d), if the power of attorney in the earlier application is
from an assignee and a continuing application is filed that adds new
inventors, a new power of attorney should not be required where the
newly added inventors have also assigned, or are under an obligation to
assign, to the same assignee and the assignment is recorded at the
Office.
Response: Section 1.32(d) provides that a power of attorney will
have effect in a continuing application if a copy of the power is
supplied in the continuing application, unless the power of attorney
was granted by the inventors and the continuing application names an
inventor who was not named in the prior application. Therefore, if the
power of attorney in the earlier application is from the assignee (as
discussed in the comment), a new power of attorney is not required.
Comment 36: One comment stated that proposed § 1.32(d) should
be broadened to include powers of attorney filed in provisional
applications so that a power of attorney filed in a provisional
application would have effect in a nonprovisional application that
claims the benefit of the provisional application under 35 U.S.C.
119(e) if submitted in the nonprovisional application.
Response: It is the Office's experience that powers of attorney are
not usually supplied in provisional applications, particularly as there
is no prosecution and they become abandoned after a year as a matter of
law. Accordingly, there is little need to provide for the carryover of
powers of attorney from a provisional application to a nonprovisional
application.
Comment 37: One comment asserted that the power of attorney rules
are "form over substance" and should be relaxed. The Office should
leave it to the attorneys and law firms to obtain the requisite
paperwork granting them power of attorney, which is to be retained in
the attorney's/law firm's record and if an issue arises that raises the
question of whether or not the attorney acted appropriately, the Office
should request a copy of the requisite power of attorney form and act
accordingly.
Response: Filing of a power of attorney in an application file is
not mandatory in that an attorney can act in a representative capacity
pursuant to § 1.34, although there are some limitations, such as
signing a terminal disclaimer, change of correspondence address, or an
express abandonment without filing a continuation, MPEP § 402.
Given the significant consequences to such actions, the Office believes
that such actions should only be undertaken pursuant to a power of
attorney that is of record in the application file.
Comment 38: One comment suggested that the Office should take the
position that when an applicant-assignee executes a power of attorney,
the attorney of record automatically has the right to act on behalf of
the applicant-assignee, including executing a statement under §
3.73(b). A contrary comment stated that proposed § 3.73(b)(2)(iii)
should not be implemented since it gives significantly more authority
to patent practitioners than an assignee may otherwise explicitly
authorize. The comment stated that only individuals who are authorized
to act on behalf of the assignee should be able to sign a statement
under § 3.73(b).
Response: The Office disagrees with the position that the Office
should not treat a patent practitioner of record as being authorized to
act on behalf of the assignee. Section 3.73(d), as adopted in this
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 160 |
final rule, permits a patent practitioner of record to sign a statement
under § 3.73(c) in patent matters. A party to a proceeding before
the Office is generally bound by the actions (or omissions) of his or
her representative. See Huston v. Ladner, 973 F.2d 1564 (Fed. Cir.
1992). There does not appear to be any reason to make an exception to
this general rule for statements under § 3.73(c). If a particular
assignee has appointed a practitioner via a power of attorney document
but does not want the practitioner to be able to sign a § 3.73(c)
statement, then such assignee can inform the practitioner of such a
limit on his or her authority. That, however, is a matter between the
assignee and its chosen representative, and the Office is not the forum
for resolving disputes between an applicant and his or her
representative. See Ray v. Lehman, 55 F.3d 606 (Fed. Cir. 1995).
Comment 39: One comment suggested that powers of attorney and
statements under § 3.73(b) filed before September 16, 2012 in
patent applications, including provisional applications, should be
grandfathered in and permitted to be filed in pending and continuing
applications.
Response: The applicability date section of the final rule
identifies which rules apply only to patent applications filed on or
after September 16, 2012. Section 3.73 applies only to patent
applications filed on or after September 16, 2012, but it applies to
any patent application filed on or after September 16, 2012, even of
that application claims the benefit of a provisional or nonprovisional
application filed prior to September 16, 2012.
F. PCT
Comment 40: One comment stated that the PCT rules should no longer
require a statement that the inventor is the applicant for the U.S.
only. A different carve out in PCT for U.S. law should be used for what
remains unique to U.S. law, such as where the inventor is under a
continuous duty to disclose known material information.
Response: The rules governing applicants for international
applications (§§ 1.421, 1.422, and 1.424) have been amended
consistent with the AIA to no longer require that an inventor be an
applicant in the United States.
Comment 41: One comment stated that it is unclear whether proposed
§ 1.48(k) only applies if an executed declaration submitted under
PCT Rule 4.17(iv) has been filed. The comment suggested adding a second
sentence to reference § 1.41(a)(4) for correction of
inventorship of an international application entering the national
stage under 35 U.S.C. 371 in which no oath or declaration has been
filed.
Response: In response to the comments, the Office has revised
§ 1.48 in this final rule. Section 1.48(a) applies to nonprovisional
applications, including U.S. national stage applications in which the
basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid. Under
§ 1.48(a), the requirements for correcting inventorship have been
eased, requiring only an application data sheet setting forth the
inventive entity, a processing fee, and an oath or declaration as
required by § 1.63 (or substitute statement in compliance with
§ 1.64) for any actual inventor who has not executed such an oath
or declaration. Furthermore, recognizing that inventorship sometimes
changes in a national stage application from that originally indicated
in the international phase, § 1.41(e) allows applicants to set
inventorship in a U.S. national stage application without having to
request correction under § 1.48(a) by simply including with the
initial submission under 35 U.S.C. 371 an application data sheet in
accordance with § 1.76 setting forth the correct inventive entity.
Comment 42: One comment questioned whether an application data
sheet filed with a national stage entry, after the PCT filing date, is
considered a supplemental application data sheet, or whether it was
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 161 |
intended that the document be called an application data sheet, in
which case § 1.76(a) should be amended to recite "or after payment
of the basic national fee for a national stage entry under 35 U.S.C.
371."
Response: The distinction between "application data sheet" and
"supplemental application data sheet" has been a source of confusion
for applicants. Accordingly, the Office revised § 1.76 to eliminate
"supplemental application data sheet" and simply refer to
"application data sheet." In this regard, § 1.76(c) in this final
rule, now indicates that information in a previously submitted
application data sheet, or the inventor's oath or declaration under
§ 1.63, § 1.64, or § 1.67, or otherwise of record, may be
corrected or updated until payment of the issue fee by a new
application data sheet providing corrected or updated information,
except that inventorship changes must comply with the requirements of
§ 1.48, foreign priority and domestic benefit information changes
must comply with §§ 1.55 and 1.78, and correspondence address
changes are governed by § 1.33(a).
G. Reissue Applications
Comment 43: One comment suggested amending the title of § 1.172
("Applicants") to include a reference to "inventor" because the
term "inventor" is no longer synonymous with "applicant." One
comment suggested revising the parenthetical in § 1.172(b)(2)(ii)
by replacing the concept of the assignee executing the oath or
declaration with the assignee providing a substitute statement as the
applicant in the patent being reissued. One comment suggested that
§§ 1.172 and 1.175 be revised to provide for filing a
substitute statement, rather than an oath or declaration, in the
permitted circumstances.
Response: The use of "applicant" in the title of § 1.172 is a
generic term that will cover assignees and inventors when either are
the applicant. In this final rule, § 1.172 has been revised to no
longer address execution of the oath or declaration. Section 1.175(c)
provides for filing a substitute statement in reissue applications by
its reference to § 1.64.
Comment 44: One comment suggested eliminating the requirement for
identifying whether a claim is broadened under § 1.175(b). The
comment asserted that the requirement is a complex legal issue in that
cancellation of one claim may constitute broadening of another claim,
and claim scope may be narrowed even though claims are not amended, and
such legal determination should be left to the examiner and not to
applicant as part of an inventor's declaration.
Response: 35 U.S.C. 251(d) places a time limit on the filing of a
broadening reissue application. Accordingly, applicants must make a
determination as to whether a reissue application is being filed with a
broadened claim. Applicants, in filing a reissue application, already
have a good indication as to whether the error that renders the patent
wholly or partly inoperative or invalid is one that is driven by a need
to broaden or narrow the claims. Thus, focusing applicants' attention
on whether a claim is being broadened should not be burdensome on
applicants, and is beneficial to examination of the reissue
application.
Comment 45: One comment stated that it is unclear why at least one
error being relied upon as the basis for reissue must be identified in
the declaration, and suggested that such an error could be identified
by the attorney of record. Two comments questioned the requirement for
a supplemental oath or declaration in a reissue application where all
errors previously identified are no longer relied upon, particularly in
view of the elimination of the "without deceptive intent" language
from 35 U.S.C. 251.
Response: The requirement to initially identify the error being
corrected in the oath or declaration has been retained as the Office
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 162 |
believes that the error being used to support jurisdiction for a
reissue should be acknowledged by the inventor. In view of 35 U.S.C.
115(h)(2), the Office will permit the practitioner to identify a
replacement error where the first error is no longer being corrected.
The retention of a requirement, albeit by practitioner statement rather
than by supplemental oath or declaration, to identify an error being
corrected (where the initially identified error being corrected is no
longer being corrected) is deemed necessary so that the file record
clearly establishes jurisdiction for the reissue. It should be noted,
however, that where the original oath or declaration does not comply
with § 1.175, the Office will require a compliant oath or
declaration, and a practitioner statement will not be sufficient.
H. Application Data Sheet (§ 1.76)
1. Domestic Benefit and Foreign Priority Claims
Comment 46: One comment suggested that the Office construe an
identification of 35 U.S.C. 120 benefit information in an application
data sheet as an instruction to amend the application to include that
information if it is not already present, or to replace such
information in the specification if it is inconsistent.
Response: An application data sheet is part of the application. See
§ 1.76(a).
Comment 47: One comment questioned whether applications filed
before September 16, 2012, would be grandfathered in with regard to how
a claim for foreign priority or domestic benefit must be made. The
comment requested clarification as to whether the requirement that all
priority and benefit claims be in an application data sheet or
supplemental application data sheet depends on the filing date of the
application or on the date of filing of the foreign priority or
domestic benefit claim.
Response: Applications filed on or after September 16, 2012, must
comply with §§ 1.55 or 1.78 as amended by this final rule.
Applications filed before September 16, 2012, need not comply with
§§ 1.55 or 1.78 as amended by this final rule (but would need
to comply with §§ 1.55 or 1.78 as previously in effect).
Comment 48: One comment questioned what information the Office
would enter into the application file record if, on the same day (e.g.,
application filing date), a priority claim is made both in the
application data sheet and the first paragraph of the specification,
but the information between the two varies, e.g., one has a
typographical error in the priority date or priority document number.
Response: For applications filed on or after September 16, 2012, a
foreign priority claim under § 1.55 or domestic benefit claim under
§ 1.78 made in the first paragraph of a specification would not be
an effective priority or benefit claim and the Office would process the
priority claim based on the information in the application data sheet.
2. Form Requirements
Comment 49: One comment suggested that the application data sheet
be treated as authoritative in all cases, even where there are
inconsistencies between the application data sheet and the oath or
declaration, and § 1.76(d) deleted so that the most recent
application data sheet would always control.
Response: Section 1.76(d)(1)(ii) provides that the most recent
submission of an application data sheet will govern in most instances,
except that the naming of the inventorship is governed by § 1.41
and changes to inventorship or the names of the inventors is governed
by § 1.48. Section 1.76(d)(2) provides that the application data
sheet will govern when the inconsistent information is supplied at the
same time by a designation of correspondence address or the inventor's
oath or declaration.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 163 |
Comment 50: One comment believed that consideration of the
application data sheet as part of the application causes a practitioner
to engage in misconduct under § 10.23. The comment asserted that
the Office stated that the application data sheet must not be signed by
an inventor and that the application data sheet is generally not
reviewed by an inventor executing the declaration. Thus, a practitioner
submitting an application data sheet with an application, with an
already executed declaration, would have altered the application in
violation of § 10.23(c)(11), which states that conduct which
constitutes a violation includes "filing or causing to be filed an
application containing any material alteration made in the application
papers after the signing of the accompanying oath or declaration
without identifying the alteration at the time of filing the
application papers."
Response: In response to the comment, § 1.52(c) now provides
that an alteration of the application papers may be made after the
signing of the inventor's oath or declaration provided the statements
made in the oath or declaration remain applicable. Thus, an application
data sheet signed after the execution of the oath or declaration would
be a permitted alteration where any change brought about by the
application data sheet does not alter the applicability of the
statements in the oath or declaration. Additionally, there is no
prohibition on the inventive entity signing an application data sheet,
but the inventive entity would not need to sign an application data
sheet if the document is signed by a practitioner. Section 10.23(c)(11)
has been removed and reserved in view of the change to § 1.52(c).
Comment 51: One comment suggested that a new section be included in
the application data sheet as a method of identifying the
"applicant," which may be the assignee, obligated assignee, or a
person who otherwise shows sufficient proprietary interest. One comment
suggested that a method be provided for identifying the applicant
(inventor, assignee, obligated assignee, or some other person or
entity) in the application data sheet with provisions regarding the
information required to identify the applicant.
Response: Section 1.76(b)(7) has been retitled "Applicant
Information" and is identified as including assignees, persons to whom
the inventor is under an obligation to assign, or persons who otherwise
show sufficient proprietary interest in the matter. No further
information in the "Applicant Information" section, other than the
identification of the applicant (i.e., name and address), is needed.
Comment 52: One comment supported the proposed change to § 1.76
in amended form. The comment asserted that the requirement that a
supplemental application data sheet contain all the section headings
and all the appropriate data for each section heading is burdensome on
applicants and on the Office. The comment noted that often a
supplemental application data sheet changes a single word or single
number or single line of text in one field of the seven section
headings. Reproduction by applicant and scouring of text by the Office
would be limited if only the change were provided. Since supplemental
application data sheets are hand-keyed rather than scanned and
converted into text by optical character recognition, Office personnel
must wade through large amounts of unchanged information to try to
catch one or two changed items. One comment stated that when submitting
a supplemental application data sheet to correct information in the
file, the applicant should be able to file the application data sheet
form (PTO/SB/14) and show only those changes being requested without
strike-through and underlining.
Response: Where information in an application data sheet is changed
with submission of a later-submitted application data sheet, only the
appropriate data for each section heading to be changed need be filled
in identifying the change in information with appropriate markings.
Some information, such as benefit or priority claims, can be extensive
in nature and would be burdensome for the Office to identify the
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 164 |
specific change without a mark-up. Furthermore, some benefit claims
contain a chain of applications and the entire chain needs to be
provided to ensure that the information is accurate.
Comment 53: One comment questioned whether a supplemental
application data sheet that is the first filed application data sheet
must be underlined in its entirety or whether only the information that
is different from the information that the Office currently has in its
records must be underlined. One comment recommended that § 1.76 be
simplified as it is extensive and burdensome. The comment stated that
it is not easy to prepare a supplemental application data sheet since
the Office does not provide a supplemental application data sheet form.
Response: In response to the comments, the Office is discarding the
notion of the "supplemental" application data sheet. The first filed
application data sheet would not need to contain any markings unless
information is being updated or corrected. Additionally, an application
data sheet included with an initial submission under 35 U.S.C. 371
would not need to contain any markings. An application data sheet that
is updating or correcting information must identify the information
that is being changed with underlining for insertions, and strike-
through or brackets for text removed.
I. Miscellaneous Rules
1. Mail Stop (§ 1.1(e))
Comment 54: One comment suggested that the Office not go forward
with the proposed change of a mail stop from "Mail Stop Patent Ext."
to "Mail Stop Hatch-Waxman PTE." The comment stated that the change
incurs training costs on both the Office and applicants
with no apparent benefit to either applicants or the Office,
particularly as the Office does not provide the actual underlying
reason for the proposed change.
Response: Section 1.1(e) is being revised to reflect the current
mail stop for applications under 35 U.S.C. 156 for patent term
extension and additional correspondence regarding applications for
patent term extension under 35 U.S.C. 156. The current mail stop for
such applications and correspondence is "Mail Stop Hatch-Waxman PTE."
The Office published a notice including this new mail stop on November
21, 2006. See Mailing and Hand Carry Addresses for the United States
Patent and Trademark Office, 1312 Off. Gaz. Pat. Office 107 (Nov. 21,
2006). The mail stop designated as "Mail Stop Patent Ext." is for
applications for patent term extension or adjustment under 35 U.S.C.
154 and any communication relating thereto (except when being mailed
together with the issue fee). The two different mail stops lead to more
efficient processing of the different types of applications and
correspondence for patent term extension and adjustment since different
areas of the Office process the different correspondence. Thus,
§ 1.1(e) has been revised to reflect the correct mail stop.
2. Signatures (§ 1.4)
Comment 55: Several comments questioned whether proposed §
1.4(e) would prevent the use of credit card payments with electronic
submissions, such as EFS-Web, EPAS, the Office's Revenue Accounting and
Management (RAM) system, the Office's Order Entry Management System
(OEMS), and the Central Fax Number. Another comment questioned whether
the proposed change means that patentees will not be able to pay
maintenance fees online with a credit card.
Response: Section 1.4(e) does not prevent the use of credit card
payments with electronic submissions via the Office's electronic filing
systems such as EFS-Web. Section 1.4(e) has been revised to require an
original handwritten signature personally signed in permanent dark ink
or its equivalent for payments by credit cards where the payment is not
being made via the Office's various electronic filing systems. An
original handwritten signature is only required when the credit card
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 165 |
payment is being made in paper, and thus the Office's Credit Card
Payment Form, PTO-2038, or an equivalent, is being used. The credit
card payment form is not required (and should not be used) when making
a credit card payment via EFS-Web or other electronic filing systems. A
submission via the Central Facsimile Number is not considered an
electronic submission and thus credit card payments being made by
facsimile submission to the Central Facsimile Number require an
original handwritten signature.
Comment 56: One comment stated that there are various rules which
seem to require an original signature and requested that the Office
clarify that such "original signatures" include "e-signatures."
Response: The term "original" is used in connection with
handwritten signatures in § 1.4(d)(1) and does not include
S-signatures. Section 1.4(e) specifies when an original handwritten
signature is required. A handwritten signature can be an original or a
copy thereof, except when an original handwritten signature is
required, as set forth in § 1.4(e). See MPEP § 502.02. Unless
§ 1.4(e) is applicable, an S-signature, as provided for in § 1.4(d)(2),
may be used.
3. Juristic Entity (§ 1.31)
Comment 57: One comment stated that proposed § 1.33(f) seems to
allow a juristic entity to sign documents such as terminal disclaimers
and statements under § 3.73(b) because of the language "unless
otherwise specified," which is contrary to the preamble discussion
which stated that all papers submitted on behalf of a juristic entity
must be signed by a patent practitioner.
Response: Section 1.33(b)(3) contains the language of proposed
§ 1.33(f). Section 3.73(c) now contains the provisions for
establishing ownership in a patent matter including the required
statement. Section 1.321 provides for a terminal disclaimer to be
signed by the applicant or an attorney or agent of record. Thus, an
assignee who is the applicant may sign a terminal disclaimer. Section
3.73(d) provides for a statement under § 3.73(c) to be signed by a
person authorized to act on behalf of the assignee.
4. Correspondence Address (§ 1.33)
Comment 58: One comment suggested that § 1.33(a) be amended to
state that the correspondence address must be provided in an
application data sheet since the Office's application data sheet form
(PTO/SB/14) already has a field for correspondence address.
Response: The Office encourages applicants to provide an
application data sheet containing a correspondence address, but
applicants may also provide a correspondence address in another paper
(e.g., a transmittal letter) accompanying the application, particularly
where an application data sheet is not being filed with the
application. The Office needs to be able to communicate with applicants
even when an application data sheet is not submitted.
Comment 59: One comment suggested maintaining the language of
current § 1.33(a) to state that where more than one correspondence
address is specified in a single paper or multiple papers submitted on
one day, the Office will use a Customer Number for the correspondence
address over a typed correspondence address. The comment indicated that
the Office has used a different correspondence where a Customer Number
"has been properly presented in the filings associated with an
application."
Response: The Office will generally select the address associated
with a Customer Number over a typed correspondence address when more
than one correspondence address is specified in a paper or papers
submitted on the same day. The Office, however, prefers not to be
required by rule to select the Customer Number since there may be
situations where it is clear that the Customer Number given is not the
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 166 |
intended or current correspondence address. Thus, the Office requires
some flexibility in this regard.
Comment 60: One comment suggested that to ensure prompt processing
of correspondence addresses, a practitioner using private PAIR should
have the ability to input a new/correct correspondence address which
becomes effective immediately upon submission.
Response: The Office is currently considering changes to the PAIR
system that may include the ability of a patent practitioner of record
to change the correspondence address in an application. The Office
would notify the public of any changes to the PAIR system via a notice
on the Office's Internet web site.
5. Person Making Declaration (§ 1.64)
Comment 61: One comment suggested that: (1) § 1.64(a) which
states that the declaration "must be made by all of the actual
inventors, except as provided for in §§ 1.42, 1.43, 1.47, or
1.67," be revised to employ the statutory language of 35 U.S.C. 115,
that "each individual who is the inventor or a joint inventor of a
claimed invention;" (2) the portion of § 1.64(b) that states
"[i]f the person making the oath or declaration is not the inventor,
the declaration shall state * * * " should be removed as only an
inventor or joint inventor may execute an oath or declaration; and (3)
the requirement for the residence of non-
inventors who sign should be removed. Another comment suggested that
§ 1.64 be amended to reflect that a single oath or declaration
document is not required and to eliminate the requirement for the
residence and mailing address of the legal representative.
Response: In response to the comments, the provisions of former
§ 1.64 have been eliminated. Section 1.64 now provides for a
substitute statement in lieu of an oath or declaration and requires the
residence and mailing of address of the person signing the substitute
statement. The Office needs this information for identification
purposes and to be able to communicate with the person executing the
substitute statement in the event that this becomes necessary.
6. Noncompliant Declarations (§ 1.67)
Comment 62: One comment stated that proposed § 1.67 included a
critical misconception that a declaration may be made by someone other
than the inventor. Additionally, the comment stated that it is unclear
how a deficiency or inaccuracy relating to fewer than all the
applicants could be cured by an inventor's declaration. Another comment
stated that § 1.67 should be amended to reflect that a single oath
or declaration document is not required.
Response: Initially, it should be noted that § 1.67 is directed
to supplemental oaths or declarations and provides a mechanism for
applicants to correct deficiencies or inaccuracies present in an
earlier-filed inventor's oath or declaration. Section 1.67, in this
final rule, prohibits the Office from requiring a person who has
executed an oath or declaration that is in compliance with 35 U.S.C.
115 and § 1.63 or § 1.162 to provide an additional inventor's
oath or declaration for the application. However, the Office is not
prohibited from requiring a new oath or declaration in compliance with
35 U.S.C. 115 and § 1.63 where the oath or declaration that was
submitted does not comply with 35 U.S.C. 115 and § 1.63. The Office
notes that former § 1.47(b) permitted an assignee to sign the oath
or declaration for the nonsigning inventor where no inventors were
available. The assignee would simply make the statements in the oath or
declaration on information and belief. See former § 1.64(b).
Section 1.63(f), in this final rule, provides that any reference to the
inventor's oath or declaration in this chapter means the oaths,
declarations, or substitute statements that have been collectively
executed by or with respect to all of the joint inventors. Accordingly,
a single oath or declaration document is not required under § 1.63
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 167 |
or § 1.67. Since § 1.63 is amended to only require that the
oath or declaration identify the inventor or joint inventor executing
the oath or declaration rather, than identifying the entire inventive
entity, § 1.67 no longer refers to a deficiency or inaccuracy
relating to fewer than all of the inventors or applicants.
7. Statement Under § 3.73
Comment 63: One comment supported the proposed change to §
3.73, but suggested a modification of § 3.73(b). The comment noted
the difficulties practitioners face in attempting to reproduce reel and
frame numbers, including time, effort and the potential for
typographical errors from the hand-keying required when form PTO/SB/96
is completed, and the need for Office personnel to check the
information character by character. The comment suggested that these
efforts can be limited by permitting attachment of a copy of the
Abstract of Title or Notice of Recordation where they contain the reel
and frame numbers.
Response: Section 3.73(c)(1)(i) requires documentary evidence of a
chain of title from the original owner to the assignee. A copy of an
executed assignment is only one example of the type of documentary
evidence that may be submitted. Other types of documentary evidence may
be submitted. An Abstract of Title or Notice of Recordation would be
insufficient documentary evidence since any person can submit documents
for recordation to Assignment Recordation Branch, therefore an Abstract
of Title may list extraneous or erroneous documents unrelated to the
chain of title.
Comment 64: One comment stated that, with respect to proposed
§ 3.73(c)(3), the applicants should be allowed to also file a copy of a
statement under § 3.73(b) that was originally filed in a
provisional application in a nonprovisional application that claims
benefit of the provisional application.
Response: Section 3.73 does not provide for the filing of a copy of
a statement under § 3.73(c) in a nonprovisional application that
was originally filed in a prior application, such as a provisional
application whose benefit is being claimed in the nonprovisional
application. Generally, there is no need to file a § 3.73(c)
statement in a provisional application and such statements are not
usually filed in provisional applications as such applications are not
examined and do not undergo prosecution. Furthermore, where an assignee
has filed such a statement in the provisional application, the assignee
would presumably be the applicant filing the nonprovisional
application. An assignee who is the applicant who filed the application
need not to file a § 3.73(c) statement.
Comment 65: One comment stated that, with respect to proposed
§ 3.73(c)(3), if a statement under § 3.73(b) in the earlier
application is from an assignee, it should not be required that the
inventorship of the continuing application be the same as or less than
that of the earlier application, if the newly added inventors have also
assigned, or are under an obligation to assign, to the same assignee
and the assignment is recorded at the Office.
Response: Section 3.73 does not provide for the filing of a copy of
a statement under § 3.73(c) in a continuing application that was
originally filed in the prior application. Where an assignee has filed
a statement under § 3.73(c) in a prior application, the assignee
may file the continuing application as the applicant and would not need
to file a § 3.73(c) statement.
Comment 66: One comment suggested that the Office simplify the
process relating to the power of attorney from an assignee such that
the power of attorney document(s) may be filed concurrently with the
filing of patent application documents. The comment noted that the
Office's form (PTO/SB/96) requires entry of specific application data
which are only available after filing of the patent application.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 168 |
Response: An assignee who is the applicant will not need to comply
with the procedure in §§ 3.71 and 3.73, including filing a
§ 3.73(c) statement (e.g., Form PTO/SB/96). The assignee will only
need to identify him or herself as the applicant and submit a power of
attorney. Thus, the assignee will be able to file the power of attorney
document(s) concurrently with the patent application documents even
though he or she does not have an application number for the
application. An assignee who did not file the application and thus is
not the original applicant would need to file a § 3.73(c) statement
to become the applicant and take over prosecution of the application.
See §§ 1.46(c), 3.71, and 3.73.
8. Lack of Deceptive Intent
Comment 67: One comment expressed concern about the deletion of the
"lack of deceptive intent" clause. One comment suggested that
notwithstanding the acknowledgement that willful false statements are
punishable by fine or imprisonment, keeping the "without deceptive
intention" in the statute may be a good idea. The comment noted that
there may be semantic differences between "false statement" and
"deceptive intention" that retaining the language may help clarify.
Response: Section 20 of the AIA amended 35 U.S.C. 116, 184, 251,
and 256 (as well as other statutes that do not require corresponding
rule changes) to eliminate the "without any deceptive intention"
clauses. The changes to the rules at issue simply implement the changes
to 35 U.S.C. 116, 184, 251, and 256 in section 20 of the AIA. As
discussed previously, this should not be taken as an endorsement for
applicants and inventors to act with "deceptive intention" in
proceedings before the Office, as 35 U.S.C. 115(i) requires that any
declaration or statement filed pursuant to 35 U.S.C. 115 contain an
acknowledgement that any willful false statement made in the
declaration or statement is punishable under 18 U.S.C. 1001 by fine or
imprisonment of not more than five (5) years, or both.
Rulemaking Considerations
A. Administrative Procedure Act
The primary changes in this final rule implement the inventor's
oath or declaration provisions of the AIA. This final rule changes the
rules of practice that concern the procedure for applying for a patent,
namely, how an application is to identify the applicant for patent, the
statements required in the inventor's oath or declaration required by
35 U.S.C. 115 for a patent application (including the oath or
declaration for a reissue application), the manner of presenting claims
for priority to or the benefit of prior-filed applications under 35
U.S.C. 119, 120, 121, or 365, and the procedures for prosecution of an
application by an assignee. The changes in this final rule do not alter
the substantive criteria of patentability. Therefore, the changes in
this final rule involve rules of agency practice and procedure, and/or
interpretive rules. See Bachow Commc'ns., Inc. v. FCC, 237 F.3d 683,
690 (D.C. Cir. 2001) (rules governing an application process are
procedural under the Administrative Procedure Act); Inova Alexandria
Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling
appeals were procedural where they did not change the substantive
standard for reviewing claims); Nat'l Org. of Veterans' Advocates v.
Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule
that clarifies interpretation of a statute is interpretive).
Accordingly, prior notice and opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008)
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not
require notice and comment rulemaking for "interpretative rules,
general statements of policy, or rules of agency organization,
procedure, or practice.") (quoting 5 U.S.C. 553(b)(A)). The Office,
however, published proposed changes and a Regulatory Flexibility Act
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 169 |
certification for comment as it sought the benefit of the public's
views on the Office's proposed implementation of this provision of the
AIA.
B. Regulatory Flexibility Act
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 or any other law, neither a
regulatory flexibility analysis nor a certification under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5
U.S.C. 603.
In addition, for the reasons set forth herein, the Deputy General
Counsel for General Law of the United States Patent and Trademark
Office has certified to the Chief Counsel for Advocacy of the Small
Business Administration that changes in this final rule will not have a
significant economic impact on a substantial number of small entities.
See 5 U.S.C. 605(b).
This final rule changes the rules of practice to implement sections
4 and 20 of the AIA, which provide changes to the inventor's oath or
declaration and the filing of an application by the assignee as the
applicant. The primary impact of the changes in this final rule is the
streamlining of the requirements for oaths and declarations and the
simplification of the filing of an application by the assignee as the
applicant. The burden to all entities, including small entities,
imposed by the changes in this final rule is significantly less than
the burden imposed by the former regulations in most situations, and is
no more than a minor addition to that of the former regulations in any
situation. The change to the manner of presenting claims for priority
to or the benefit of prior-filed applications under 35 U.S.C. 119, 120,
121, or 365 will not have a significant economic impact on a
substantial number of small entities as an application data sheet is
easy to prepare and use, and the majority of patent applicants already
submit an application data sheet with the patent application. The
change to reissue oaths or declarations will not have a significant
economic impact on a substantial number of small entities as reissue is
sought by the patentee for fewer than 1,200 of the 1.2 million patents
in force each year, and a reissue applicant already needs to know
whether claims are being broadened to comply with the requirements of
35 U.S.C. 251. The change to the procedures for prosecution of an
application by an assignee will not have a significant economic impact
on a substantial number of small entities as it is rare for a juristic
entity to attempt to prosecute a patent application pro se. Therefore,
the changes in this final rule will not have a significant economic
impact on a substantial number of small entities.
C. Executive Order 12866 (Regulatory Planning and Review)
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory Review)
The Office has complied with Executive Order 13563. Specifically,
the Office has, to the extent feasible and applicable: (1) Made a
reasoned determination that the benefits justify the costs of the rule;
(2) tailored the rule to impose the least burden on society consistent
with obtaining the regulatory objectives; (3) selected a regulatory
approach that maximizes net benefits; (4) specified performance
objectives; (5) identified and assessed available alternatives; (6)
involved the public in an open exchange of information and perspectives
among experts in relevant disciplines, affected stakeholders in the
private sector and the public as a whole, and provided online access to
the rulemaking docket; (7) attempted to promote coordination,
simplification and harmonization across government agencies and
identified goals designed to promote innovation; (8) considered
approaches that reduce burdens and maintain flexibility and freedom of
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 170 |
choice for the public; and (9) ensured the objectivity of scientific
and technological information and processes.
E. Executive Order 13132 (Federalism)
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation)
This rulemaking will not: (1) Have substantial direct effects on
one or more Indian tribes; (2) impose substantial direct compliance
costs on Indian tribal governments; or (3) preempt tribal law.
Therefore, a tribal summary impact statement is not required under
Executive Order 13175 (Nov. 6, 2000).
G. Executive Order 13211 (Energy Effects)
This rulemaking is not a significant energy action under Executive
Order 13211 because this rulemaking is not likely to have a significant
adverse effect on the supply, distribution, or use of energy.
Therefore, a Statement of Energy Effects is not required under
Executive Order 13211 (May 18, 2001).
H. Executive Order 12988 (Civil Justice Reform)
This rulemaking meets applicable standards to minimize litigation,
eliminate ambiguity, and reduce burden as set forth in sections 3(a)
and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children)
This rulemaking does not concern an environmental risk to health or
safety that may disproportionately affect children under Executive
Order 13045 (Apr. 21, 1997).
J. Executive Order 12630 (Taking of Private Property)
This rulemaking will not effect a taking of private property or
otherwise have taking implications under Executive Order 12630 (Mar.
15, 1988).
K. Congressional Review Act
Under the Congressional Review Act provisions of the Small Business
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), the
United States Patent and Trademark Office will submit a report
containing this final rule and other required information to the United
States Senate, the United States House of Representatives, and the
Comptroller General of the Government Accountability Office. The
changes in this final rule are not expected to result in an annual
effect on the economy of 100 million dollars or more, a major increase
in costs or prices, or significant adverse effects on competition,
employment, investment, productivity, innovation, or the ability of
United States-based enterprises to compete with foreign-based
enterprises in domestic and export markets. Therefore, this final rule
is not a "major rule" as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995
The changes in this rulemaking do not involve a Federal
intergovernmental mandate that will result in the expenditure by State,
local, and tribal governments, in the aggregate, of 100 million dollars
(as adjusted) or more in any one year, or a Federal private sector
mandate that will result in the expenditure by the private sector of
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 171 |
100 million dollars (as adjusted) or more in any one year, and will not
significantly or uniquely affect small governments. Therefore, no
actions are necessary under the provisions of the Unfunded Mandates
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
M. National Environmental Policy Act
This rulemaking will not have any effect on the quality of
environment and is thus categorically excluded from review under the
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act
The requirements of section 12(d) of the National Technology
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not
applicable because this rulemaking does not contain provisions which
involve the use of technical standards.
O. Paperwork Reduction Act
This rulemaking 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
collection of information involved in this rulemaking has been reviewed
and previously approved by OMB under OMB Control Numbers 0651-0032 and
0651-0035. The primary impact of the changes in this notice is the
streamlining of the requirements for oaths and declarations and the
simplification of the filing of an application by the assignee when an
inventor cannot or will not execute an oath or declaration. The Office
is not resubmitting an information collection package to OMB for its
review and approval because the changes in this rulemaking do not
change patent fees or change the information collection requirements
(the estimated number of respondents, time per response, total annual
respondent burden hours, or total annual respondent cost burden)
associated with the information collections approved under OMB Control
Numbers 0651-0032 and 0651-0035.
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, Inventions and patents,
Reporting and recordkeeping requirements, Small businesses.
37 CFR Part 3
Administrative practice and procedure, Patents, Trademarks
37 CFR Part 5
Classified information, Foreign relations, Inventions and patents.
37 CFR Part 10
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
37 CFR Part 41
Administrative practice and procedure, Inventions and patents,
Lawyers.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 172 |
For the reasons set forth in the preamble, 37 CFR parts 1, 3, 5, 10
and 41 are 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 1.1 is amended by revising paragraph (e) to read as follows:
§ 1.1 Addresses for non-trademark correspondence with the United
States Patent and Trademark Office.
* * * * *
(e) Patent term extension. All applications for extension of patent
term under 35 U.S.C. 156 and any communications relating thereto
intended for the United States Patent and Trademark Office should be
additionally marked "Mail Stop Hatch-Waxman PTE." When appropriate,
the communication should also be marked to the attention of a
particular individual, as where a decision has been rendered.
* * * * *
. 3. Section 1.4 is amended by revising paragraph (e) to read as follows:
§ 1.4 Nature of correspondence and signature requirements.
* * * * *
(e) The following correspondence must be submitted with an original
handwritten signature personally signed in permanent dark ink or its
equivalent:
(1) Correspondence requiring a person's signature and relating to
registration to practice before the Patent
and Trademark Office in patent cases, enrollment and disciplinary
investigations, or disciplinary proceedings; and
(2) Payments by credit cards where the payment is not being made
via the Office's electronic filing systems.
* * * * *
. 4. Section 1.5 is amended by revising paragraph (a) to read as follows:
§ 1.5 Identification of patent, patent application, or patent-
related proceeding.
(a) No correspondence relating to an application should be filed
prior to receipt of the application number from the Patent and
Trademark Office. When a letter directed to the Patent and Trademark
Office concerns a previously filed application for a patent, it must
identify on the top page in a conspicuous location, the application
number (consisting of the series code and the serial number; e.g., 07/
123,456), or the serial number and filing date assigned to that
application by the Patent and Trademark Office, or the international
application number of the international application. Any correspondence
not containing such identification will be returned to the sender where
a return address is available. The returned correspondence will be
accompanied with a cover letter which will indicate to the sender that
if the returned correspondence is resubmitted to the Patent and
Trademark Office within two weeks of the mail date on the cover letter,
the original date of receipt of the correspondence will be considered
by the Patent and Trademark Office as the date of receipt of the
correspondence. Applicants may use either the Certificate of Mailing or
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 173 |
Transmission procedure under § 1.8 or the Express Mail procedure
under § 1.10 for resubmissions of returned correspondence if they
desire to have the benefit of the date of deposit in the United States
Postal Service. If the returned correspondence is not resubmitted
within the two-week period, the date of receipt of the resubmission
will be considered to be the date of receipt of the correspondence. The
two-week period to resubmit the returned correspondence will not be
extended. In addition to the application number, all letters directed
to the Patent and Trademark Office concerning applications for patent
should also state the name of the first listed inventor, the title of
the invention, the date of filing the same, and, if known, the group
art unit or other unit within the Patent and Trademark Office
responsible for considering the letter and the name of the examiner or
other person to which it has been assigned.
* * * * *
. 5. Section 1.9 is amended by revising paragraphs (a) and (b) to read as
follows:
§ 1.9 Definitions.
(a)(1) A national application as used in this chapter means a U.S.
application for patent which was either filed in the Office under 35
U.S.C. 111, or an international application filed under the Patent
Cooperation Treaty in which the basic national fee under 35 U.S.C.
41(a)(1)(F) has been paid.
(2) A provisional application as used in this chapter means a U.S.
national application for patent filed in the Office under 35 U.S.C.
111(b).
(3) A nonprovisional application as used in this chapter means a
U.S. national application for patent which was either filed in the
Office under 35 U.S.C. 111(a), or an international application filed
under the Patent Cooperation Treaty in which the basic national fee
under 35 U.S.C. 41(a)(1)(F) has been paid.
(b) An international application as used in this chapter means an
international application for patent filed under the Patent Cooperation
Treaty prior to entering national processing at the Designated Office
stage.
* * * * *
. 6. Section 1.12 is amended by revising paragraphs (b) and (c)(2) to
read as follows:
§ 1.12 Assignment records open to public inspection.
* * * * *
(b) Assignment records, digests, and indexes relating to any
pending or abandoned patent application, which is open to the public
pursuant to § 1.11 or for which copies or access may be supplied
pursuant to § 1.14, are available to the public. Copies of any
assignment records, digests, and indexes that are not available to the
public shall be obtainable only upon written authority of an inventor,
the applicant, the assignee or an assignee of an undivided part
interest, or a patent practitioner of record, or upon a showing that
the person seeking such information is a bona fide prospective or
actual purchaser, mortgagee, or licensee of such application, unless it
shall be necessary to the proper conduct of business before the Office
or as provided in this part.
(c) * * *
(2) Include written authority granting access to the member of the
public to the particular assignment records from an inventor, the
applicant, the assignee or an assignee of an undivided part interest,
or a patent practitioner of record.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 174 |
* * * * *
. 7. Section 1.14 is amended by revising paragraphs (c) and (f) to read
as follows;
§ 1.14 Patent applications preserved in confidence.
* * * * *
(c) Power to inspect a pending or abandoned application. Access to
an application may be provided to any person if the application file is
available, and the application contains written authority (e.g., a
power to inspect) granting access to such person. The written authority
must be signed by:
(1) The applicant;
(2) A patent practitioner of record;
(3) The assignee or an assignee of an undivided part interest;
(4) The inventor or a joint inventor; or
(5) A registered attorney or agent named in the papers accompanying
the application papers filed under § 1.53 or the national stage
documents filed under § 1.495, if a power of attorney has not been
appointed under § 1.32.
* * * * *
(f) Notice to inventor of the filing of an application. The Office
may publish notice in the Official Gazette as to the filing of an
application on behalf of an inventor by a person who otherwise shows
sufficient propriety interest in the matter.
* * * * *
0. 8. Section 1.16 is amended by revising paragraph (f) to read as
follows:
§ 1.16 National application filing, search, and examination fees.
* * * * *
(f) Surcharge for filing any of the basic filing fee, the search
fee, the examination fee, or the inventor's oath or declaration on a
date later than the filing date of the application, except provisional
applications:
By a small entity (§ 1.27(a)) $65.00
By other than a small entity $130.00
* * * * *
. 9. Section 1.17 is amended by revising paragraphs (g) and (i) to read
as follows:
§ 1.17 Patent application and reexamination processing fees.
* * * * *
(g) For filing a petition under one of the following sections which
refers to this paragraph: $200.00.
§ 1.12 - for access to an assignment record.
§ 1.14 - for access to an application.
§ 1.46 - for filing an application on behalf of an inventor by a
person who otherwise shows sufficient proprietary interest in the
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 175 |
matter.
§ 1.59 - for expungement of information.
§ 1.103(a) - to suspend action in an application.
§ 1.136(b) - for review of a request for extension for extension of
time when the provisions of § 1.136(a) are not available.
§ 1.295 - for review of refusal to publish a statutory invention
registration.
§ 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.
§ 1.377 - for review of decision refusing to accept and record
payment of a maintenance fee filed prior to expiration of a patent.
§ 1.550(c) - for patent owner requests for extension of time in ex
parte reexamination proceedings.
§ 1.956 - for patent owner requests for extension of time in inter
partes reexamination proceedings.
§ 5.12 - for expedited handling of a foreign filing license.
§ 5.15 - for changing the scope of a license.
§ 5.25 - for retroactive license.
* * * * *
(i) Processing fee for taking action under one of the following
sections which refers to this paragraph: $130.00.
§ 1.28(c)(3) - for processing a non-itemized fee deficiency based
on an error in small entity status.
§ 1.41(b) - for supplying the name or names of the inventor or
joint inventors in an application without either an application data
sheet or the inventor's oath or declaration, except in provisional
applications.
§ 1.48 - for correcting inventorship, except in provisional
applications.
§ 1.52(d) - for processing a nonprovisional application filed with
a specification in a language other than English.
§ 1.53(c)(3) - to convert a provisional application filed under
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 176 |
§ 1.53(c) into a nonprovisional application under § 1.53(b).
§ 1.55 - for entry of late priority papers.
§ 1.71(g)(2) - for processing a belated amendment under §
1.71(g).
§ 1.103(b) - for requesting limited suspension of action, continued
prosecution application for a design patent (§ 1.53(d)).
§ 1.103(c) - for requesting limited suspension of action, request
for continued examination (§ 1.114).
§ 1.103(d) - for requesting deferred examination of an application.
§ 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.
§ 1.221 - for requesting voluntary publication or republication of
an application.
§ 1.291(c)(5) - for processing a second or subsequent protest by
the same real party in interest.
§ 3.81 - for a patent to issue to assignee, assignment submitted
after payment of the issue fee.
* * * * *
. 10. Section 1.27 is amended by revising paragraph (c)(2) to read as
follows:
§ 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.
* * * * *
(c) * * *
(2) Parties who can sign the written assertion. The written
assertion can be signed by:
(i) The applicant (§ 1.42 or § 1.421);
(ii) A patent practitioner of record or a practitioner acting in a
representative capacity under § 1.34;
(iii) The inventor or a joint inventor, if the inventor is the
applicant; or
(iv) The assignee.
* * * * *
. 11. Section 1.31 is revised to read as follows:
§ 1.31 Applicant may be represented by one or more patent
practitioners or joint inventors.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 177 |
An applicant for patent may file and prosecute the applicant's own
case, or the applicant may give power of attorney so as to be
represented by one or more patent practitioners or joint inventors,
except that a juristic entity (e.g., organizational assignee) must be
represented by a patent practitioner even if the juristic entity is the
applicant. The Office cannot aid in the selection of a patent
practitioner.
. 12. Section 1.32 is amended by revising paragraphs (a)(2), (a)(3),
(a)(4) and (b) and adding paragraphs (a)(6), (d) and (e) to read as
follows:
§ 1.32 Power of attorney.
(a) * * *
(2) Power of attorney means a written document by which a principal
authorizes one or more patent practitioners or joint inventors to act
on the principal's behalf.
(3) Principal means the applicant (§ 1.42) for an application
for patent and the patent owner for a patent, including a patent in a
supplemental examination or reexamination proceeding. The principal
executes a power of attorney designating one or more patent
practitioners or joint inventors to act on the principal's behalf.
(4) Revocation means the cancellation by the principal of the
authority previously given to a patent practitioner or joint inventor
to act on the principal's behalf.
* * * * *
(6) Patent practitioner of record means a patent practitioner who
has been granted a power of attorney in an application, patent, or
other proceeding in compliance with paragraph (b) of this section. The
phrases practitioner of record and attorney or agent of record also
mean a patent practitioner who has been granted a power of attorney in
an application, patent, or other proceeding in compliance with
paragraph (b) of this section.
(b) A power of attorney must:
(1) Be in writing;
(2) Name one or more representatives in compliance with paragraph
(c) of this section;
(3) Give the representative power to act on behalf of the
principal; and
(4) Be signed by the applicant for patent (§ 1.42) or the
patent owner. A patent owner who was not the applicant under § 1.46
must appoint any power of attorney in compliance with §§ 3.71 and 3.73 of
this chapter.
* * * * *
(d) A power of attorney from a prior national application for which
benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in a continuing
application may have effect in the continuing application if a copy of
the power of attorney from the prior application is filed in the
continuing application unless:
(1) The power of attorney was granted by the inventor; and
(2) The continuing application names an inventor who was not named
as an inventor in the prior application.
(e) If the power of attorney was granted by the originally named
inventive entity, and an added inventor pursuant to § 1.48 does not
provide a power of attorney consistent with the power of attorney
granted by the originally named inventive entity, the addition of the
inventor results in the loss of that power of attorney upon grant of
the § 1.48 request. This provision does not preclude a practitioner
from acting pursuant to § 1.34, if applicable.
. 13. Section 1.33 is amended by revising paragraphs (a) and (b) and
adding paragraphs (f) and (g) to read as follows:
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 178 |
§ 1.33 Correspondence respecting patent applications, patent
reexamination proceedings, and other proceedings.
(a) Correspondence address and daytime telephone number. When
filing an application, a correspondence address must be set forth in
either an application data sheet (§ 1.76), or elsewhere, in a
clearly identifiable manner, in any paper submitted with an application
filing. If no correspondence address is specified, the Office may treat
the mailing address of the first named inventor (if provided, see
§§ 1.76(b)(1) and 1.63(b)(2)) as the correspondence address.
The Office will direct, or otherwise make available, all notices,
official letters, and other communications relating to the application
to the person associated with the correspondence address. For
correspondence submitted via the Office's electronic filing system,
however, an electronic acknowledgment receipt will be sent to the
submitter. The Office will generally not engage in double
correspondence with an applicant and a patent practitioner, or with
more than one patent practitioner except as deemed necessary by the
Director. If more than one correspondence address is specified, the
Office will select one of the specified addresses for use as the
correspondence address and, if given, may select the address associated
with a Customer Number over a typed correspondence address. For the
party to whom correspondence is to be addressed, a daytime telephone
number should be supplied in a clearly identifiable manner and may be
changed by any party who may change the correspondence address. The
correspondence address may be changed by the parties set forth in
paragraph (b)(1) or (b)(3) of this section. Prior to the appointment of
any power of attorney under § 1.32(b), the correspondence address
may also be changed by any patent practitioner named in the application
transmittal papers who acts in a representative capacity under the
provisions of § 1.34.
(b) Amendments and other papers. Amendments and other papers,
except for written assertions pursuant to § 1.27(c)(2)(iii) or
(c)(2)(iv), filed in the application must be signed by:
(1) A patent practitioner of record;
(2) A patent practitioner not of record who acts in a
representative capacity under the provisions of § 1.34; or
(3) The applicant (§ 1.42). Unless otherwise specified, all
papers submitted on behalf of a juristic entity must be signed by a
patent practitioner.
* * * * *
(f) Where application papers from a prior application are used in a
continuing application and the correspondence address was changed
during the prosecution of the prior application, an application data
sheet or separate paper identifying the correspondence address to be
used for the continuing application must be submitted. Otherwise, the
Office may not recognize the change of correspondence address effected
during the prosecution of the prior application.
(g) A patent practitioner acting in a representative capacity whose
correspondence address is the correspondence address of record in an
application may change the correspondence address after the patent has
issued, provided that the change of correspondence address is
accompanied by a statement that notice has been given to the patentee
or owner.
. 14. Section 1.36 is amended by revising paragraph (a) to read as
follows:
§ 1.36 Revocation of power of attorney; withdrawal of patent
attorney or agent.
(a) A power of attorney, pursuant to § 1.32(b), may be revoked
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 179 |
at any stage in the proceedings of a case by the applicant or patent
owner. A power of attorney to the patent practitioners associated with
a Customer Number will be treated as a request to revoke any powers of
attorney previously given. Fewer than all of the applicants (or fewer
than all patent owners in a supplemental examination or reexamination
proceeding) may revoke the power of attorney only upon a showing of
sufficient cause, and payment of the petition fee set forth in
§ 1.17(f). A patent practitioner will be notified of the revocation of
the power of attorney. Where power of attorney is given to the patent
practitioners associated with a Customer Number (§ 1.32(c)(2)), the
practitioners so appointed will also be notified of the revocation of
the power of attorney when the power of attorney to all of the
practitioners associated with the Customer Number is revoked. The
notice of revocation will be mailed to the correspondence address for
the application (§ 1.33) in effect before the revocation. An
assignment will not of itself operate as a revocation of a power
previously given, but the assignee may become the applicant under
§ 1.46(c) and revoke any previous power of attorney and grant a power of
attorney as provided in § 1.32(b).
* * * * *
. 15. Section 1.41 is revised to read as follows:
§ 1.41 Inventorship.
(a) An application must include, or be amended to include, the name
of the inventor for any invention claimed in the application.
(b) The inventorship of a nonprovisional application under 35
U.S.C. 111(a) is the inventor or joint inventors set forth in the
application data sheet in accordance with § 1.76 filed before or
concurrently with the inventor's oath or declaration. If an application
data sheet is not filed before or concurrently with the inventor's oath
or declaration, the inventorship is the inventor or joint inventors set
forth in the inventor's oath or declaration, except as provided for in
§§ 1.53(d)(4) and 1.63(d). Once an application data sheet or
the inventor's oath or declaration is filed in a nonprovisional
application, any correction of inventorship must be pursuant to
§ 1.48. If neither an application data sheet nor the inventor's oath or
declaration is filed during the pendency of a nonprovisional
application, the inventorship is the inventor or joint inventors set
forth in the application papers filed pursuant to § 1.53(b), unless
the applicant files a paper, including the processing fee set forth in
§ 1.17(i), supplying the name or names of the inventor or joint
inventors.
(c) The inventorship of a provisional application is the inventor
or joint inventors set forth in the cover sheet as prescribed by
§ 1.51(c)(1). Once a cover sheet as prescribed by § 1.51(c)(1) is
filed in a provisional application, any correction of inventorship must
be pursuant to § 1.48. If a cover sheet as prescribed by
§ 1.51(c)(1) is not filed during the pendency of a provisional
application, the inventorship is the inventor or joint inventors set
forth in the application papers filed pursuant to § 1.53(c), unless
applicant files a paper including the processing fee set forth in
§ 1.17(q), supplying the name or names of the inventor or joint
inventors.
(d) In a nonprovisional application under 35 U.S.C. 111(a) filed
without an application data sheet or the inventor's oath or
declaration, or in a provisional application filed without a cover
sheet as prescribed by § 1.51(c)(1), the name and residence of each
person believed to be an actual inventor should be provided when the
application papers pursuant to § 1.53(b) or § 1.53(c) are
filed.
(e) The inventorship of an international application entering the
national stage under 35 U.S.C. 371 is the inventor or joint inventors
set forth in the application data sheet in accordance with § 1.76
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 180 |
filed with the initial submission under 35 U.S.C. 371. Unless the
initial submission under 35 U.S.C. 371 is accompanied by an application
data sheet in accordance with § 1.76 setting forth the inventor or
joint inventors, the inventorship is the inventor or joint inventors
set forth in the international application, which includes any change
effected under PCT Rule 92 bis.
. 16. Section 1.42 is revised to read as follows:
§ 1.42 Applicant for patent.
(a) The word "applicant" when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.
(b) If a person is applying for a patent as provided in § 1.46,
the word "applicant" refers to the assignee, the person to whom the
inventor is under an obligation to assign the invention, or the person
who otherwise shows sufficient proprietary interest in the matter, who
is applying for a patent under § 1.46 and not the inventor.
(c) If fewer than all joint inventors are applying for a patent as
provided in § 1.45, the phrase "the applicant" means the joint
inventors who are applying for the patent without the omitted
inventor(s).
(d) Any person having authority may deliver an application and fees
to the Office on behalf of the applicant. However, an oath or
declaration, or substitute statement in lieu of an oath or declaration,
may be executed only in accordance with § 1.63 or 1.64, a
correspondence address may be provided only in accordance with
§ 1.33(a), and amendments and other papers must be signed in accordance
with § 1.33(b).
(e) The Office may require additional information where there is a
question concerning ownership or interest in an application, and a
showing may be required from the person filing the application that the
filing was authorized where such authorization comes into question.
. 17. Section 1.43 is revised to read as follows:
§ 1.43 Application for patent by a legal representative of a
deceased or legally incapacitated inventor.
If an inventor is deceased or under legal incapacity, the legal
representative of the inventor may make an application for patent on
behalf of the inventor. If an inventor dies during the time intervening
between the filing of the application and the granting of a patent
thereon, the letters patent may be issued to the legal representative
upon proper intervention. See § 1.64 concerning the execution of a
substitute statement by a legal representative in lieu of an oath or
declaration.
. 18. Section 1.45 is revised to read as follows:
§ 1.45 Application for patent by joint inventors.
(a) Joint inventors must apply for a patent jointly, and each must
make an inventor's oath or declaration as required by § 1.63,
except as provided for in § 1.64. If a joint inventor refuses to
join in an application for patent or cannot be found or reached after
diligent effort, the other joint inventor or inventors may make the
application for patent on behalf of themselves and the omitted
inventor. See § 1.64 concerning the execution of a substitute
statement by the other joint inventor or inventors in lieu of an oath
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 181 |
or declaration.
(b) Inventors may apply for a patent jointly even though:
(1) They did not physically work together or at the same time;
(2) Each inventor did not make the same type or amount of
contribution; or
(3) Each inventor did not make a contribution to the subject matter
of every claim of the application.
(c) If multiple inventors are named in a nonprovisional
application, each named inventor must have made a contribution,
individually or jointly, to the subject matter of at least one claim of
the application and the application will be considered to be a joint
application under 35 U.S.C. 116. If multiple inventors are named in a
provisional application, each named inventor must have made a
contribution, individually or jointly, to the subject matter disclosed
in the provisional application and the provisional application will be
considered to be a joint application under 35 U.S.C. 116.
. 19. Section 1.46 is revised to read as follows:
§ 1.46 Application for patent by an assignee, obligated assignee,
or a person who otherwise shows sufficient proprietary interest in the
matter.
(a) A person to whom the inventor has assigned or is under an
obligation to assign the invention may make an application for patent.
A person who otherwise shows sufficient proprietary interest in the
matter may make an application for patent on behalf of and as agent for
the inventor on proof of the pertinent facts and a showing that such
action is appropriate to preserve the rights of the parties.
(b) If an application under 35 U.S.C. 111 is made by a person other
than the inventor under paragraph (a) of this section, the application
must contain an application data sheet under § 1.76 specifying in
the applicant information section (§ 1.76(b)(7)) the assignee,
person to whom the inventor is under an obligation to assign the
invention, or person who otherwise shows sufficient proprietary
interest in the matter. If the application is the national stage of an
international application, the person who is identified in the
international stage as an applicant for the United States is the person
specified as the original applicant for the national stage.
(1) If the applicant is the assignee or a person to whom the
inventor is under an obligation to assign the invention, documentary
evidence of ownership (e.g., assignment for an assignee, employment
agreement for a person to whom the inventor is under an obligation to
assign the invention) should be recorded as provided for in part 3 of
this chapter no later than the date the issue fee is paid in the
application.
(2) If the applicant is a person who otherwise shows sufficient
proprietary interest in the matter, such applicant must submit a
petition including:
(i) The fee set forth in § 1.17(g);
(ii) A showing that such person has sufficient proprietary interest
in the matter; and
(iii) A statement that making the application for patent by a
person who otherwise shows sufficient proprietary interest in the
matter on behalf of and as agent for the inventor is appropriate to
preserve the rights of the parties.
(c) Any request to correct or update the name of the applicant
after an applicant has been specified under paragraph (b) of this
section must include an application data sheet under § 1.76
specifying the correct or updated name of the applicant in the
applicant information section (§ 1.76(b)(7)). Any request to change
the applicant after an original applicant has been specified under
paragraph (b) of this section must include an application data sheet
under § 1.76 specifying the applicant in the applicant information
section (§ 1.76(b)(7)) and comply with §§ 3.71 and 3.73 of
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 182 |
this title.
(d) Even if the whole or a part interest in the invention or in the
patent to be issued is assigned or obligated to be assigned, an oath or
declaration must be executed by the actual inventor or each actual
joint inventor, except as provided for in § 1.64. See § 1.64
concerning the execution of a substitute statement by an assignee,
person to whom the inventor is under an obligation to assign the
invention, or a person who otherwise shows sufficient proprietary
interest in the matter.
(e) If a patent is granted on an application filed under this
section by a person other than the inventor, the patent shall be
granted to the real party in interest. Otherwise, the patent may be
issued to the assignee or jointly to the inventor and the assignee as
provided in § 3.81. Where a real party in interest has filed an
application under § 1.46, the applicant shall notify the Office of
any change in the real party in interest no later than payment of the
issue fee. The Office will treat the absence of such a notice as an
indication that there has been no change in the real party in interest.
(f) The Office may publish notice of the filing of the application
by a person who otherwise shows sufficient proprietary interest in the
Official Gazette.
§ 1.47 [Removed and Reserved]
. 20. Section 1.47 is removed and reserved.
. 21. Section 1.48 is revised to read as follows:
§ 1.48 Correction of inventorship pursuant to 35 U.S.C. 116 or
correction of the name or order of names in a patent application, other
than a reissue application.
(a) Nonprovisional application: Any request to correct or change
the inventorship once the inventorship has been established under
§ 1.41 must include:
(1) An application data sheet in accordance with § 1.76 that
identifies each inventor by his or her legal name; and
(2) The processing fee set forth in § 1.17(i).
(b) Inventor's oath or declaration for added inventor: An oath or
declaration as required by § 1.63, or a substitute statement in
compliance with § 1.64, will be required for any actual inventor
who has not yet executed such an oath or declaration.
(c) [Reserved]
(d) Provisional application. Once a cover sheet as prescribed by
§ 1.51(c)(1) is filed in a provisional application, any request to
correct or change the inventorship must include:
(1) A request, signed by a party set forth in § 1.33(b), to
correct the inventorship that identifies each inventor by his or her
legal name; and
(2) The processing fee set forth in § 1.17(q).
(e) Additional information may be required. The Office may require
such other information as may be deemed appropriate under the
particular circumstances surrounding the correction of inventorship.
(f) Correcting or updating the name of an inventor: Any request to
correct or update the name of the inventor or a joint inventor, or the
order of the names of joint inventors, in a nonprovisional application
must include:
(1) An application data sheet in accordance with § 1.76 that
identifies each inventor by his or her legal name in the desired order;
and
(2) The processing fee set forth in § 1.17(i).
(g) Reissue applications not covered. The provisions of this
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 183 |
section do not apply to reissue applications. See §§ 1.171 and
1.175 for correction of inventorship in a patent via a reissue
application.
(h) Correction of inventorship in patent. See § 1.324 for
correction of inventorship in a patent.
(i) Correction of inventorship in an interference or contested case
before the Patent Trial and Appeal Board. In an interference under part
41, subpart D, of this title, a request for correction of inventorship
in an application must be in the form of a motion under § 41.121(a)(2)
of this title. In a contested case under part 42, subpart
D, of this title, a request for correction of inventorship in an
application must be in the form of a motion under § 42.22 of this
title. The motion under § 41.121(a)(2) or 42.22 of this title must
comply with the requirements of paragraph (a) of this section.
. 22. Section 1.51 is amended by revising paragraph (b)(2) to read as
follows
§ 1.51 General requisites of an application.
* * * * *
(b) * * *
(2) The inventor's oath or declaration, see §§ 1.63 and
1.64;
* * * * *
. 23. Section 1.52 is amended by revising the heading of paragraph (b)
and paragraphs (c) and (d) to read as follows:
§ 1.52 Language, paper, writing, margins, compact disc
specifications.
* * * * *
(b) The application (specification, including the claims, drawings,
and the inventor's oath or declaration) or supplemental examination or
reexamination proceeding and any amendments or corrections to the
application or reexamination proceeding.
* * * * *
(c) Interlineation, erasure, cancellation, or other alteration of
the application papers may be made before or after the signing of the
inventor's oath or declaration referring to those application papers,
provided that the statements in the inventor's oath or declaration
pursuant to § 1.63 remain applicable to those application papers. A
substitute specification (§ 1.125) may be required if the
application papers do not comply with paragraphs (a) and (b) of this
section.
(d) A nonprovisional or provisional application under 35 U.S.C. 111
may be in a language other than English.
(1) Nonprovisional application. If a nonprovisional application
under 35 U.S.C. 111(a) 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, and the processing fee set
forth in § 1.17(i) are required. If these items are not filed with
the application, the applicant will be notified and given a period of
time within which they must be filed in order to avoid abandonment.
(2) Provisional application. If a provisional application under 35
U.S.C. 111(b) is filed in a language other than English, an English
language translation of the non-English language provisional application
will not be required in the provisional application. See § 1.78(a) for the
requirements for claiming the benefit of such provisional application
in a nonprovisional application.
* * * * *
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 184 |
. 24. Section 1.53 is amended by revising the introductory text of
paragraphs (c) and (c)(3), and paragraphs (d)(2)(iv), (f), and (h) to
read as follows:
§ 1.53 Application number, filing date, and completion of
application.
* * * * *
(c) Application filing requirements - Provisional application. The
filing date of a provisional application is the date on which a
specification as prescribed by 35 U.S.C. 112(a), and any drawing
required by § 1.81(a) are filed in the Patent and Trademark Office.
No amendment, other than to make the provisional application comply
with the patent statute and all applicable regulations, may be made to
the provisional application after the filing date of the provisional
application.
* * * * *
(3) A provisional application filed under paragraph (c) of this
section may be converted to a nonprovisional application filed under
paragraph (b) of this section and accorded the original filing date of
the provisional application. The conversion of a provisional
application to a nonprovisional application will not result in either
the refund of any fee properly paid in the provisional application or
the application of any such fee to the filing fee, or any other fee,
for the nonprovisional application. Conversion of a provisional
application to a nonprovisional application under this paragraph will
result in the term of any patent to issue from the application being
measured from at least the filing date of the provisional application
for which conversion is requested. Thus, applicants should consider
avoiding this adverse patent term impact by filing a nonprovisional
application claiming the benefit of the provisional application under
35 U.S.C. 119(e) (rather than converting the provisional application
into a nonprovisional application pursuant to this paragraph). A
request to convert a provisional application to a nonprovisional
application must be accompanied by the fee set forth in § 1.17(i)
and an amendment including at least one claim as prescribed by 35
U.S.C. 112(b), unless the provisional application under paragraph (c)
of this section otherwise contains at least one claim as prescribed by
35 U.S.C. 112(b). The nonprovisional application resulting from
conversion of a provisional application must also include the filing
fee, search fee, and examination fee for a nonprovisional application,
the inventor's oath or declaration, and the surcharge required by
§ 1.16(f) if either the basic filing fee for a nonprovisional application
or the inventor's oath or declaration was not present on the filing
date accorded the resulting nonprovisional application (i.e., the
filing date of the original provisional application). A request to
convert a provisional application to a nonprovisional application must
also be filed prior to the earliest of:
* * * * *
(d) * * *
(2) * * *
(iv) Includes the request for an application under this paragraph,
will utilize the file jacket and contents of the prior application,
including the specification, drawings and the inventor's oath or
declaration from the prior application, to constitute the new
application, and will be assigned the application number of the prior
application for identification purposes; and
* * * * *
(f) Completion of application subsequent to filing - Nonprovisional
(including continued prosecution or reissue) application.
(1) If an application which has been accorded a filing date
pursuant to paragraph (b) or (d) of this section does not include the
basic filing fee, the search fee, or the examination fee, or if an
application which has been accorded a filing date pursuant to paragraph
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 185 |
(b) of this section does not include the inventor's oath or declaration
(§ 1.63, § 1.64, § 1.162 or § 1.175), and the applicant
has provided a correspondence address (§ 1.33(a)), the applicant
will be notified and given a period of time within which to pay the
basic filing fee, search fee, and examination fee, and pay the
surcharge if required by § 1.16(f) to avoid abandonment.
(2) If an application which has been accorded a filing date
pursuant to paragraph (b) of this section does not include the basic
filing fee, the search fee, the examination fee, or the inventor's oath
or declaration, and the applicant has not provided a correspondence
address (§ 1.33(a)), the applicant has two months from the filing
date of the application within which to pay the basic filing fee,
search fee, and examination fee, and pay the surcharge required by
§ 1.16(f) to avoid abandonment.
(3) The inventor's oath or declaration in an application under
§ 1.53(b) must also be filed within the period specified in
paragraph (f)(1) or (f)(2) of this section, except that the filing of
the inventor's oath or declaration may be postponed until the
application is otherwise in condition for allowance under the
conditions specified in paragraphs (f)(3)(i) and (f)(3)(ii) of this
section.
(i) The application must be an original (non-reissue) application
that contains an application data sheet in accordance with § 1.76
identifying:
(A) Each inventor by his or her legal name;
(B) A mailing address where the inventor customarily receives mail,
and residence, if an inventor lives at a location which is different
from where the inventor customarily receives mail, for each inventor.
(ii) The applicant must file an oath or declaration in compliance
with § 1.63, or a substitute statement in compliance with §
1.64, executed by or with respect to each actual inventor no later than
the expiration of the time period set in the "Notice of Allowability"
to avoid abandonment, when the applicant is notified in a "Notice of
Allowability" that an application is otherwise in condition for
allowance. The time period set in a "Notice of Allowability" is not
extendable. See § 1.136(c). The Office may dispense with the notice
provided for in paragraph (f)(1) of this section if an oath or
declaration under § 1.63, or a substitute statement under § 1.64,
executed by or with respect to each actual inventor has been
filed before the application is in condition for allowance.
(4) If the excess claims fees required by § 1.16(h) and (i) and
multiple dependent claim fee required by § 1.16(j) are not paid on
filing or on later presentation of the claims for which the excess
claims or multiple dependent claim fees are due, the fees required by
§ 1.16(h), (i) and (j) must be paid or the claims canceled by
amendment prior to the expiration of the time period set for reply by
the Office in any notice of fee deficiency. If the application size fee
required by § 1.16(s) (if any) is not paid on filing or on later
presentation of the amendment necessitating a fee or additional fee
under § 1.16(s), the fee required by § 1.16(s) must be paid
prior to the expiration of the time period set for reply by the Office
in any notice of fee deficiency in order to avoid abandonment.
(5) This paragraph applies to continuation or divisional
applications under paragraphs (b) or (d) of this section and to
continuation-in-part applications under paragraph (b) of this section.
See § 1.63(d) concerning the submission of a copy of the inventor's oath
or declaration from the prior application for a continuing application
under paragraph (b) of this section.
(6) If applicant does not pay the basic filing fee during the
pendency of the application, the Office may dispose of the application.
* * * * *
(h) Subsequent treatment of application - Nonprovisional (including
continued prosecution) application. An application for a patent filed
under paragraphs (b) or (d) of this section will not be placed on the
files for examination until all its required parts, complying with the
rules relating thereto, are received, except that the inventor's oath
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 186 |
or declaration may be filed when the application is otherwise in
condition for allowance pursuant to paragraph (f)(3) of this section
and minor informalities may be waived subject to subsequent correction
whenever required.
* * * * *
. 25. Section 1.55 is amended by revising the introductory text of
paragraph (a)(1)(i), the introductory text of paragraph (c), and
paragraph (d)(1)(ii) to read as follows:
§ 1.55 Claim for foreign priority.
(a) * * *
(1)(i) In an original application filed under 35 U.S.C. 111(a), the
claim for foreign priority must be presented in an application data
sheet (§ 1.76(b)(6)) during the pendency of the application, and
within the later of four months from the actual filing date of the
application or sixteen months from the filing date of the prior foreign
application. This time period is not extendable. The claim must
identify the foreign application for which priority is claimed, as well
as any foreign application for the same subject matter and having a
filing date before that of the application for which priority is
claimed, by specifying the application number, country (or intellectual
property authority), day, month, and year of its filing. The time
periods in this paragraph do not apply in an application under 35
U.S.C. 111(a) if the application is:
* * * * *
(c) Unless such claim is accepted in accordance with the provisions
of this paragraph, any claim for priority under 35 U.S.C. 119(a)-(d) or
365(a) not presented in an application data sheet (§ 1.76(b)(6))
within the time period provided by paragraph (a) of this section is
considered to have been waived. If a claim for priority under 35 U.S.C.
119(a)-(d) or 365(a) is presented after the time period provided by
paragraph (a) of this section, the claim may be accepted if the claim
identifying the prior foreign application by specifying its application
number, country (or intellectual property authority), and the day,
month, and year of its filing was unintentionally delayed. A petition
to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or
365(a) must be accompanied by:
* * * * *
(d)(1) * * *
(ii) The foreign application is identified in an application data
sheet (§ 1.76(b)(6)); and
* * * * *
. 26. Section 1.56 is amended by revising paragraph (c)(3) to read as
follows:
§ 1.56 Duty to disclose information material to patentability.
* * * * *
(c) * * *
(3) Every other person who is substantively involved in the
preparation or prosecution of the application and who is associated
with the inventor, the applicant, an assignee, or anyone to whom there
is an obligation to assign the application.
* * * * *
. 27. Section 1.59 is amended by revising paragraph (a)(2) to read as
follows:
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 187 |
§ 1.59 Expungement of information or copy of papers in application
file.
(a) * * *
(2) Information forming part of the original disclosure (i.e.,
written specification including the claims, drawings, and any
preliminary amendment present on the filing date of the application)
will not be expunged from the application file.
* * * * *
. 28. Section 1.63 is revised to read as follows:
§ 1.63 Inventor's oath or declaration.
(a) The inventor, or each individual who is a joint inventor of a
claimed invention, in an application for patent must execute an oath or
declaration directed to the application, except as provided for in
§ 1.64. An oath or declaration under this section must:
(1) Identify the inventor or joint inventor executing the oath or
declaration by his or her legal name;
(2) Identify the application to which it is directed;
(3) Include a statement that the person executing the oath or
declaration believes the named inventor or joint inventor to be the
original inventor or an original joint inventor of a claimed invention
in the application for which the oath or declaration is being
submitted; and
(4) State that the application was made or was authorized to be
made by the person executing the oath or declaration.
(b) Unless the following information is supplied in an application
data sheet in accordance with § 1.76, the oath or declaration must
also identify:
(1) Each inventor by his or her legal name; and
(2) A mailing address where the inventor customarily receives mail,
and residence, if an inventor lives at a location which is different
from where the inventor customarily receives mail, for each inventor.
(c) A person may not execute an oath or declaration for an
application unless that person has reviewed and understands the
contents of the application, including the claims, and is aware of the
duty to disclose to the Office all information known to the person to
be material to patentability as defined in § 1.56. There is no
minimum age for a person to be qualified to execute an oath or
declaration, but the person must be competent to execute, i.e.,
understand, the document that the person is executing.
(d)(1) A newly executed oath or declaration under § 1.63, or
substitute statement under § 1.64, is not required under
§ 1.51(b)(2) and § 1.53(f) or § 1.497 for an inventor in a
continuing application that claims the benefit under 35 U.S.C. 120,
121, or 365(c) in compliance with § 1.78 of an earlier-filed
application, provided that an oath or declaration in compliance with
this section, or substitute statement under § 1.64, was executed by
or with respect to such inventor and was filed in the earlier-filed
application, and a copy of such oath, declaration, or substitute
statement showing the signature or an indication thereon that it was
executed, is submitted in the continuing application.
(2) The inventorship of a continuing application filed under 35
U.S.C. 111(a) is the inventor or joint inventors specified in the
application data sheet filed before or concurrently with the copy of
the inventor's oath or declaration from the earlier-filed application.
If an application data sheet is not filed before or concurrently with
the copy of the inventor's oath or declaration from the earlier-filed
application, the inventorship is the inventorship set forth in the copy
of the inventor's oath or declaration from the earlier-filed
application, unless it is accompanied by a statement signed pursuant to
§ 1.33(b) stating the name of each inventor in the continuing application.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 188 |
(3) Any new joint inventor named in the continuing application must
provide an oath or declaration in compliance with this section, except
as provided for in § 1.64.
(e)(1) An assignment may also serve as an oath or declaration
required by this section if the assignment as executed:
(i) Includes the information and statements required under
paragraphs (a) and (b) of this section; and
(ii) A copy of the assignment is recorded as provided for in part 3
of this chapter.
(2) Any reference to an oath or declaration under this section
includes an assignment as provided for in this paragraph.
(f) With respect to an application naming only one inventor, any
reference to the inventor's oath or declaration in this chapter
includes a substitute statement executed under § 1.64. With respect
to an application naming more than one inventor, any reference to the
inventor's oath or declaration in this chapter means the oaths,
declarations, or substitute statements that have been collectively
executed by or with respect to all of the joint inventors, unless
otherwise clear from the context.
(g) An oath or declaration under this section, including the
statement provided for in paragraph (e) of this section, must be
executed (i.e., signed) in accordance either with § 1.66 or with an
acknowledgment that any willful false statement made in such
declaration or statement is punishable under 18 U.S.C. 1001 by fine or
imprisonment of not more than five (5) years, or both.
(h) An oath or declaration filed at any time pursuant to 35 U.S.C.
115(h)(1) will be placed in the file record of the application or
patent, but may not necessarily be reviewed by the Office. Any request
for correction of the named inventorship must comply with § 1.48 in
an application and § 1.324 in a patent.
. 29. Section 1.64 is revised to read as follows:
§ 1.64 Substitute statement in lieu of an oath or declaration.
(a) An applicant under § 1.43, 1.45 or 1.46 may execute a
substitute statement in lieu of an oath or declaration under § 1.63
if the inventor is deceased, is under a legal incapacity, has refused
to execute the oath or declaration under § 1.63, or cannot be found
or reached after diligent effort.
(b) A substitute statement under this section must:
(1) Comply with the requirements of § 1.63(a), identifying the
inventor or joint inventor with respect to whom a substitute statement
in lieu of an oath or declaration is executed, and stating upon
information and belief the facts which such inventor is required to
state;
(2) Identify the person executing the substitute statement and the
relationship of such person to the inventor or joint inventor with
respect to whom the substitute statement is executed, and unless such
information is supplied in an application data sheet in accordance with
§ 1.76, the residence and mailing address of the person signing the
substitute statement;
(3) Identify the circumstances permitting the person to execute the
substitute statement in lieu of an oath or declaration under § 1.63,
namely whether the inventor is deceased, is under a legal
incapacity, cannot be found or reached after a diligent effort was
made, or has refused to execute the oath or declaration under § 1.63; and
(4) Unless the following information is supplied in an application
data sheet in accordance with § 1.76, also identify:
(i) Each inventor by his or her legal name; and
(ii) The last known mailing address where the inventor customarily
receives mail, and last known residence, if an inventor lives at a
location which is different from where the inventor customarily
receives mail, for each inventor who is not deceased or under a legal
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 189 |
incapacity.
(c) A person may not execute a substitute statement provided for in
this section for an application unless that person has reviewed and
understands the contents of the application, including the claims, and
is aware of the duty to disclose to the Office all information known to
the person to be material to patentability as defined in § 1.56.
(d) Any reference to an inventor's oath or declaration includes a
substitute statement provided for in this section.
(e) A substitute statement under this section must contain an
acknowledgment that any willful false statement made in such statement
is punishable under section 1001 of title 18 by fine or imprisonment of
not more than 5 years, or both.
(f) A nonsigning inventor or legal representative may subsequently
join in the application by submitting an oath or declaration under
§ 1.63. The submission of an oath or declaration by a nonsigning
inventor or legal representative in an application filed under § 1.43,
1.45 or 1.46 will not permit the nonsigning inventor or legal
representative to revoke or grant a power of attorney.
. 30. Section 1.66 is revised to read as follows:
§ 1.66 Statements under oath.
An oath or affirmation may be made before any person within the
United States authorized by law to administer oaths. An oath made in a
foreign country may be made before any diplomatic or consular officer
of the United States authorized to administer oaths, or before any
officer having an official seal and authorized to administer oaths in
the foreign country in which the applicant may be, whose authority
shall be proved by a certificate of a diplomatic or consular officer of
the United States, or by an apostille of an official designated by a
foreign country which, by treaty or convention, accords like effect to
apostilles of designated officials in the United States. The oath shall
be attested in all cases in this and other countries, by the proper
official seal of the officer before whom the oath or affirmation is
made. Such oath or affirmation shall be valid as to execution if it
complies with the laws of the State or country where made. When the
person before whom the oath or affirmation is made in this country is
not provided with a seal, his official character shall be established
by competent evidence, as by a certificate from a clerk of a court of
record or other proper officer having a seal.
. 31. Section 1.67 is revised to read as follows:
§ 1.67 Supplemental oath or declaration.
(a) The applicant may submit an inventor's oath or declaration
meeting the requirements of § 1.63, § 1.64, or § 1.162 to
correct any deficiencies or inaccuracies present in an earlier-filed
inventor's oath or declaration. Deficiencies or inaccuracies due to the
failure to meet the requirements of § 1.63(b) in an oath or
declaration may be corrected with an application data sheet in
accordance with § 1.76, except that any correction of inventorship
must be pursuant to § 1.48.
(b) A supplemental inventor's oath or declaration under this
section must be executed by the person whose inventor's oath or
declaration is being withdrawn, replaced, or otherwise corrected.
(c) The Office will not require a person who has executed an oath
or declaration in compliance with 35 U.S.C. 115 and § 1.63 or 1.162
for an application to provide an additional inventor's oath or
declaration for the application.
(d) No new matter may be introduced into a nonprovisional
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 190 |
application after its filing date even if an inventor's oath or
declaration is filed to correct deficiencies or inaccuracies present in
the earlier-filed inventor's oath or declaration.
. 32. Section 1.76 is amended by revising paragraphs (a), (b)(1), (b)(3),
(b)(5), (b)(7), (c), and (d), and adding new paragraph (e) to read as
follows:
§ 1.76 Application data sheet.
(a) Application data sheet: An application data sheet is a sheet or
sheets, that may be submitted in a provisional application under 35
U.S.C. 111(b), a nonprovisional application under 35 U.S.C. 111(a), or
a national stage application under 35 U.S.C. 371, and must be submitted
when required by § 1.55 or 1.78 to claim priority to or the benefit
of a prior-filed application under 35 U.S.C. 119, 120, 121, or 365. An
application data sheet must be titled "Application Data Sheet." An
application data sheet must contain all of the section headings listed
in paragraph (b) of this section, except as provided in paragraph
(c)(2) 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 application for which it has been submitted.
(b) * * *
(1) Inventor information. This information includes the legal name,
residence, and mailing address of the inventor or each joint inventor.
* * * * *
(3) Application information. This information includes the title of
the invention, the total number of drawing sheets, a suggested drawing
figure for publication (in a nonprovisional application), any docket
number assigned to the application, the type of application (e.g.,
utility, plant, design, reissue, provisional), whether the application
discloses any significant part of the subject matter of an application
under a secrecy order pursuant to § 5.2 of this chapter (see §
5.2(c)), and, for plant applications, the Latin name of the genus and
species of the plant claimed, as well as the variety denomination.
* * * * *
(5) Domestic benefit information. This information includes the
application number, the filing date, the status (including patent
number if available), and relationship of each application for which a
benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c).
Providing this information in the application data sheet constitutes
the specific reference required by 35 U.S.C. 119(e) or 120, and
§ 1.78(a)(2) or § 1.78(a)(5).
* * * * *
(7) Applicant information: This information includes the name
(either natural person or juristic entity) and address of the legal
representative, assignee, person to whom the inventor is under an
obligation to assign the invention, or person who otherwise shows
sufficient proprietary interest in the matter who is the applicant
under § 1.43 or § 1.46. Providing assignment information in the
application data sheet does not substitute for compliance with any
requirement of part 3 of this chapter to have an assignment recorded by
the Office.
(c) Correcting and updating an application data sheet. (1)
Information in a previously submitted application data sheet,
inventor's oath or declaration under § 1.63, § 1.64 or § 1.67,
or otherwise of record, may be corrected or updated until payment
of the issue fee by a new application data sheet providing corrected or
updated information, except that inventorship changes must comply with
the requirements of § 1.48, foreign priority and domestic benefit
information changes must comply with §§ 1.55 and 1.78, and
correspondence address changes are governed by § 1.33(a).
(2) An application data sheet providing corrected or updated
information may include all of the sections listed in paragraph (b) of
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 191 |
this section or only those sections containing changed or updated
information. The application data sheet must include the section
headings listed in paragraph (b) of this section for each section
included in the application data sheet, and must identify the
information that is being changed, with underlining for insertions, and
strike-through or brackets for text removed, except that identification
of information being changed is not required for an application data
sheet included with an initial submission under 35 U.S.C. 371.
(d) Inconsistencies between application data sheet and other
documents. For inconsistencies between information that is supplied by
both an application data sheet under this section and other documents:
(1) The most recent submission will govern with respect to
inconsistencies as between the information provided in an application
data sheet, a designation of a correspondence address, or by the
inventor's oath or declaration, except that:
(i) The most recent application data sheet will govern with respect
to foreign priority (§ 1.55) or domestic benefit (§ 1.78)
claims; and
(ii) The naming of the inventorship is governed by § 1.41 and
changes to inventorship or the names of the inventors is governed by
§ 1.48.
(2) The information in the application data sheet will govern when
the inconsistent information is supplied at the same time by a
designation of correspondence address or the inventor's oath or
declaration.
(3) The Office will capture bibliographic information from the
application data sheet. The Office will generally not review the
inventor's oath or declaration to determine if the bibliographic
information contained therein is consistent with the bibliographic
information provided in an application data sheet. Incorrect
bibliographic information contained in an application data sheet may be
corrected as provided in paragraph (c)(1) of this section.
(e) Signature requirement. An application data sheet must be signed
in compliance with § 1.33(b). An unsigned application data sheet
will be treated only as a transmittal letter.
. 33. Section 1.77 is amended by revising paragraph (a)(6) to read as
follows:
§ 1.77 Arrangement of application elements.
(a) * * *
(6) The inventor's oath or declaration.
* * * * *
. 34. Section 1.78 is amended by revising paragraphs (a)(2)(iii),
(a)(5)(iii), (a)(5)(iv), and (c) to read as follows:
§ 1.78 Claiming benefit of earlier filing date and cross-
references to other applications.
(a) * * *
(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 (§ 1.76(b)(5)).
* * * * *
(5) * * *
(iii) If the later filed application is a nonprovisional
application, the reference required by this paragraph must be included
in an application data sheet (§ 1.76(b)(5)).
(iv) If the prior-filed provisional application was filed in a
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 192 |
language other than English and both an English-language translation of
the prior-filed provisional application and a statement that the
translation is accurate were not previously filed in the prior-filed
provisional application, applicant will be notified and given a period
of time within which to file, in the prior-filed provisional application,
the translation and the statement. If the notice is mailed in a pending
nonprovisional application, a timely reply to such a notice must
include the filing in the nonprovisional application of either a
confirmation that the translation and statement were filed in the
provisional application, or an application data sheet eliminating the
reference under this paragraph to the prior-filed provisional
application, or the nonprovisional application will be abandoned. The
translation and statement may be filed in the provisional application,
even if the provisional application has become abandoned.
* * * * *
(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 applicant 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.
. 35. Section 1.81 is amended by revising paragraph (a) to read as
follows:
§ 1.81 Drawings required in patent application.
(a) The applicant for a patent is required to furnish a drawing of
the invention where necessary for the understanding of the subject
matter sought to be patented; this drawing, or a high quality copy
thereof, must be filed with the application. Since corrections are the
responsibility of the applicant, the original drawing(s) should be
retained by the applicant for any necessary future correction.
* * * * *
. 36. Section 1.105 is amended by removing paragraph (a)(2), and
redesignating paragraphs (a)(3) and (a)(4) as paragraphs (a)(2) and
(a)(3), respectively.
. 37. Section 1.131 is amended by revising the introductory text of
paragraph (a) to read as follows:
§ 1.131 Affidavit or declaration of prior invention.
(a) When any claim of an application or a patent under
reexamination is rejected, the applicant or patent owner may submit an
appropriate oath or declaration to establish invention of the subject
matter of the rejected claim prior to the effective date of the
reference or activity on which the rejection is based. The effective
date of a U.S. patent, U.S. patent application publication, or
international application publication under PCT Article 21(2) is the
earlier of its publication date or date that it is effective as a
reference under 35 U.S.C. 102(e). Prior invention may not be
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 193 |
established under this section in any country other than the United
States, a NAFTA country, or a WTO member country. Prior invention may
not be established under this section before December 8, 1993, in a
NAFTA country other than the United States, or before January 1, 1996,
in a WTO member country other than a NAFTA country. Prior invention may
not be established under this section if either:
* * * * *
. 38. Section 1.136 is amended by revising paragraph (c)(1) to read as
follows:
§ 1.136 Extensions of time.
* * * * *
(c) * * *
(1) The period for submitting the inventor's oath or declaration;
* * * * *
. 39. Section 1.153 is amended by revising paragraph (b) to read as
follows:
§ 1.153 Title, description and claim, oath or declaration.
* * * * *
(b) The inventor's oath or declaration must comply with the
requirements of § 1.63, or comply with the requirements of § 1.64
for a substitute statement.
. 40. Section 1.154 is amended by revising paragraph (a)(6) to read as
follows:
§ 1.154 Arrangement of application elements in a design
application.
(a) * * *
(6) The inventor's oath or declaration (see § 1.153(b)).
* * * * *
. 41. Section 1.162 is revised to read as follows:
§ 1.162 Applicant, oath or declaration.
The inventor named for a plant patent application must be the
person who has invented or discovered and asexually reproduced the new
and distinct variety of plant for which a patent is sought. The
inventor's oath or declaration, in addition to the averments required
by § 1.63 or § 1.64, must state that the inventor has asexually
reproduced the plant. Where the plant is a newly found plant, the
inventor's oath or declaration must also state that it was found in a
cultivated area.
. 42. Section 1.163 is amended by revising paragraph (b)(6) to read as
follows:
§ 1.163 Specification and arrangement of application elements in a
plant application.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 194 |
* * * * *
(b) * * *
(6) The inventor's oath or declaration (§ 1.162).
* * * * *
. 43. Section 1.172 is revised to read as follows:
§ 1.172 Reissue applicant.
(a) The reissue applicant is the original patentee, or the current
patent owner if there has been an assignment. A reissue application
must be accompanied by the written consent of all assignees, if any,
currently owning an undivided interest in the patent. All assignees
consenting to the reissue must establish their ownership in the patent
by filing in the reissue application a submission in accordance with
the provisions of § 3.73(c) of this chapter.
(b) A reissue will be granted to the original patentee, his legal
representatives or assigns as the interest may appear.
. 44. Section 1.175 is revised to read as follows:
§ 1.175 Inventor's oath or declaration for a reissue application.
(a) The inventor's oath or declaration for a reissue application,
in addition to complying with the requirements of § 1.63, § 1.64,
or § 1.67, must also specifically identify at least one error
pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue
and state that the applicant believes the original patent to be wholly
or partly inoperative or invalid by reason of a defective specification
or drawing, or by reason of the patentee claiming more or less than the
patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the
claims of the patent (a basis for the reissue is the patentee claiming
less than the patentee had the right to claim in the patent), the
inventor's oath or declaration for a reissue application must identify
a claim that the application seeks tobroaden. A claim is a broadened claim
if the claim is broadened in any respect.
(c) The inventor, or each individual who is a joint inventor of a
claimed invention, in a reissue application must execute an oath or
declaration for the reissue application, except as provided for in
§ 1.64, and except that the inventor's oath or declaration for a
reissue application may be signed by the assignee of the entire
interest if:
(1) The application does not seek to enlarge the scope of the
claims of the original patent; or
(2) The application for the original patent was filed under § 1.46
by the assignee of the entire interest.
(d) If errors previously identified in the inventor's oath or
declaration for a reissue application pursuant to paragraph (a) of this
section are no longer being relied upon as the basis for reissue, the
applicant must identify an error being relied upon as the basis for
reissue.
(e) The inventor's oath or declaration for a reissue application
required by paragraph (a) of this section may be submitted under the
provisions of § 1.53(f), except that the provisions of § 1.53(f)(3)
do not apply to a reissue application.
(f)(1) The requirement for the inventor's oath or declaration for a
continuing reissue application that claims the benefit under 35 U.S.C.
120, 121, or 365(c) in compliance with § 1.78 of an earlier-filed
reissue application may be satisfied by a copy of the inventor's oath
or declaration from the earlier-filed reissue application, provided
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 195 |
that:
(i) The inventor, or each individual who is a joint inventor of a
claimed invention, in the reissue application executed an inventor's
oath or declaration for the earlier-filed reissue application, except
as provided for in § 1.64;
(ii) The continuing reissue application does not seek to enlarge
the scope of the claims of the original patent; or
(iii) The application for the original patent was filed under § 1.46
by the assignee of the entire interest.
(2) If all errors identified in the inventor's oath or declaration
from the earlier-filed reissue application are no longer being relied
upon as the basis for reissue, the applicant must identify an error
being relied upon as the basis for reissue.
(g) An oath or declaration filed at any time pursuant to 35 U.S.C.
115(h)(1), will be placed in the file record of the reissue
application, but may not necessarily be reviewed by the Office.
. 45. Section 1.211 is amended by revising paragraph (c) to read as
follows:
§ 1.211 Publication of applications.
* * * * *
(c) An application filed under 35 U.S.C. 111(a) will not be
published until it includes the basic filing fee (§ 1.16(a) or
§ 1.16(c)) and any English translation required by § 1.52(d).
The Office may delay publishing any application until it includes any
application size fee required by the Office under § 1.16(s) or
§ 1.492(j), a specification having papers in compliance with § 1.52
and an abstract (§ 1.72(b)), drawings in compliance with § 1.84,
a sequence listing in compliance with §§ 1.821 through 1.825
(if applicable), and the inventor's oath or declaration or
application data sheet containing the information specified in § 1.63(b).
* * * * *
. 46. Section 1.215 is amended by revising paragraphs (a) through (c) to
read as follows:
§ 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 specification and
drawings deposited on the filing date of the application, as well as
the application data sheet and/or the inventor's oath or declaration.
The patent application publication may also be based upon amendments to
the specification (other than the abstract or the claims) that are
reflected in a substitute specification under § 1.125(b),
amendments to the abstract under § 1.121(b), amendments to the
claims that are reflected in a complete claim listing under
§ 1.121(c), and amendments to the drawings under § 1.121(d), provided
that such substitute specification or amendment is submitted in
sufficient time to be entered into the Office file wrapper of the
application before technical preparations for publication of the
application have begun. Technical preparations for publication of an
application generally begin four months prior to the projected date of
publication. The patent application publication of an application that
has entered the national stage under 35 U.S.C. 371 may also include
amendments made during the international stage. See paragraph (c) of
this section for publication of an application based upon a copy of the
application submitted via the Office electronic filing system.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 196 |
(b) The patent application publication will include the name of the
assignee, person to whom the inventor is under an obligation to assign
the invention, or person who otherwise shows sufficient proprietary
interest in the matter if that information is provided in the
application data sheet in an application filed under § 1.46.
Assignee information may be included on the patent application
publication in other applications if the assignee information is
provided in an application data sheet submitted in sufficient time to
be entered into the Office file wrapper of the application before
technical preparations for publication of the application have begun.
Providing assignee information in the application data sheet does not
substitute for compliance with any requirement of part 3 of this
chapter to have an assignment recorded by the Office.
(c) At applicant's option, the patent application publication will
be based upon the copy of the application (specification, drawings, and
the application data sheet and/or the inventor's oath or declaration)
as amended, 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 fourteen months of the
earliest filing date for which a benefit is sought under title 35,
United States Code, whichever is later.
* * * * *
. 47. Section 1.321 is amended by revising paragraph (b) to read as
follows:
§ 1.321 Statutory disclaimers, including terminal disclaimers.
* * * * *
(b) An applicant may disclaim or dedicate to the public the entire
term, or any terminal part of the term, of a patent to be granted. Such
terminal disclaimer is binding upon the grantee and its successors or
assigns. The terminal disclaimer, to be recorded in the Patent and
Trademark Office, must:
(1) Be signed by the applicant or an attorney or agent of record;
(2) Specify the portion of the term of the patent being disclaimed;
(3) State the present extent of applicant's ownership interest in
the patent to be granted; and
(4) Be accompanied by the fee set forth in § 1.20(d).
* * * * *
. 48. Section 1.324 is revised to read as follows:
§ 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 an inventor is not named in an issued patent, 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.
(b) Any request to correct inventorship of a patent pursuant to
paragraph (a) of this section must be accompanied by:
(1) A statement from each person who is being added as an inventor
and each person who is currently named as an inventor either agreeing
to the change of inventorship or stating that he or she has no
disagreement in regard to the requested change;
(2) A statement from all assignees of the parties submitting a
statement under paragraph (b)(1) of this section agreeing to the change
of inventorship in the patent, which statement must comply with the
requirements of § 3.73(c) of this chapter; and
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 197 |
(3) The fee set forth in § 1.20(b).
(c) For correction of inventorship in an application, see § 1.48.
(d) In an interference under part 41, subpart D, of this title, a
request for correction of inventorship in a patent must be in the form
of a motion under § 41.121(a)(2) of this title. In a contested case
under part 42, subpart D, of this title, a request for correction of
inventorship in a patent must be in the form of a motion under § 42.22
of this title. The motion under § 41.121(a)(2) or § 42.22
of this title must comply with the requirements of this section.
. 49. Section 1.414 is amended by revising paragraph (c)(2) to read as
follows:
§ 1.414 The United States Patent and Trademark Office as a
Designated Office or Elected Office.
* * * * *
(c) * * *
(2) National stage processing for international applications
entering the national stage under 35 U.S.C. 371.
. 50. Section 1.421 is revised to read as follows:
§ 1.421 Applicant for international application.
(a) Only residents or nationals of the United States of America may
file international applications in the United States Receiving Office.
If an international application does not include an applicant who is
indicated as being a resident or national of the United States of
America, and at least one applicant:
(1) Has indicated a residence or nationality in a PCT Contracting
State, or
(2) Has no residence or nationality indicated, applicant will be so
notified and, if the international application includes a fee amount
equivalent to that required by § 1.445(a)(4), the international
application will be forwarded for processing to the International
Bureau acting as a Receiving Office (see also § 1.412(c)(6)).
(b) Although the United States Receiving Office will accept
international applications filed by any applicant who is a resident or
national of the United States of America for international processing,
for the purposes of the designation of the United States, an
international application will be accepted by the Patent and Trademark
Office for the national stage only if the applicant is the inventor or
other person as provided in § 1.422 or § 1.424. Joint inventors
must jointly apply for an international application.
(c) A registered attorney or agent of the applicant may sign the
international application Request and file the international
application for the applicant. A separate power of attorney from each
applicant may be required.
(d) Any indication of different applicants for the purpose of
different Designated Offices must be shown on the Request portion of
the international application.
(e) Requests for changes in the indications concerning the
applicant, agent, or common representative of an international
application shall be made in accordance with PCT Rule 92bis and may be
required to be signed by all applicants.
(f) Requests for withdrawals of the international application,
designations, priority claims, the Demand, or elections shall be made
in accordance with PCT Rule 90bis and must be signed by all applicants.
A separate power of attorney from the applicants will be required for
the purposes of any request for a withdrawal in accordance with PCT
Rule 90bis which is not signed by all applicants.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 198 |
. 51. Section 1.422 is revised to read as follows:
§ 1.422 Legal representative as applicant in an international
application.
If an inventor is deceased or under legal incapacity, the legal
representative of the inventor may be an applicant in an international
application which designates the United States of America.
§ 1.423 [Removed and Reserved]
. 52. Section 1.423 is removed and reserved.
. 53. Section 1.424 is added to read as follows:
§ 1.424 Assignee, obligated assignee, or person having sufficient
proprietary interest as applicant in an international application.
(a) A person to whom the inventor has assigned or is under an
obligation to assign the invention may be an applicant in an
international application which designates the United States of
America. A person who otherwise shows sufficient proprietary interest
in the matter may be an applicant in an international application which
designates the United States of America on proof of the pertinent facts
and a showing that such action is appropriate to preserve the rights of
the parties.
(b) Neither any showing required under paragraph (a) of this
section nor documentary evidence of ownership or proprietary interest
will be required or considered by the Office in the international
stage, but will be required in the national stage in accordance with
the conditions and requirements of § 1.46.
. 54. Section 1.431 is amended by revising paragraph (b)(3)(iii) to read
as follows:
§ 1.431 International application requirements.
* * * * *
(b) * * *
(3) * * *
(iii) The name of the applicant, as prescribed (note §§ 1.421, 1.422,
and 1.424);
* * * * *
. 55. Section 1.491 is amended by revising the section heading and
paragraph (b), and adding a new paragraph (c), to read as follows:
§ 1.491 National stage commencement, entry, and fulfillment.
* * * * *
(b) An international application enters the national stage when the
applicant has filed the documents and fees required by 35 U.S.C.
371(c)(1) and (c)(2) within the period set in § 1.495.
(c) An international application fulfills the requirements of 35
U.S.C. 371 when the national stage has commenced under 35 U.S.C. 371(b)
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 199 |
or (f) and all applicable requirements of 35 U.S.C. 371 have been
satisfied.
. 56. Section 1.492 is amended by revising paragraph (h) to read as
follows:
§ 1.492 National stage fees.
* * * * *
(h) Surcharge for filing any of the search fee, the examination
fee, or the inventor's oath or declaration after the date of the
commencement of the national stage (§ 1.491(a)) pursuant to 1.495(c)
By a small entity (§ 1.27(a)) $65.00
By other than a small entity. $130.00
* * * * *
. 57. Section 1.495 is amended by revising paragraphs (a), (c), (g), and
(h) to read as follows:
§ 1.495 Entering the national stage in the United States of
America.
(a) The applicant in an international application must fulfill the
requirements of 35 U.S.C. 371 within the time periods set forth in
paragraphs (b) and (c) of this section in order to prevent the
abandonment of the international application as to the United States of
America. The thirty-month time period set forth in paragraphs (b), (c),
(d), (e) and (h) of this section may not be extended.
* * * * *
(c)(1) If applicant complies with paragraph (b) of this section
before expiration of thirty months from the priority date, the Office
will notify the applicant if he or she has omitted any of:
(i) A translation of the international application, as filed, into
the English language, if it was originally filed in another language
and if any English language translation of the publication of the
international application previously submitted under 35 U.S.C. 154(d)
(§ 1.417) is not also a translation of the international
application as filed (35 U.S.C. 371(c)(2));
(ii) The inventor's oath or declaration (35 U.S.C. 371(c)(4) and
§ 1.497), if a declaration of inventorship in compliance with
§ 1.63 has not been previously submitted in the international application
under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule
26ter.1;
(iii) The search fee set forth in § 1.492(b);
(iv) The examination fee set forth in § 1.492(c); and
(v) Any application size fee required by § 1.492(j).
(2) A notice under paragraph (c)(1) of this section will set a time
period within which applicant must provide any omitted translation,
search fee set forth in § 1.492(b), examination fee set forth in
§ 1.492(c), and any application size fee required by § 1.492(j)
in order to avoid abandonment of the application.
(3) The inventor's oath or declaration must also be filed within
the period specified in paragraph (c)(2) of this section, except that
the filing of the inventor's oath or declaration may be postponed until
the application is otherwise in condition for allowance under the
conditions specified in paragraphs (c)(3)(i) through (c)(3)(iii) of
this section.
(i) The application contains an application data sheet in
accordance with § 1.76 filed prior to the expiration of the time
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 200 |
period set in any notice under paragraph (c)(1) identifying:
(A) Each inventor by his or her legal name;
(B) A mailing address where the inventor customarily receives mail,
and residence, if an inventor lives at a location which is different
from where the inventor customarily receives mail, for each inventor.
(ii) The applicant must file an oath or declaration in compliance
with § 1.63, or substitute statement in compliance with § 1.64,
executed by or with respect to each actual inventor no later than the
expiration of the time period set in the "Notice of Allowability" to
avoid abandonment, when the applicant is notified in a "Notice of
Allowability" that an application is otherwise in condition for
allowance. The time period set in a "Notice of Allowability" is not
extendable. See § 1.136(c). The Office may dispense with the notice
provided for in paragraph (c)(1) of this section if an oath or
declaration under § 1.63, or substitute statement under § 1.64,
executed by or with respect to each actual inventor has been filed
before the application is in condition for allowance.
(iii) An international application in which the basic national fee
under 35 U.S.C. 41(a)(1)(F) has been paid and for which an application
data sheet in accordance with § 1.76 has been filed may be treated
as complying with 35 U.S.C. 371 for purposes of eighteen-month
publication under 35 U.S.C. 122(b) and § 1.211 et seq.
(4) The payment of the processing fee set forth in § 1.492(i)
is required for acceptance of an English translation later than the
expiration of thirty months after the priority date. The payment of the
surcharge set forth in § 1.492(h) is required for acceptance of any
of the search fee, the examination fee, or the inventor's oath or
declaration after the date of the commencement of the national stage
(§ 1.491(a)).
(5) A "Sequence Listing" need not be translated if the "Sequence
Listing" complies with PCT Rule 12.1(d) and the description complies
with PCT Rule 5.2(b).
* * * * *
(g) The documents and fees submitted under paragraphs (b) and (c)
of this section must be identified as a submission to enter the
national stage under 35 U.S.C. 371. If the documents and fees contain
conflicting indications as between an application under 35 U.S.C. 111
and a submission to enter the national stage under 35 U.S.C. 371, the
documents and fees will be treated as a submission to enter the
national stage under 35 U.S.C. 371.
(h) An international application becomes abandoned as to the United
States thirty months from the priority date if the requirements of
paragraph (b) of this section have not been complied with within thirty
months from the priority date.
. 58. Section 1.496 is revised to read as follows:
§ 1.496 Examination of international applications in the national
stage.
National stage applications having paid therein the search fee as
set forth in § 1.492(b)(1) and examination fee as set forth in
§ 1.492(c)(1) may be amended subsequent to the date of commencement
of national stage processing only to the extent necessary to eliminate
objections as to form or to cancel rejected claims. Such national stage
applications will be advanced out of turn for examination.
. 59. Section 1.497 is revised to read as follows:
§ 1.497 Inventor's oath or declaration under 35 U.S.C. 371(c)(4).
(a) When an applicant of an international application desires to
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 201 |
enter the national stage under 35 U.S.C. 371 pursuant to § 1.495,
and a declaration in compliance with § 1.63 has not been previously
submitted in the international application under PCT Rule 4.17(iv)
within the time limits provided for in PCT Rule 26ter.1, the applicant
must file the inventor's oath or declaration. The inventor, or each
individual who is a joint inventor of a claimed invention, in an
application for patent must execute an oath or declaration in
accordance with the conditions and requirements of § 1.63, except
as provided for in § 1.64.
(b) An oath or declaration under § 1.63 will be accepted as
complying with 35 U.S.C. 371(c)(4) if it complies with the requirements
of §§ 1.63(a), (c) and (g). A substitute statement under § 1.64
will be accepted as complying with 35 U.S.C. 371(c)(4) if it
complies with the requirements of §§ 1.64(b)(1), (c) and (e)
and identifies the person executing the substitute statement. If a
newly executed inventor's oath or declaration under § 1.63 or
substitute statement under § 1.64 is not required pursuant to § 1.63(d),
submission of the copy of the previously executed oath, declaration, or
substitute statement under § 1.63(d)(1) is required to comply with 35
U.S.C. 371(c)(4).
(c) If an oath or declaration under § 1.63, or substitute
statement under § 1.64, meeting the requirements of § 1.497(b)
does not also meet the requirements of § 1.63 or § 1.64, an
oath, declaration, substitute statement, or application data sheet in
accordance with § 1.76 to comply with § 1.63 or § 1.64 will
be required.
. 60. Section 1.530 is amended by revising paragraph (l)(1) to read as
follows:
§ 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.
* * * * *
(l) * * *
(1) When it appears in a patent being reexamined that the correct
inventor or inventors were not named, the Director may, on petition of
all the parties set forth in § 1.324(b)(1) and (b)(2), including
the assignees, and satisfactory proof of the facts and payment of the
fee set forth in § 1.20(b), or on order of a court before which
such matter is called in question, include in the reexamination
certificate to be issued under § 1.570 or § 1.997 an amendment
naming only the actual inventor or inventors. The petition must be
submitted as part of the reexamination proceeding and must satisfy the
requirements of § 1.324.
* * * * *
. 61. Section 1.730 is amended by revising paragraph (b)(1) to read as
follows:
§ 1.730 Applicant for extension of patent term; signature
requirements.
* * * * *
(b) * * *
(1) The patent owner in compliance with § 3.73(c) of this
chapter; or
* * * * *
PART 3 - ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 202 |
. 62. The authority citation for part 3 continues to read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).
. 63. Section 3.31 is amended by adding new paragraph (h) to read as
follows:
§ 3.31 Cover sheet content.
* * * * *
(h) The assignment cover sheet required by § 3.28 must contain
a conspicuous indication of an intent to utilize the assignment as the
required oath or declaration under § 1.63 of this chapter.
. 64. Section 3.71 is amended by revising paragraphs (a), (b), and (c) to
read as follows:
§ 3.71 Prosecution by assignee.
(a) Patents - conducting of prosecution. One or more assignees as
defined in paragraph (b) of this section may conduct prosecution of a
national patent application as the applicant under § 1.46 of this
title, or conduct prosecution of a supplemental examination or
reexamination proceeding, to the exclusion of the inventor or previous
applicant or patent owner. Conflicts between purported assignees are
handled in accordance with § 3.73(c)(3).
(b) Patents - assignee(s) who can prosecute. The assignee(s) who may
conduct either the prosecution of a national application for patent as
the applicant under § 1.46 of this title or a supplemental
examination or reexamination proceeding are:
(1) A single assignee. An assignee of the entire right, title and
interest in the application or patent, or
(2) Partial assignee(s) together or with inventor(s). All partial
assignees, or all partial assignees and inventors who have not assigned
their right, title and interest in the application or patent, who
together own the entire right, title and interest in the application or
patent. A partial assignee is any assignee having less than the entire
right, title and interest in the application or patent. The word
"assignee" as used in this chapter means with respect to patent
matters the single assignee of the entire right, title and interest in
the application or patent if there is such a single assignee, or all of
the partial assignees, or all of the partial assignee and inventors who
have not assigned their interest in the application or patent, who
together own the entire right, title and interest in the application or
patent.
(c) Patents - Becoming of record. An assignee becomes of record as
the applicant in a national patent application under § 1.46 of this
title, and in a supplemental examination or reexamination proceeding,
by filing a statement in compliance with § 3.73(c) that is signed
by a party who is authorized to act on behalf of the assignee.
* * * * *
. 65. Section 3.73 is revised to read as follows:
§ 3.73 Establishing right of assignee to take action.
(a) The original applicant is presumed to be the owner of an
application for an original patent, and any patent that may issue
therefrom, unless there is an assignment. The original applicant is
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 203 |
presumed to be the owner of a trademark application or registration,
unless there is an assignment.
(b) In order to request or take action in a trademark matter, the
assignee must establish its ownership of the trademark property of
paragraph (a) of this section to the satisfaction of the Director. The
establishment of ownership by the assignee may be combined with the
paper that requests or takes the action. Ownership is established by
submitting to the Office a signed statement identifying the assignee,
accompanied by either:
(1) Documentary evidence of a chain of title from the original
owner to the assignee (e.g., copy of an executed assignment). The
documents submitted to establish ownership may be required to be
recorded pursuant to § 3.11 in the assignment records of the Office
as a condition to permitting the assignee to take action in a matter
pending before the Office; or
(2) A statement specifying where documentary evidence of a chain of
title from the original owner to the assignee is recorded in the
assignment records of the Office (e.g., reel and frame number).
(c)(1) In order to request or take action in a patent matter, an
assignee who is not the original applicant must establish its ownership
of the patent property of paragraph (a) of this section to the
satisfaction of the Director. The establishment of ownership by the
assignee may be combined with the paper that requests or takes the
action. Ownership is established by submitting to the Office a signed
statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original
owner to the assignee (e.g., copy of an executed assignment). The
submission of the documentary evidence must be accompanied by a
statement affirming that the documentary evidence of the chain of title
from the original owner to the assignee was or concurrently is being
submitted for recordation pursuant to § 3.11; or
(ii) A statement specifying where documentary evidence of a chain
of title from the original owner to the assignee is recorded in the
assignment records of the Office (e.g., reel and frame number).
(2) If the submission is by an assignee of less than the entire
right, title and interest (e.g., more than one assignee
exists) the Office may refuse to accept the submission as an
establishment of ownership unless:
(i) Each assignee establishes the extent (by percentage) of its
ownership interest, so as to account for the entire right, title and
interest in the application or patent by all parties including
inventors; or
(ii) Each assignee submits a statement identifying the parties
including inventors who together own the entire right, title and
interest and stating that all the identified parties own the entire
right, title and interest.
(3) If two or more purported assignees file conflicting statements
under paragraph (c)(1) of this section, the Director will determine
which, if any, purported assignee will be permitted to control
prosecution of the application.
(d) The submission establishing ownership under paragraph (b) or
(c) of this section must show that the person signing the submission is
a person authorized to act on behalf of the assignee by:
(1) Including a statement that the person signing the submission is
authorized to act on behalf of the assignee;
(2) Being signed by a person having apparent authority to sign on
behalf of the assignee; or
(3) For patent matters only, being signed by a practitioner of
record.
PART 5 - SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND
FILE APPLICATIONS IN FOREIGN COUNTRIES
. 66. The authority citation for 37 CFR part 5 continues to read as
follows:
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 204 |
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).
. 67. Section 5.25 is amended by revising paragraphs (a)(3)(iii) and (b)
to read as follows:
§ 5.25 Petition for retroactive license.
(a) * * *
(3) * * *
(iii) An explanation of why the material was filed abroad through
error without the required license under § 5.11 first having been
obtained, and
* * * * *
(b) The explanation in paragraph (a) of this section must include a
showing of facts rather than a mere allegation of action through error.
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 should cover the period leading up to and including
each of the proscribed foreign filings.
* * * * *
PART 10 - REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK
OFFICE
. 68. The authority citation for 37 CFR part 10 continues to read as
follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 31,
32, 41.
. 69. Section 10.23 is amended by removing and reserving paragraph
(c)(11).
§ 10.23 Misconduct.
* * * * *
(c) * * *
(11) [Reserved]
* * * * *
PART 41 - PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND
INTERFERENCES
. 70. The authority citation for 37 CFR part 41 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 132,
133, 134, 135, 306, and 315.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 205 |
. 71. Section 41.9 is amended by revising paragraph (a) to read as
follows:
§ 41.9 Action by owner.
(a) Entire interest. An owner of the entire interest in an
application or patent involved in a Board proceeding may act in the
proceeding to the exclusion of the inventor (see §§ 3.71 and
3.73 of this title).
* * * * *
July 17, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
| Changes To Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act and To Revise Reexamination Fees; Final Rule |
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2011-0075]
RIN 0651-AC69
Changes To Implement the Supplemental Examination Provisions of
the Leahy-Smith America Invents Act and To Revise Reexamination Fees
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
revising the rules of practice in patent cases to implement the
supplemental examination provisions of the Leahy-Smith America Invents
Act (AIA). The supplemental examination provisions permit a patent
owner to request supplemental examination of a patent by the Office to
consider, reconsider, or correct information believed to be relevant to
the patent. These provisions could assist the patent owner in
addressing certain challenges to the enforceability of the patent
during litigation. The Office is also adjusting the fee for filing a
request for ex parte reexamination and setting a fee for petitions
filed in ex parte and inter partes reexamination proceedings to more
accurately reflect the cost of these processes.
DATES: Effective Date: The changes in this final rule take effect on
September 16, 2012.
Applicability Date: The changes in this final rule apply to any
patent issued before, on, or after September 16, 2012.
FOR FURTHER INFORMATION CONTACT: Cynthia L. Nessler, Senior Legal
Advisor ((571) 272-7724), Pinchus M. Laufer, Senior Legal Advisor
((571) 272-7726), or Kery Fries, Senior Legal Advisor ((571) 272-7757),
Office of Patent Legal Administration, Office of the Deputy
Commissioner for Patent Examination Policy.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: Section 12 of the AIA amends the patent
laws to provide that a patent owner may request supplemental
examination of a patent to consider, reconsider, or correct information
believed to be relevant to the patent. The supplemental examination
will determine whether the information presented in the request raises
a substantial new question of patentability. If the information
presented in the request raises a substantial new question of
patentability, the Office will order ex parte reexamination of the
patent. Section 12 of the AIA provides that, with certain exceptions, a
patent shall not be held unenforceable on the basis of conduct relating
to information that had not been considered, was inadequately
considered, or was incorrect in a prior examination of the patent if
the information was considered, reconsidered, or corrected during a
supplemental examination of the patent. The Office is also adjusting
the fee for filing a request for ex parte reexamination and setting a
fee for petitions filed in ex parte and inter partes reexamination
proceedings to more accurately reflect the cost of these processes.
Summary of Major Provisions: This final rule specifies the
requirements for a request for supplemental examination and the
procedures for conducting supplemental examination.
A request for supplemental examination must contain: (1) A list of
each item of information that is requested to be considered,
reconsidered, or corrected; (2) an identification of each claim of the
patent for which supplemental examination is requested; (3) a separate
explanation of the relevance and manner of applying each item of
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 207 |
information to each claim of the patent for which it was identified;
and (4) a summary of the relevant portions of any submitted document,
other than the request, that is over fifty pages in length.
This final rule requires the following supplemental examination
fees: (1) A fee of $5,140.00 for processing and treating a request for
supplemental examination; (2) a fee of $16,120.00 for an ex parte
reexamination ordered as a result of a supplemental examination
proceeding; and (3) for processing and treating, in a supplemental
examination proceeding, a non-patent document over 20 pages in length,
a fee of $170.00 for a document of between 21 and 50 pages, and a fee
of $280.00 for each additional 50 pages or a fraction thereof.
This final rule also requires the following reexamination fees: (1)
$17,750.00 for filing a request for ex parte reexamination; (2)
$1,930.00 for filing a petition in an ex parte or inter partes
reexamination proceeding, except for those specifically enumerated in
37 CFR 1.550(i) and 1.937(d); and (3) $4,320.00 for a denied request
for ex parte reexamination under 37 CFR 1.510 (this amount is included
in the request for ex parte reexamination fee, and is the portion not
refunded if the request for reexamination is denied). The cost
calculations for these fees are described in "Cost Calculations for
Supplemental Examination and Reexamination", posted on the Office's
Internet Web site at www.uspto.gov.
Costs and Benefits: This rulemaking is not economically significant
as that term is defined in Executive Order 12866 (Sept. 30, 1993).
Background: The AIA was enacted into law on September 16, 2011. See
Public Law 112-29, 125 Stat. 284 (2011). The Office is revising the
rules of practice in title 37 of the Code of Federal Regulations (CFR)
to implement the supplemental examination provisions of section 12 of
the AIA. These provisions permit a patent owner to request supplemental
examination of a patent by the Office to consider, reconsider, or
correct information believed to be relevant to the patent. The Office
is also setting certain fees to implement supplemental examination,
adjusting the fee for filing a request for ex parte reexamination, and
setting a fee for petitions filed in ex parte and inter partes
reexamination proceedings.
Section 12 of the AIA amends chapter 25 of title 35, United States
Code, to add new 35 U.S.C. 257. 35 U.S.C. 257(a) provides for a
proceeding titled "supplemental examination" that may be requested by
the patent owner to consider, reconsider, or correct information
believed to be relevant to the patent in accordance with requirements
established by the Office. The information that may be presented in a
request for supplemental examination is not limited to patents and
printed publications, and may include, for example, issues of
patentability under 35 U.S.C. 101 and 112. Within three months of the
receipt of a request for supplemental examination meeting the
requirements of 35 U.S.C. 257, which include the requirements
established by the Office, the Office shall conduct supplemental
examination and shall conclude the examination (i.e., determine whether
there is a substantial new question of patentability) by the issuance
of a supplemental examination certificate. The supplemental examination
certificate shall indicate whether the items of information presented
in the request raise a substantial new question of patentability.
If the supplemental examination certificate, which is issued under
35 U.S.C. 257(a), indicates that a substantial new question of
patentability is raised by one or more items of information in the
request for supplemental examination, the supplemental examination
certificate will indicate that ex parte reexamination will be ordered by
the Office. The resulting ex parte reexamination proceeding will be
conducted according to ex parte reexamination procedures, except that the
patent owner does not have the right to file a statement pursuant to 35
U.S.C. 304, and the basis of the ex parte reexamination is not limited to
patents and printed publications. Each substantial new question of
patentability identified during the supplemental examination proceeding
will be addressed by the Office during the resulting ex parte reexamination
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 208 |
proceeding. See 35 U.S.C. 257(b).
35 U.S.C. 257(c) specifies the effect of a supplemental examination
under 35 U.S.C. 257(a) and any resulting ex parte reexamination under
35 U.S.C. 257(b) on the enforceability of the patent. 35 U.S.C.
257(c)(1) provides that, with two exceptions, a patent shall not be
held unenforceable on the basis of conduct relating to information that
had not been considered, was inadequately considered, or was incorrect
in a prior examination of the patent if the information was considered,
reconsidered, or corrected during a supplemental examination of the
patent. The first exception is that 35 U.S.C. 257(c)(1) shall not apply
to an allegation pled with particularity in a civil action, or set
forth with particularity in a notice received by the patent owner under
section 505(j)(2)(B)(iv)(II) of the Federal Food, Drug, and Cosmetic
Act (21 U.S.C. 355(j)(2)(B)(iv)(II)), before the date of a supplemental
examination request under 35 U.S.C. 257(a) to consider, reconsider, or
correct information forming the basis for the allegation (35 U.S.C.
257(c)(2)(A)). The second exception is that in an action brought under
section 337(a) of the Tariff Act of 1930 (19 U.S.C. 1337(a)) or 35
U.S.C. 281, 35 U.S.C. 257(c)(1) shall not apply to any defense raised
in the action that is based upon information that was considered,
reconsidered, or corrected pursuant to a supplemental examination
request under 35 U.S.C. 257(a), unless the supplemental examination,
and any ex parte reexamination ordered pursuant to the request, are
concluded before the date on which the action is brought (35 U.S.C.
257(c)(2)(B)). 35 U.S.C. 257(c)(1) also provides that the making of a
request for supplemental examination under 35 U.S.C. 257(a), or the
absence thereof, shall not be relevant to enforceability of the patent
under 35 U.S.C. 282.
35 U.S.C. 257(d)(1) provides the Director with authority to
establish fees for filing a request for supplemental examination and
for considering each item of information submitted with the request. If
ex parte reexamination is ordered under 35 U.S.C. 257(b), 35 U.S.C.
257(d)(1) also establishes that the fees applicable to ex parte
reexamination must be paid in addition to the fees for supplemental
examination. 35 U.S.C. 257(d)(2) provides the Director with authority
to establish regulations governing the requirements of a request for
supplemental examination, including its form and content.
In accordance with 35 U.S.C. 257(e), if the Office becomes aware,
during the course of a supplemental examination or any ex parte
reexamination ordered under 35 U.S.C. 257, that a material fraud on the
Office may have been committed in connection with the patent that is
the subject of the supplemental examination, the Office shall refer the
matter to the U.S. Attorney General, in addition to any other actions
the Office is authorized to take, including the cancellation of any
claims found to be invalid under 35 U.S.C. 307 as a result of ex parte
reexamination ordered under 35 U.S.C. 257. The Office anticipates that
such instances will be rare. The Office regards the term "material
fraud" in 35 U.S.C. 257(e) to be narrower in scope than inequitable
conduct as defined by the U.S. Court of Appeals for the Federal Circuit
in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed.
Cir. 2011).
Section 12 of the AIA also indicates that nothing in 35 U.S.C. 257
precludes the imposition of sanctions based upon criminal or antitrust
laws (including 18 U.S.C. 1001(a)), the first section of the Clayton
Act, and section 5 of the Federal Trade Commission Act to the extent
that section relates to unfair methods of competition. See 35 U.S.C.
257(f)(1). Section 12 of the AIA sets forth rules of construction,
providing that 35 U.S.C. 257 shall not be construed to limit the
authority of the Office to investigate issues of possible misconduct
and impose sanctions for misconduct involving matters or proceedings
before the Office, or to issue regulations under 35 U.S.C. 32 or 35
U.S.C. 33 relating to sanctions for misconduct by patent practitioners.
See 35 U.S.C. 257(f)(2) and (f)(3).
General Discussion Regarding Implementation: The Office must
determine, within three months of the filing of a request for
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 209 |
supplemental examination, whether a substantial new question of
patentability affecting any claim of the patent is raised by the items
of information in the request. Unlike a request for ex parte
reexamination, the items of information presented in a request for
supplemental examination are not limited to patents and printed
publications. The items of information may include any information
which the patent owner believes to be relevant to the patent, and which
was not considered, was inadequately considered, or was incorrect
during the prior examination of the application which issued as the
patent. See 35 U.S.C. 257(a) and (c). Thus, the variety of information
that is permitted to be submitted in a request for supplemental
examination, including, for example, transcripts of audio or video
recordings, is more extensive than the information permitted to be
submitted in an ex parte reexamination proceeding. Moreover, the
information permitted in a supplemental examination is anticipated to
be more resource-intensive to process, review, and treat than the
information permitted in an ex parte reexamination, because the patent
owner may present, in supplemental examination, an item of information
that raises multiple issues and not just the issues that are permitted
to be raised in ex parte reexamination. For example, the patent owner
may present one item of information that raises patent eligible subject
matter issues under 35 U.S.C. 101 and written description or enablement
issues under 35 U.S.C. 112 with respect to the original disclosure. For
these reasons, the requirements set forth in this final rule are
designed to permit efficient processing and treatment of each request
for supplemental examination within the statutory three-month time
period, and to complete any subsequent ex parte reexamination ordered
as a result of the supplemental examination proceeding with special
dispatch.
The Office proposed changes to the rules of practice to implement
the supplemental examination provisions in section 12 of the AIA and to
set or adjust fees in ex parte and inter partes reexamination
proceedings in a notice of proposed rulemaking published in January of
2012. See Changes to Implement the Supplemental Examination Provisions
of the Leahy-Smith America Invents Act and to Revise Reexamination
Fees, 77 FR 3666-81 (Jan. 25, 2012) (notice of proposed rulemaking).
The public submitted thirty-six comments in response to the notice of
proposed rulemaking (discussed subsequently in greater detail). In view
of the input from the public, the Office is making the following
changes to the proposed rules of practice to implement the supplemental
examination provisions of section 12 of the AIA.
Number of Items of Information Considered in a Request for
Supplemental Examination: The Office proposed to limit each request for
supplemental examination to ten items of information. See Changes to
Implement the Supplemental Examination Provisions of the Leahy-Smith
Invents Act and to Revise Reexamination Fees, 77 FR at 3667. The Office
received a number of comments requesting that there be a higher limit
or no limit on the number of items of information contained in a
request for supplemental examination. This final rule increases this
proposed limit from ten to twelve, thus permitting a request for
supplemental examination to contain up to twelve items of information.
The Office must conclude a supplemental examination within three months
of the date on which the request for supplemental examination is filed.
See 35 U.S.C. 257(b). Thus, the Office must place a limit on the number
of items of information that may be submitted with a request for
supplemental examination. Ninety-three percent of the requests for ex
parte reexamination filed in fiscal year 2011 included twelve or fewer
documents. In addition, supplemental examination is designed to preempt
allegations of inequitable conduct being raised as a defense during
patent litigation, which typically concern far fewer than twelve items
of information. Further, if twelve items of information are not
sufficient for a particular situation, more than one request for
supplemental examination of the same patent may be filed at any time.
Thus, the Office expects a limit of twelve items of information per
request to accommodate the vast majority of patent owners.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 210 |
Content Requirements for a Request for Supplemental Examination:
The Office proposed a number of content requirements for a request for
supplemental examination. See Changes to Implement the Supplemental
Examination Provisions of the Leahy-Smith Invents Act and to Revise
Reexamination Fees, 77 FR at 3667, 3670-71. The Office received a
number of comments requesting that there be fewer and simpler content
requirements for a request for supplemental examination. Thus, this
final rule adopts content requirements for a request for supplemental
examination that are comparable to the requirements for a request for
ex parte reexamination (e.g., a list of each item of information to be
considered, reconsidered, or corrected; an identification of each claim
of the patent for which supplemental examination is requested; and a
separate, detailed explanation of the relevance and manner of applying
each item of information to each claim of the patent for which
supplemental examination is requested). See 37 CFR 1.510. In addition,
because the content requirements for a request for supplemental
examination that are comparable to the requirements for a request for
ex parte reexamination, this final rule does not implement the proposed
requirement that a request for supplemental examination contain: (1) An
identification of each item of information requiring consideration,
reconsideration, or correction, and an explanation why consideration or
reconsideration of the item of information is being requested or how
the item of information is being corrected; (2) an identification of
the structure, material, or acts in the specification that correspond
to each means-plus-function or step-plus-function element, as set forth
in 35 U.S.C. 112(f), as amended by the AIA, in any claim to be
examined; (3) an identification of each issue raised by each item of
information; (4) an explanation of the support in the specification for
each limitation of each claim identified for examination if an
identified issue involves the application of 35 U.S.C. 101 (other than
double patenting) or 35 U.S.C. 112; and (5) an explanation of how each
limitation of each claim identified for examination is met, or is not
met, by each item of information if an identified issue involves the
application of 35 U.S.C. 102, 35 U.S.C. 103, or double patenting.
Filing Date Requirements: The Office proposed that a request for
supplemental examination must comply with the applicable regulations in
37 CFR 1.605, 1.610, and 1.615 to be entitled to a filing date. See
Changes to Implement the Supplemental Examination Provisions of the
Leahy-Smith Invents Act and to Revise Reexamination Fees, 77 FR at
3671. As discussed previously in this final rule, the Office must
conclude a supplemental examination within three months of the date on
which the request for supplemental examination was filed. However, it
would absorb a considerable portion of the three-month period for
conducting the supplemental examination for the Office to accord a
filing date to a non-compliant request for supplemental examination,
issue a notice of the defects in the request for supplemental
examination, and await a corrected request for supplemental
examination. Such a practice when applied in reexamination proceedings
repeatedly placed the Office in jeopardy of not meeting the three-month
time frame in 35 U.S.C. 303 and 312. See Clarification of Filing Date
Requirements for Ex parte and Inter Partes Reexamination Proceedings,
71 FR 44219, 44220 (Aug. 4, 2006). Therefore, the Office cannot adopt
such a procedure in supplemental examination. A request for
supplemental examination that does not comply with the requirements for
a request for supplemental examination may not be granted a filing
date. However, the Office is adopting content requirements for a
request for supplemental examination that are comparable to the
requirements for a request for ex parte reexamination, and thus has
significantly streamlined the requirements for a request for
supplemental examination to make the filing date requirements as simple
and objective as possible. The Office has also eliminated the
requirement for identification of the first-named inventor and the
issue date of the patent for which supplemental examination is
requested. Additionally, the Office has clarified that a cover sheet
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 211 |
and a table of contents are not required in a request for supplemental
examination.
A request for supplemental examination that is entitled to a filing
date will be entered into the Office image file wrapper (IFW) and
Patent Application Information Retrieval (PAIR) system, and will be
viewable by the public via the Public PAIR system. The Office, however,
is establishing a procedure in which the request, and any other papers
or information submitted as part of or accompanying the request, will
not be available in Public PAIR until the request meets the conditions
to be entitled to a filing date.
A request for supplemental examination of a patent must be filed by
the patent owner. The request for supplemental examination must be
accompanied by the fee for filing a request for supplemental
examination, the fee for ex parte reexamination ordered as a result of
the supplemental examination proceeding under 35 U.S.C. 257, and any
applicable document size fees. The Office may hold in abeyance action
on any petition or other paper filed in a supplemental examination
proceeding until after the proceeding is concluded by the electronic
issuance of the supplemental examination certificate.
A supplemental examination proceeding is initiated by the filing of
a request for supplemental examination that complies with 35 U.S.C. 257
and 37 CFR 1.601 et seq. and ends with the electronic issuance of the
supplemental examination certificate. See 35 U.S.C. 257(a) ("Within 3
months after the date a request for supplemental examination
meeting the requirements of this section is received, the Director
shall conduct the supplemental examination and shall conclude such
examination by issuing a certificate * * * ."). The supplemental
examination certificate will state the result of the Office's
determination as to whether any of the items of information submitted
as part of the request raises a substantial new question of
patentability. If the supplemental examination certificate states that
a substantial new question of patentability is raised by one or more
items of information in the request, ex parte reexamination of the
patent will be ordered under 35 U.S.C. 257. In other words, if the
supplemental examination certificate states that a substantial new
question of patentability is raised, an ex parte reexamination
proceeding is initiated. The electronically issued supplemental
examination certificate will remain as part of the public record for
the patent. In addition, upon the conclusion of the ex parte
reexamination proceeding, an ex parte reexamination certificate, which
will include a statement specifying that ex parte reexamination was
ordered under 35 U.S.C. 257, will be published as an attachment to the
patent. If, however, the supplemental examination certificate states
that no substantial new question of patentability is raised by one or
more items of information in the request, then the electronically
issued supplemental examination certificate, which remains as part of
the public record for the patent, will also be published in due course
as an attachment to the patent.
Discussion of Specific Rules
The following is a discussion of the amendments to Title 37 of the
Code of Federal Regulations, part 1, that are being implemented in this
final rule:
Section 1.20: Section 1.20 is amended to set fees to implement
supplemental examination, to adjust the fee for filing a request for ex
parte reexamination, and to set a fee for petitions filed in ex parte
and inter partes reexamination proceedings.
The authority to set fees for filing a request for supplemental
examination and to consider each item of information submitted in the
request is provided for in 35 U.S.C. 257(d)(1). See 35 U.S.C. 257(d)(1)
("[t]he Director shall, by regulation, establish fees for the
submission of a request for supplemental examination of a patent, and
to consider each item of information submitted in the request"). The
authority to set fees for filing a request for ex parte reexamination
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 212 |
is provided for in 35 U.S.C. 302. See 35 U.S.C. 302 ("[t]he request
must be in writing and must be accompanied by payment of a
reexamination fee established by the Director pursuant to the
provisions of [35 U.S.C. 41]"); see also 35 U.S.C. 257(d)(1).
Section 10(a) of the AIA provides that the Director may set or
adjust by rule any patent fee established, authorized, or charged under
title 35, United States Code, provided that such fees only recover the
aggregate estimated costs to the Office for processing, activities,
services, and materials relating to patents (including administrative
costs). See Pub. L. 112-29, 125 Stat. 283, 316 (2011).
Sections 10(d) and (e) of the AIA set out a process that must be
followed when the Office is using its authority under section 10(a) to
set or adjust patent fees. See Pub. L. 112-29, 125 Stat. at 317-18.
This process would not feasibly permit supplemental examination and the
related ex parte and inter partes reexamination fees to be in place by
September 16, 2012 (the effective date of the supplemental examination
provisions of the AIA). Therefore, the Office is setting these fees in
this rulemaking pursuant to its authority under 35 U.S.C. 41(d)(2),
which provides that fees for all processing, services, or materials
relating to patents not specified in 35 U.S.C. 41 are to be set at
amounts to recover the estimated average cost to the Office of the
respective processing, service, or material. See 35 U.S.C. 41(d)(2).
The Office's analysis of the estimated fiscal year 2013 costs for
supplemental examination, ex parte reexamination, and petitions filed
in ex parte and inter partes reexamination proceedings is available via
the Office's Internet Web site (http://www.uspto.gov). The estimated
fiscal year 2013 cost amounts are rounded to the nearest ten dollars by
applying standard arithmetic rules so that the resulting fee amounts
will be convenient to patent users.
The Office is in the process of separately developing a proposed
rulemaking to adjust and set patent fees under section 10 of the AIA.
The fees set or adjusted in this notice will subsequently be revisited
and may be proposed to be set or adjusted in a proposed rulemaking
under section 10 of the AIA.
In this current rulemaking, as described further in materials
posted on the Office's Internet Web site, the Office has estimated its
fiscal year 2013 cost for processing and treating a request for
supplemental examination to be $5,180. The Office has also estimated
that the document size fees will recover an average of $40 per request
for supplemental examination (discussed subsequently). Therefore, the
Office is adding new § 1.20(k)(1) to set a fee of $5,140 for
processing and treating a request for supplemental examination (the
estimated 2013 cost amount rounded to the nearest ten dollars minus
$40).
The Office has estimated its fiscal year 2013 cost for conducting
ex parte reexamination ordered as a result of a supplemental
examination proceeding to be $16,116. Therefore, the Office is adding
new § 1.20(k)(2) to set a fee of $16,120 for conducting ex parte
reexamination ordered as a result of a supplemental examination
proceeding (the estimated 2013 cost amount rounded to the nearest ten
dollars). The $16,120 fee for conducting an ex parte reexamination
ordered as a result of a supplemental examination proceeding will be
returned if ex parte reexamination is not ordered at the conclusion of
the supplemental examination proceeding. See § 1.26(c).
The Office has also estimated its fiscal year 2013 cost for
processing and treating non-patent documents over 20 pages in length
that are submitted in a supplemental examination proceeding to be $166
for each document between 21 and 50 pages in length, and $282 for each
additional 50-page increment or a fraction thereof. Therefore, the
Office is also adding new § 1.20(k)(3) to provide document size
fees for any non-patent documents over 20 pages in length that are
submitted in a supplemental examination proceeding, including (1) a fee
of $170 for each document between 21 and 50 pages in length; and (2) a
fee of $280 for each additional 50-page increment or a fraction thereof
(the estimated 2013 cost amounts rounded to the nearest ten dollars).
The decision as to whether the information submitted in a request
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 213 |
for supplemental examination raises a substantial new question of
patentability is identical to the decision as to whether the
information submitted in a request for ex parte reexamination raises a
substantial new question of patentability, except that the information
submitted in a request for supplemental examination is not limited to
patents and publications, and may be directed to issues of
patentability in addition to those permitted in ex parte reexamination,
such as issues under 35 U.S.C. 101 and 112. Thus, the Office has
analyzed its ex parte and inter partes reexamination costs to estimate
the cost of supplemental examination and resulting ex parte
reexamination proceedings. The Office's analysis of the ex parte and
inter partes reexamination costs revealed that the current ex parte and
inter partes reexamination fees are not set at amounts that recover the
Office's costs for these processes or services. Thus, in addition to
setting fees for supplemental examination and resulting ex parte
reexamination proceedings, the Office is adjusting the fee for ex parte
reexamination proceedings, and setting a fee for petitions in ex parte
and inter partes reexamination proceedings.
The Office has estimated its fiscal year 2013 cost for conducting
ex parte reexamination to be $17,747. Therefore, § 1.20(c)(1) is
amended to set a fee of $17,750 for filing a request for ex parte
reexamination under § 1.510(a) (the estimated 2013 cost amounts
rounded to the nearest ten dollars).
The Office has estimated its fiscal year 2013 cost for the
processing and treatment of a petition in a reexamination proceeding to
be $1,932. Consequently, the Office is adding new § 1.20(c)(6) to
set a fee of $1,930 for filing a petition in an ex parte or inter
partes reexamination proceeding, except for those specifically
enumerated in §§ 1.550(i) and 1.937(d) (the estimated 2013 cost
amounts rounded to the nearest ten dollars). The fee for treating a
petition in a reexamination proceeding will apply to any petition filed
in either an ex parte or an inter partes reexamination proceeding
(except for those specifically enumerated in §§ 1.550(i) and
1.937(d)), including petitions under §§ 1.59, 1.181, 1.182, and
1.183. The petitions enumerated in §§ 1.550(i) and 1.937(d) are
petitions under §§ 1.550(c) and 1.956 to extend the period for
response by a patent owner, petitions under §§ 1.550(e) and
1.958 to accept a delayed response by a patent owner, petitions under
§ 1.78 to accept an unintentionally delayed benefit claim, and
petitions under § 1.530(l) for correction of inventorship in ex
parte or inter partes reexamination proceedings. The petitions
enumerated in §§ 1.550(i) and 1.937(d), however, remain subject
to any applicable fees other than the fee set forth in §
1.20(c)(6), including the fees required by the appropriate rule
governing each petition.
The Office is also adding new § 1.20(c)(7) to set a fee of
$4,320 for a denied request for ex parte reexamination (discussed
below), which is included in the fee under § 1.20(c)(1) for filing
a request for ex parte reexamination. The Office has estimated that its
fiscal year 2013 cost of processing a request for ex parte
reexamination up to the issuance of a decision denying the request for
reexamination is $4,320. Under current practice, if the Office decides
not to institute an ex parte reexamination proceeding, a portion of the
ex parte reexamination filing fee paid by the reexamination requester
is refunded. This section specifies the portion of the ex parte
reexamination filing fee that is retained by the Office if the Office
decides not to institute the ex parte reexamination proceeding.
The Office is not adjusting the inter partes reexamination filing
fee as the Office is not authorized to consider, or even accord a
filing date to, a request for inter partes reexamination filed on or
after September 16, 2012. See Revision of Standard for Granting an
Inter Partes Reexamination Request, 76 FR 59055, 59056 (Sept. 23,
2011).
Section 1.26: Section 1.26(c) is amended to provide that if the
Director decides not to institute an ex parte reexamination proceeding
(a denied reexamination), any fee for filing an ex parte reexamination
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 214 |
request paid by the reexamination requester, less the fee set forth in
§ 1.20(c)(7), will be refunded to the reexamination requester. If
the Director decides not to institute an ex parte reexamination
proceeding under § 1.625 as a result of a supplemental examination
proceeding, a refund of the fee for ex parte reexamination resulting
from a supplemental examination ($16,120), as set forth in
§ 1.20(k)(2), will be made to the patent owner who requested the
supplemental examination proceeding. The provision in § 1.26(c) for
a refund of $7,970 to the inter partes reexamination requester, where
the Director decides not to institute an inter partes reexamination
proceeding, is being retained to address any remaining instances of a
denial to institute an inter partes reexamination on or after September
16, 2012. The reexamination requester or the patent owner who requested
the supplemental examination proceeding, as appropriate, should
indicate the form in which any refund should be made (e.g., by check,
electronic funds transfer, credit to a deposit account). Generally,
refunds will be issued in the form that the original payment was
provided.
Section 1.550: Section 1.550(i) is added to provide that a petition
in an ex parte reexamination proceeding must be accompanied by the fee
set forth in § 1.20(c)(6), except for petitions under § 1.550(c)
to extend the period for response by a patent owner, petitions
under § 1.550(e) to accept a delayed response by a patent owner,
petitions under § 1.78 to accept an unintentionally delayed benefit
claim, and petitions under § 1.530(l) for correction of
inventorship in an ex parte reexamination proceeding.
Section 1.601: Section 1.601 et seq. is added to provide
regulations for the supplemental examination of patents. Section
1.601(a) is added to require that a request for supplemental
examination of a patent must be filed by the owner(s) of the entire
right, title, and interest in the patent. A request for supplemental
examination may result in ex parte reexamination of the patent. The
Office currently requires a patent owner requester of an ex parte
reexamination to comply with the provisions of §§ 3.71 and 3.73
for establishing an assignee's right to take action when submitting a
power of attorney. See Manual of Patent Examining Procedure §§ 2222
(Rev. 8, July 2010) (MPEP). This is because the terms of a patent
may be changed (e.g., by cancellation or amendment of the claims)
during a reexamination proceeding, and this change must be binding on
all parties having an ownership interest in the patent. Furthermore,
the Office has consistently required that all parties having an
interest in a patent are deemed "a patent owner" as a composite
entity and must act together in proceedings before the Office. See MPEP
§ 301 ("All parties having any portion of the ownership of the
patent property must act together as a composite entity in patent
matters before the Office."), and § 324 ("When an assignee seeks
to take action in a matter before the Office with respect to a patent
application, patent, or reexamination proceeding and the right, title,
and interest therein is held by more than one assignee, each partial
assignee must provide a submission under [former] 37 CFR 3.73(b). In
each submission, the extent of each assignee's interest must be set
forth so that the Office can determine whether it has obtained action
by the entirety of the right, title, and interest holders (owners).").
Section 1.601(b) prohibits third parties from filing papers or
otherwise participating in any manner in a supplemental examination
proceeding. Section 12 of the AIA specifies that a request for
supplemental examination may be filed by the patent owner. See 35
U.S.C. 257(a). There is no provision for participation in any manner by
a third party in a supplemental examination proceeding. In addition,
because only the patent owner can file the request for supplemental
examination, third party participation is also prohibited in any ex
parte reexamination ordered under 35 U.S.C. 257 and § 1.625,
pursuant to ex parte reexamination practice.
Section 1.601(c) provides that a request for supplemental
examination of a patent may be filed at any time during
the period of enforceability of the patent. This time period is being
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 215 |
specified in this final rule because the Office believes that Congress
did not intend the Office to expend resources on the supplemental
examination of a patent which cannot be enforced. The period of
enforceability is determined by adding six years to the date that the
patent expires. It is the responsibility of the patent owner to
determine the expiration date of the patent for which supplemental
examination is requested. The patent expiration date for a utility
patent, for example, may be determined by taking into account the term
of the patent, whether maintenance fees have been paid for the patent,
whether any disclaimer was filed as to the patent to shorten its term,
any patent term extensions or adjustments for delays within the Office
under 35 U.S.C. 154, and any patent term extensions available under 35
U.S.C. 156 for premarket regulatory review. See MPEP §§ 2710
and 2750. Any other relevant information should also be taken into
account. In addition, if litigation is instituted within the period of
the statute of limitations, requests for supplemental examination may
be filed after the statute of limitations has expired, as long as the
patent is still enforceable. This policy is consistent with ex parte
reexamination practice. See § 1.510(a) and MPEP § 2211.
Section 1.605: Section 1.605(a) is added to require that each
request for supplemental examination may include no more than twelve
items of information believed to be relevant to the patent. In other
words, the number of items of information that may be submitted as part
of each request for supplemental examination is limited to twelve (12).
As discussed previously, the amount of information that may be included
with each request is limited in order to permit full and comprehensive
treatment of each item of information within the three-month statutory
time period. Section 1.605(a) permits the filing of more than one
request for supplemental examination of the same patent at any time
during the period of enforceability of the patent. The patent owner is
not precluded from obtaining review of any item of information despite
the twelve-item limit because the patent owner may file multiple
requests for supplemental examination of the same patent at any time
during the period of enforceability of the patent.
Section 1.605(b) provides that an "item of information" includes
a supporting document submitted as part of the request that contains
information, believed to be relevant to the patent, that the patent
owner requests the Office to consider, reconsider, or correct. Examples
include a journal article, a patent, an affidavit or declaration, or a
transcript of an audio or video recording, each of which may be
considered an item of information. If the information to be considered,
reconsidered, or corrected is not, at least in part, contained within
or based on any supporting document submitted as part of the request,
the discussion within the body of the request relative to the
information will be considered as the item of information. For example,
if the patent owner requests the Office to consider claim 1 of the
patent on the basis of 35 U.S.C. 101, and the discussion of any
potential application of 35 U.S.C. 101 to claim 1 is wholly contained
within the body of the request and is not based, at least in part, on
any supporting document, the discussion in the request will be
considered as the item of information. If, however, the patent owner is
presenting a copy of a supporting document within the body of the
request, such as an image of an electronic mail message or other
document, a separate copy of the supporting document must be provided,
which will be considered as an item of information. The patent owner
may not avoid the counting of an item of information by inserting the
content of the supporting document within the body of the request. As
another example, if the patent owner presents an argument in the
request regarding an issue under 35 U.S.C. 102, such as a potential
public use or sale of the claimed invention, and also submits a
supporting document with the request as possible evidence of the public
use or sale, or the lack thereof, the supporting document containing
the possible evidence will be considered as the item of information.
Similarly, a declaration or affidavit submitted as part of a
request would be considered an item of information. If the declaration
presents two distinct items of information, such as information
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 216 |
relating to a potential ground under 35 U.S.C. 101 as to patent claim 1
that was not considered during the prior examination of the patent, and
information relating to erroneous facts or data presented during the
prior examination of the patent with respect to an issue under 35
U.S.C. 103 as to patent claim 10, then each item of information
contained within the declaration will be counted separately, resulting
in two items of information. The patent owner may not avoid the
counting of multiple items of information by inserting the multiple
items within the body of a declaration or by presenting them as
exhibits accompanying the declaration. Additionally, if the declaration
presents one item of information, such as information regarding
erroneous data presented during the prior examination of the patent
with respect to an issue under 35 U.S.C. 103 as to patent claim 10, and
relies upon a single exhibit, such as a new table of data, to support
facts presented in the declaration, the Office is likely to count the
declaration, including the supporting exhibit, as a single item of
information. If, however, the declaration relies upon two separate and
distinct exhibits, such as, for example, two separate and distinct
sales receipts as evidence of a potential sale of the invention (e.g.,
a sales receipt dated March 2011 and a second, separate sales receipt
dated October 2011, which provides evidence of a second, separate sale
of the invention), then each additional sales receipt will be counted
separately, resulting in two items of information (one item consisting
of the declaration and one sales receipt, and the second item
consisting of the second sales receipt).
Section 1.605(c) requires that an item of information must be in
writing in accordance with § 1.2. The Office does not currently
have the capability of retaining records in unwritten form. For this
reason, any audio or video recording must be submitted in the form of a
written transcript in order to be considered. A transcript of a video
may be submitted together with copies of selected images of the video,
and a discussion of the correlation between the transcript and the
copies of the video images.
Section 1.605(d) provides that if an item of information is
combined in the request with one or more additional items of
information, each item of information of the combination may be
separately counted. If it is necessary to combine items of information
in order to raise an issue, or to explain the relevance of the items of
information to be considered, reconsidered, or corrected with respect
to the identified claims, each item of information may be separately
counted. Exceptions to this provision include the combination of a non-
English language document and its translation, and the combination of a
document that is over 50 pages in length and its summary pursuant to
§ 1.610(b)(8).
For example, if the patent owner requests consideration of claim 1
of a patent in light of references A and B, and explains that it is the
combination of references A and B that is relevant to claim 1,
reference A and reference B will be separately counted as items of
information. Cumulative items of information will each be separately
counted. If the patent owner believes that multiple items of information
are cumulative to each other, the patent owner is encouraged to select one
or two of them as the items of information that will be submitted as part
of the request.
If, however, a single item of information, such as a reference
patent, raises an issue under 35 U.S.C. 102 as to claim 1 and an issue
under 35 U.S.C. 103 as to claim 2, the reference patent will
nevertheless be counted as a single item of information. The Office
will count items of information, but will not count the number of
issues raised by that item.
Section 1.610: Section 1.610 governs the content of the request for
supplemental examination. Consistent with the requirement in 35 U.S.C.
257(d) to establish fees, § 1.610(a) requires that the request be
accompanied by the fee for filing a request for supplemental
examination as set forth in § 1.20(k)(1), the fee for ex parte
reexamination ordered as a result of a supplemental examination
proceeding as set forth in § 1.20(k)(2), and any applicable
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 217 |
document size fees as set forth in § 1.20(k)(3).
Section 1.610(b) sets forth content requirements for a request for
supplemental examination. Section 1.610(b)(1) requires that the request
include an identification of the number of the patent for which
supplemental examination is requested.
Section 1.610(b)(2) requires that the request include a list of the
items of information that are requested to be considered, reconsidered,
or corrected. Where appropriate, the list must meet the requirements of
§ 1.98(b). For example, the list must include a publication date
for each item of information, if applicable. This list must include
each of the items of information on which the request is based. If the
item of information is a discussion contained within the body of the
request, as discussed previously, the pages of the request on which the
discussion appears, and a brief description of the item of information,
such as "discussion in request of why the claims are patentable under
35 U.S.C. 101, pages 7-11," must be listed.
Section 1.610(b)(3) requires that the request include a list
identifying any other prior or concurrent post-patent Office
proceedings involving the patent for which the current supplemental
examination is requested, including an identification of the type of
proceeding, the identifying number of any such proceeding (e.g., a
control number or a reissue application number), and the filing date of
any such proceeding. The type of proceeding may be, for example, an ex
parte or inter partes reexamination proceeding, a reissue application,
a supplemental examination proceeding, a post-grant review proceeding,
or an inter partes review proceeding.
Section 1.610(b)(4) requires that the request include an
identification of each claim of the patent for which supplemental
examination is requested. The result of a supplemental examination is a
determination of whether any of the items of information raises a
substantial new question of patentability. Because patentability
relates to the claims of the patent, the patent owner must identify the
patent claims to be examined in order for the Office to determine
whether a substantial new question of patentability as to those claims
has been raised by an item of information. For example, if the
information raises a question as to the adequacy of the written
description portion of the specification, the substantial new question
of patentability pertains to the question of whether the specification
provides adequate support under 35 U.S.C. 112 for the identified claim.
If the information raises a question as to a foreign priority or
domestic benefit claim, the substantial new question of patentability
pertains to the question of whether the patentability the identified
claim under 35 U.S.C. 102 and 103 depends upon a foreign priority or
domestic benefit claim (e.g., where the claimed invention must be
entitled to foreign priority or domestic benefit to be patentable under
35 U.S.C. 102 and 103 because there is an intervening references).
Section 1.610(b)(5) requires that the request include a separate,
detailed explanation of the relevance and manner of applying each item
of information to each claim of the patent for which supplemental
examination is requested. In view of the fact that patent owners filing
a request for supplemental examination may be contemplating future
litigation, the Office recommends that, in order to meet this
requirement, patent owners consider the guidance set forth in MPEP
§ 2214, which governs the content of a request for ex parte
reexamination.
Section 1.610(b)(6) requires that the request include a copy of the
patent for which supplemental examination is requested, and a copy of
any disclaimer or certificate issued for the patent. A "certificate
issued for the patent" includes, for example, a certificate of
correction, a certificate of extension, a supplemental examination
certificate, a post-grant review certificate, an inter partes review
certificate, an ex parte reexamination certificate, and/or an inter
partes reexamination certificate issued for the patent.
Section 1.610(b)(7) requires that the request include a copy of
each item of information listed in § 1.610(b)(2), accompanied by a
written English translation of all of the necessary and pertinent parts
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 218 |
of any non-English language document. Items of information that form
part of the discussion within the body of the request as specified in
§ 1.605(b) are not required to be submitted. As discussed
previously, if the information to be considered, reconsidered, or
corrected is not, at least in part, contained within or based on any
supporting document submitted as part of the request, the discussion
within the body of the request relative to the information will be
considered as the item of information, a copy of which is not required
under § 1.610(b)(7) to be separately submitted. Copies of U.S.
patents and U.S. patent application publications are also not required,
but may be submitted.
Section 1.610(b)(8) requires that the request include a summary of
the relevant portions of any submitted document (including patent
documents), other than the request, that is over 50 pages in length.
The summary must include citations to the particular pages containing
the relevant portions. This summary may be similar to the requirement
for information disclosure statements of a discussion of the relevant
and pertinent parts of a non-English language document. This
requirement will assist the Office in treating information presented in
lengthy documents within the statutory three-month time period. Patent
owners are encouraged to redact lengthy documents to include only the
relevant portions, unless the redaction would remove context such that
the examiner would not be provided with a full indication of the
relevance of the information.
Section 1.610(b)(9) requires that the request must include an
identification of the owner(s) of the entire right, title, and interest
in the patent requested to be examined, and a submission by the patent
owner in compliance with § 3.73(c) establishing the entirety of the
ownership in the patent requested to be examined. As discussed
previously, § 1.601(a) requires that a request for supplemental
examination of a patent must be filed by the owner(s) of the entire
right.
Section 1.610(c) provides that the request may optionally include
certain enumerated elements. Section 1.610(c)(1) permits the request to
include a cover sheet itemizing each component submitted as part of the
request. A "component" may be a certificate of mailing, the request,
the patent to be examined, an item of information, and any other
separate document that is deposited with or as part of the request.
Section 1.610(c)(2) permits the request to include a table of contents
for the request. Section 1.610(c)(3) provides that the request may
include an explanation of how the claims patentably distinguish over
the items of information. Section 1.610(c)(4) provides that the request
may include an explanation why each item of information does or does
not raise a substantial new question of patentability. Patent owners
are strongly encouraged to submit this explanation, which will assist
the Office in analyzing the request.
Section 1.610(d) provides that the filing date of a request for
supplemental examination will not be granted if the request is not in
compliance with §§ 1.605, 1.610, and 1.615, subject to the
discretion of the Office. If the Office determines that the request, as
originally submitted, is not entitled to a filing date, then the patent
owner will be so notified and will be given an opportunity to complete
the request within a specified time. If the patent owner does not
timely comply with the notice, the request for supplemental examination
will not be granted a filing date and the fee for reexamination as set
forth in § 1.20(k)(2) will be refunded. If the patent owner timely
files a corrected request, in response to the notice, that properly
addresses all of the defects set forth in the notice and that otherwise
complies with all of the requirements of §§ 1.605, 1.610, and
1.615, the filing date of the supplemental examination request will be
the receipt date of the corrected request.
Section 1.615: Section 1.615(a) requires that all papers submitted
in a supplemental examination proceeding must be formatted in
accordance with § 1.52. Section 1.615(b) provides that court
documents and non-patent literature may be redacted, but must otherwise
be identical both in content and in format to the original documents,
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 219 |
and if a court document, to the document submitted in court, and must
not otherwise be reduced in size or modified, particularly in terms of
font type, font size, line spacing, and margins. Patents, patent
application publications, and third-party-generated affidavits or
declarations must not be reduced in size or otherwise modified in the
manner described in this paragraph.
Section 1.620: Section 1.620(a) requires that, within three months
following the filing date of a request for supplemental examination,
the Office will determine whether a substantial new question of
patentability affecting any claim of the patent is raised by any of the
items of information properly presented in the request. The standard
for determining whether an item of information submitted as part of the
request raises a substantial new question of patentability will be the
standard set forth in the MPEP: i.e., whether there is a substantial
likelihood that a reasonable examiner would consider the item of
information important in determining patentability. See MPEP § 2242.
The determination of whether an item of information submitted as
part of the request raises a substantial new question of patentability
(SNQ) will generally be limited to a review of the item(s) of
information identified in the request with respect to the identified
claim(s) of the patent. For example, a determination on a request that
includes three items of information, where each item is requested to be
considered with regard to claim 1, will generally be limited to whether
any of the three items of information raise a substantial new question
of patentability with respect to claim 1. If the patent owner is
interested in applying an item of information to multiple claims of the
patent, the request for supplemental examination must include an
identification of each claim to which the item of information is to be
applied and the required detailed explanation with respect to each
claim. For example, if the patent owner fails to request that the
Office consider certain claims in view of an item of information, then
the patent owner is not entitled to a determination for that item of
information with respect to those claims. The determination will be
based on the claims in effect at the time of the determination. The
supplemental examination certificate, which contains the determination
of whether a substantial new question of patentability was raised by
one or more of the items of information submitted as part of the
request, will become a part of the official record of the patent.
Section 1.620(b) provides that the Office may hold in abeyance an
action on any petition or other paper filed in a supplemental
examination proceeding until after the proceeding is concluded by the
electronic issuance of the supplemental examination certificate as set
forth in § 1.625. The only actions by the Office on the request for
supplemental examination are: (1) a determination of whether the
request is entitled to a filing date; and (2) a determination of
whether any of the items of information submitted with the request
raises a substantial new question of patentability. The only relevant
type of petition that the Office anticipates will be filed in a
supplemental examination proceeding would involve the filing date of
the request, which is not relevant to the determination of whether any
of the items of information submitted with the request raises a
substantial new question of patentability. Holding in abeyance a
decision on such a petition will assist the Office in making the
determination regarding the substantial new question within the three-
month statutory period.
Section 1.620(c) provides that if an unauthorized or otherwise
improper paper is filed in a supplemental examination proceeding, it
will not be entered into the official file or considered, or if
inadvertently entered, it will be expunged.
Section 1.620(d) requires that the patent owner must, as soon as
possible upon the discovery of any other prior or concurrent post-
patent Office proceeding involving the patent for which the current
supplemental examination is requested, file a paper limited to
notifying the Office of the post-patent Office proceeding, if such
notice has not been previously provided with the request. The Office
anticipates that a patent for which supplemental examination is
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 220 |
requested is likely to be involved in other post-patent Office
proceedings, including another supplemental examination proceeding.
Knowledge of other proceedings is important to ensure a quality
determination. In addition, notice is required due to the statutory
three-month period within which the Office must conclude the
supplemental examination. The notice is limited to an identification of
the post-patent Office proceeding, including the type (e.g., ex parte
or inter partes reexamination, reissue, supplemental examination, post-
grant review, or inter partes review), an identifying number, such as a
control number or reissue application number, and the filing date of
the post-patent Office proceeding. The notice may not include any
discussion of the issues present in the current supplemental
examination proceeding or in the identified post-patent Office
proceeding(s). If the paper containing the notice is not so limited,
the paper will be held to be improper, and will be processed as an
unauthorized paper pursuant to § 1.620(c).
Section 1.620(e) prohibits interviews in a supplemental examination
proceeding. This requirement will assist the Office to process the
request for supplemental examination within the three-month statutory
period. A telephone call to the Office to confirm receipt of a request
for supplemental examination, or to discuss general procedural
questions, is not considered to be an interview for the purposes of
this provision. This prohibition against interviews applies only to
supplemental examination proceedings. Interviews conducted in
connection with any ex parte reexamination ordered under 35 U.S.C. 257
as a result of the supplemental examination proceeding are governed by
the regulations governing ex parte reexamination proceedings. See,
e.g., § 1.560.
Section 1.620(f) provides that no amendment may be filed in a
supplemental examination proceeding. Amendments are not items of
information, and are not appropriate in a supplemental examination
proceeding. As specified in 35 U.S.C. 257(b), the patent owner does not
have the right to file a statement under 35 U.S.C. 304. See § 1.625(d)(1).
35 U.S.C. 304 permits a patent owner to file an amendment
by including the amendment with the patent owner's statement prior to
an initial Office action. However, because the ex parte reexamination
proceeding does not exist prior to the order under 35 U.S.C. 257, and
because the patent owner is precluded from filing a statement under 35
U.S.C. 304, no amendment may be filed from the time the request for
supplemental examination is filed, until after the issuance of an
initial Office action on the merits in any ex parte reexamination
proceeding ordered under 35 U.S.C. 257.
Section 1.620(g) provides that, if the Office becomes aware, during
the course of a supplemental examination or of any ex parte
reexamination ordered under 35 U.S.C. 257 as a result of the
supplemental examination proceeding, that a material fraud on the
Office may have been committed in connection with the patent requested
to be examined, the supplemental examination proceeding or any ex parte
reexamination proceeding ordered under 35 U.S.C. 257 will continue. The
matter will be referred to the U.S. Attorney General in accordance with
35 U.S.C. 257(e), as discussed previously.
Section 1.625: Section 1.625(a) provides that a supplemental
examination proceeding will conclude with the electronic issuance of
the supplemental examination certificate. The supplemental examination
certificate will be electronically issued in the Office IFW system and
will be visible in the Office PAIR system within three months of the
filing date of the request. Electronic issuance of the supplemental
examination certificate will permit the Office to issue the certificate
within the three-month statutory period and will permit sufficient time
to review the items of information submitted as part of the request.
The certificate will be viewable by the public in Public PAIR. The
supplemental examination certificate will indicate the result of the
determination whether any of the items of information presented in the
request raised a substantial new question of patentability.
Section 1.625(b) provides that, if the supplemental examination
certificate indicates that a substantial new question of patentability
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 221 |
is raised by one or more items of information in the request, ex parte
reexamination of the patent will be ordered under 35 U.S.C. 257. Upon
the conclusion of the ex parte reexamination proceeding, an ex parte
reexamination certificate, which will include a statement specifying
that ex parte reexamination was ordered under 35 U.S.C. 257, will be
published as an attachment to the patent by the Office's patent
publication process. The electronically issued supplemental examination
certificate will also remain as part of the public record for the
patent.
Section 1.625(c) provides that, if the supplemental examination
certificate indicates that no substantial new question of patentability
is raised by any of the items of information in the request, and ex
parte reexamination is not ordered under 35 U.S.C. 257, the
electronically issued supplemental examination certificate will be
published in due course by the Office's patent publication process as
an attachment to the patent. The fee for reexamination ordered as a
result of supplemental examination, as set forth in § 1.20(k)(2),
will be refunded in accordance with § 1.26(c).
Section 1.625(d) provides that any ex parte reexamination ordered
under 35 U.S.C. 257 will be conducted in accordance with §§ 1.530 through
1.570, which govern ex parte reexamination, except that:
(1) The patent owner will not have the right to file a statement
pursuant to § 1.530, and the order will not set a time period
within which to file such a statement; (2) ex parte reexamination of
any claim of the patent may be conducted on the basis of any item of
information as set forth in § 1.605, and is not limited to patents
and printed publications or to subject matter that has been added or
deleted during a reexamination proceeding, which differs from the
provisions of § 1.552(a); (3) issues in addition to those raised by
patents and printed publications and by subject matter added or deleted
during an ex parte reexamination proceeding may be considered and
resolved, which differs from § 1.552(c); and (4) information
material to patentability will be defined by § 1.56(b) for the
purposes of a supplemental examination proceeding and any resulting ex
parte reexamination proceeding. The material to patentability standard
(§ 1.56(b)) applicable to patent applications is also applicable to
an ex parte reexamination proceeding under 35 U.S.C. 257 resulting from
a supplemental examination proceeding because, like patent application
examination, an ex parte reexamination proceeding under 35 U.S.C. 257
is not limited to patents and printed publications. In contrast, the
material to patentability standard (§ 1.555(b)) applicable to ex
parte reexaminations under 35 U.S.C. 302 is limited to patents and
printed publications. Any reference to "applicant" in § 1.56(b)
will be read as "patent owner" in the context of a supplemental
examination proceeding and any resulting ex parte reexamination
proceeding under 35 U.S.C. 257, because these proceedings are only
available to a patent owner.
Section 1.937: Section 1.937(d) is added to provide that a petition
in an inter partes reexamination proceeding must be accompanied by the
fee set forth in § 1.20(c)(6), except for petitions under §
1.956 to extend the period for response by a patent owner, petitions
under § 1.958 to accept a delayed response by a patent owner,
petitions under § 1.78 to accept an unintentionally delayed benefit
claim, and petitions under § 1.530(l) for correction of
inventorship in an inter partes reexamination proceeding.
Comments and Responses to Comments
As discussed previously, the Office proposed changes to the rules
of practice to implement section 12 of the AIA (supplemental
examination) and to set or adjust fees in ex parte and inter partes
reexamination proceedings in a notice of proposed rulemaking published
in January of 2012. See Changes to Implement the Supplemental
Examination Provisions of the Leahy-Smith Invents Act and to Revise
Reexamination Fees, 77 FR at 3666-81. The Office received thirty-six
comments in response to this notice from intellectual property
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 222 |
organizations, industry, law firms, individual patent
practitioners, and the general public. The comments and the Office's
responses to the comments follow:
Fees
Comment 1: A number of comments suggested that the fees for ex
parte reexamination, and for supplemental examination and any ex parte
reexamination ordered under 35 U.S.C. 257 as a result of the
supplemental examination, are too high, and suggested a variety of
alternative fee structures.
Response: The Office is adjusting the fee for filing a request for
ex parte reexamination, and is setting the fees for filing supplemental
examination and any resulting ex parte reexamination, to comply with 35
U.S.C. 41(d)(2). 35 U.S.C. 41(d)(2) permits the Office to set fees not
otherwise specified in 35 U.S.C. 41. 35 U.S.C. 41(d)(2) specifies that
such fees must be set at an amount that recovers the estimated average
cost to the Office for the service.
Section 10 of the AIA also authorizes the Office to set or adjust
fees, but unlike 35 U.S.C. 41(d)(2), permits fees to be set above or
below cost recovery so long as the aggregate revenue equals the
aggregate costs, including administrative costs. Section 10 of the AIA
sets out a process that the Office must follow when setting or
adjusting patent under that provision. The process set out in section
10 of the AIA, however, would not feasibly permit supplemental
examination and the related ex parte and inter partes reexamination
fees to be in place by September 16, 2012, the effective date of the
supplemental examination provisions of the AIA. Therefore, the fee for
filing an ex parte reexamination request is being adjusted, and the
fees for filing supplemental examination and any resulting ex parte
reexamination are being set, by this final rule under 35 U.S.C.
41(d)(2).
The Office has analyzed its ex parte and inter partes reexamination
costs in order to estimate the cost of supplemental examination and
resulting ex parte reexamination proceedings. The analysis of the
Office's ex parte and inter partes reexamination costs revealed that
the Office's current ex parte and inter partes reexamination fees are
not set at amounts that recover the Office's costs for these processes
or services. This final rule sets these fees at amounts that more
accurately reflect the estimated average cost to the Office for these
processes or services. The Office's analysis of the estimated fiscal
year 2013 costs for ex parte reexamination, supplemental examination
and any resulting reexamination, and petitions filed in ex parte and
inter partes reexamination proceedings is available via the Office's
Internet Web site (http://www.uspto.gov). Separately, the Office is in
the process of adjusting and setting all patent fees under section 10
of the AIA, and the fees set in this notice will be revisited and may
be proposed to be set or adjusted in that rulemaking.
Comment 2: Several comments questioned why the cost calculations
published by the Office to support the fees for ex parte reexamination
and for supplemental examination are based on the cost of denying,
rather than granting, ex parte reexamination.
Response: The cost calculations published by the Office, entitled
"Cost Calculations for Supplemental Examination and Reexamination,"
are posted on the Office's Internet Web site at www.uspto.gov. These
calculations are based on the costs incurred by the Office to process
and analyze a request for reexamination, to draft an order granting or
denying reexamination, and to conduct reexamination. The costs to
process and analyze a request for reexamination are the same regardless
of whether the examiner grants the request and orders reexamination, or
denies reexamination. This cost amount is specified as the fee for a
denied request for ex parte reexamination because it is the fee amount
retained by the Office if the Office decides not to institute
reexamination.
The decision as to whether the information submitted in a request
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 223 |
for supplemental examination raises a substantial new question of
patentability is identical to the decision as to whether the
information submitted in a request for ex parte reexamination raises a
substantial new question of patentability, except that the information
submitted in a request for supplemental examination is not limited to
patents and printed publications, and may be directed to issues of
patentability in addition to those permitted in ex parte reexamination,
such as issues under 35 U.S.C. 101 and 112. For this reason, the
estimated cost for processing and examining a request for supplemental
examination is based on the Office's cost for processing and examining
a request for ex parte reexamination up to the decision to grant or
deny the request for reexamination.
Comment 3: Several comments requested clarification as to why there
exists a significant difference between the proposed fee for treating
certain petitions in reexamination proceedings and the fees for
treating other petitions outside of reexamination.
Response: The Office is adjusting the fee for processing and
treating certain petitions in reexamination proceedings to comply with
35 U.S.C. 41(d), which does not authorize the Office to set the fee at
an amount that is below the estimated average cost for the Office to
process and treat the petition. As discussed previously, an analysis of
the Office's ex parte and inter partes reexamination costs revealed
that the Office's current fees for certain petitions in reexamination
are not set at amounts that recover the Office's costs for these
services. With the exception of certain types of reexamination
petitions which are expressly excluded by the rules, petitions in
reexamination proceedings involve issues of greater complexity, which
require additional time to analyze and decide than other patent-related
petitions. Reexamination petitions also tend to involve a greater
number of issues than other patent-related petitions. Therefore, the
fee for filing certain reexamination petitions is being adjusted, by
this final rule, to an amount that more accurately reflects the
estimated average costs to the Office to process and treat these
petitions. As discussed previously, the Office's analysis of the
estimated fiscal year 2013 costs for processing and treating petitions
filed in ex parte and inter partes reexamination proceedings, as well
as the Office's estimated fiscal year 2013 costs for supplemental
examination and ex parte reexamination, are available via the Office's
Internet Web site (http://www.uspto.gov).
Comment 4: A number of comments suggested that the Office should
not charge fees for supplemental examination which are in excess of
costs, as suggested by the Office's published executive summary of the
patent fee proposal in accordance with section 10 of the AIA, submitted
to the Patent Public Advisory Committee (PPAC) on February 7, 2012. A
number of comments suggested the small and micro entity subsidies
permitted under section 10 of the AIA be applied to supplemental
examination and reexamination. Several comments also suggested that the
costs incurred by the Office for processing and analyzing a denied
request for ex parte reexamination, on which the fee for filing a
request for supplemental examination request is based, includes the
costs for analyzing any non-patent documents submitted as part of the
request which have a length greater than 20 pages. These comments
suggested that the Office is inappropriately applying a surcharge for
submitting these documents as part of a request for supplemental
examination (the document size fee), without first reducing the fee for
filing a supplemental examination request by an amount which reflects the
average cost, per request, for analyzing these documents submitted with
a denied request for ex parte reexamination.
Response: As discussed previously, the Office is separately in the
process of adjusting and setting patent fees under section 10 of the
AIA in a separate rulemaking, but that process would not feasibly
permit supplemental examination and the related ex parte and inter
partes reexamination fees to be in place by September 16, 2012, the
effective date of the supplemental examination provisions of the AIA.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 224 |
Therefore, the fee for filing an ex parte reexamination request is
being adjusted, and the fees for filing supplemental examination and
any resulting ex parte reexamination are being set, by this final rule
under 35 U.S.C. 41(d)(2). 35 U.S.C. 41(d)(2) does not provide for small
or micro entity fee reductions. The fees set in this final rule will be
revisited and may be proposed to be set or adjusted in the rulemaking
under section 10 of the AIA.
To address the concern that the document size fees may result in a
double recovery of fee revenue, the Office reviewed all requests for ex
parte reexamination by a patent owner that met the requirements of 37
CFR 1.510 to be entitled to a filing date in fiscal year 2010 (59
requests) to determine: (1) the number of non-patent documents in these
requests that were between 21 and 50 pages in length; and (2) the
number of non-patent documents in these requests that were over 50
pages in length and the page length of each of these documents. In
fiscal year 2010, patent owner-filed requests for ex parte
reexamination contained three non-patent documents between 21 and 50
pages in length (which would have cost an additional $510) and two non-
patent documents which were over 50 pages in length: one between 100
and 150 pages in length (which would have cost an additional $730), and
one between 150 and 200 pages in length (which would have cost an
additional $1,010). Thus, the patent owner-filed requests for ex parte
reexamination that received a filing date in fiscal year 2010 would, if
submitted as requests for supplemental examination, have resulted in an
additional $2,250 in document size fees, which amounts to an average of
$38.14 per patent owner-filed request for ex parte reexamination
($2,250/59), or $40, when rounded to the nearest ten dollars.
Accordingly, the fee for filing a request for supplemental examination,
$5,140, has been reduced from the originally proposed fee ($5,180) by
the Office's average cost, per request, for analyzing non-patent
documents greater than 20 pages in length submitted as part of a patent
owner-filed request for ex parte reexamination in fiscal year 2010
($40).
Comment 5: A number of comments suggested that payment of the fee
for reexamination ordered under 35 U.S.C. 257 should not be required
until after reexamination is ordered.
Response: 35 U.S.C. 257(b) provides that "reexamination shall be
conducted according to procedures established by chapter 30 * * * ."
35 U.S.C. 305 expressly provides that, after the order (and after the
time period set for filing a patent owner statement under 35 U.S.C.
304, which is excluded by 35 U.S.C. 257(b)), "reexamination will be
conducted * * * with special dispatch." Therefore, once reexamination
is ordered, the Office is required by statute to conduct the
reexamination proceeding with special dispatch. To permit a delay in
prosecution caused by any time period within which the patent owner
would be permitted to pay the reexamination fee would be contrary to
the Office's mandate to conduct the reexamination with special
dispatch. This final rule requires payment of the reexamination fee
upon the filing of the request to permit the Office to commence any
reexamination ordered under 35 U.S.C 257 in a timely manner. See
§ 1.610(a). If reexamination is not ordered, this final rule expressly
provides that the patent owner will obtain a refund of the
reexamination fee. See §§ 1.26(c)(3) and 1.625(c).
Comment 6: A number of comments suggested that if the patent owner
cancels the claims within a set time period after reexamination is
ordered under 35 U.S.C. 257, a significant portion of the reexamination
fee should be refunded.
Response: 35 U.S.C. 257(b) expressly requires, if reexamination is
ordered, that "fees established and applicable to ex parte
reexamination proceedings under chapter 30 shall be paid." 35 U.S.C.
257(b) does not provide for a refund due to claim cancellation during
the reexamination. Moreover, in ex parte reexamination, the only method
by which the patent owner may file an amendment to cancel claims after
the order and prior to a first Office action is by filing a patent
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 225 |
owner's statement under 35 U.S.C. 304. 35 U.S.C. 257(b), however,
expressly excludes the right of the patent owner to file a statement
under 35 U.S.C. 304. Therefore, the filing of any amendment to cancel
claims after the order granting reexamination under 35 U.S.C. 257 and
before the initial Office action on the merits is statutorily
precluded. Finally, there is no reason to believe that the processing
and examination costs would be less for an ex parte reexamination in
which an amendment has been filed (or claims have been canceled) than
for an ex parte reexamination in which no amendment has been filed.
Comment 7: A number of comments suggested that the rule requiring
document size fees be modified or eliminated for non-patent documents
that are over 50 pages in length if a summary of the relevant portions
is provided. Several comments alternatively suggested that the
requirement to summarize non-patent documents over 50 pages in length
be eliminated, and that the document size fees should be retained to
recover the costs of reviewing lengthy documents in order to ensure the
consideration of any relevant information contained in the documents.
Response: Even though a summary of the relevant portions of a
document over 50 pages in length is provided, the examiner is still
required to review the document. The document size fees, as set forth
in this final rule, recover the Office's costs of reviewing lengthy
documents. Additionally, the requirement for the summary directs the
Office's attention to the relevant information presented in lengthy
documents. Patent owners are encouraged to redact lengthy documents to
include only the relevant portions, unless the redaction would remove
context such that the examiner would not be provided with a full
indication of the relevance of the information.
Item of Information Limit
Comment 8: A number of comments suggested that the Office replace
the limit on the number of items of information on which each request
for supplemental examination may be based, with a sliding fee scale
which would be based on, for example, a separate fee for each item of
information submitted.
Response: The supplemental examination procedure was designed to
enable patent owners to present items of information for consideration,
reconsideration, or correction. The Office is required to conduct and
conclude supplemental examination within three months after a request
is filed. In order to meet this time frame, the Office is setting a
limit of twelve items of information that a patent owner may submit to
the Office in each request. The purpose of this limit is to
strike a balance between the needs of the patent owner and the ability
of the Office to timely conclude the proceeding. There is, however, no
limit to the number of issues that these twelve items of information
can raise, or to the number of separate requests for supplemental
examination of the same patent that a patent owner can file at any
time.
Even though the basis for most inequitable conduct allegations is
typically far fewer than ten items of information, the Office has
raised the limit to twelve items of information in response to the
public's comments. A review of ex parte reexamination requests filed in
fiscal year 2011 revealed that in at least ninety-three percent of the
requests, the requester relied on twelve or fewer documents. In
addition, the Office is very mindful of the time necessary for
examiners to analyze the items of information submitted, particularly
since the items are not limited to patents and printed publications,
and since each item may raise multiple issues. This final rule limits
the number of items of information to twelve to establish a procedure
that not only is practical, but also enables an examiner to fully,
comprehensively, and timely analyze all submitted items of information
and issues to accurately determine whether there is a substantial new
question of patentability.
Merger
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 226 |
Comment 9: A number of comments questioned whether the Office will
consider merging multiple requests for supplemental examination of the
same patent and/or consolidating the reexamination proceedings
resulting from these requests. These comments also questioned how any
merger procedure contemplated by the Office will be conducted.
Response: A supplemental reexamination proceeding must conclude
within three months from the filing date of the request. As a general
rule, the Office will not merge a supplemental examination proceeding
with any other supplemental examination proceeding. The Office,
however, reserves its option to merge supplemental examination
proceedings as circumstances arise. The Office likewise does not
anticipate that a supplemental examination proceeding or ex parte
reexamination proceeding resulting from a supplemental examination
proceeding will be merged with any other type of Office proceeding. The
Office similarly reserves its option to merge reexamination proceedings
that are ordered as a result of supplemental examination proceedings as
circumstances arise.
Items of Information
Comment 10: A number of comments requested that the method of
counting the items of information be clarified. These comments
questioned whether a reference which raises an issue of anticipation
and also raises an issue of obviousness would be counted as one or two
items. One comment suggested that a combination of references under 35
U.S.C. 103 be counted as a single item. One comment suggested that
where multiple items of information can be deemed to be cumulative to
each other, the cumulative items be counted as one item.
Response: When counting the number of items of information in a
request for supplemental examination, the Office will tally the number
of items of information, such as documents, presented. The Office will
not count the number of issues raised by, or the number of grounds
which the patent owner requests the Office to consider, when
determining the number of items of information. A single reference that
raises multiple issues under multiple grounds, for example, under 35
U.S.C. 102, 35 U.S.C. 103, and 35 U.S.C. 112, will be counted as a
single item of information. However, if the patent owner cites a
combination of multiple references under 35 U.S.C. 103, then each
reference of the combination will be counted as one item of
information. For example, if the patent owner states that the claims
are patentable under 35 U.S.C. 103 over the combination of reference A
in view of reference B, then reference A and reference B must be
separately listed as items of information, and will be counted as two
items. Cumulative items of information will each be separately counted.
For example, if the patent owner indicates that reference A is
cumulative to reference B, reference A and reference B will be counted
as two items of information. If the patent owner believes that multiple
items of information are cumulative to each other, the patent owner is
encouraged to select one or two documents as the items of information
that will be submitted with the request.
Comment 11: One comment questioned whether a book of meeting
abstracts constitutes one or more items of information. Several
comments further questioned how supporting documents, such as
declarations, dated sales receipts, marketing catalogs, and tables of
data would be counted.
Response: An "item of information" is defined as a document,
submitted as part of the request, that contains information believed to
be relevant to the patent, and that the patent owner is requesting the
Office to consider, reconsider, or correct. See § 1.605(b). If, for
example, the patent owner relies upon different abstracts, bound
together in a book of meeting abstracts, it is likely that the Office
will treat each abstract as a separate item of information. In this
example, the Office suggests that the patent owner cite to and rely
upon only the particular abstracts that are relevant to the patent and
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 227 |
not cite to an entire book of meeting abstracts.
A declaration or affidavit would be considered an item of
information. If the declaration presents two distinct items of
information, such as information relating to a potential ground under
35 U.S.C. 101 as to patent claim 1 that was not considered during the
prior examination of the patent, and information relating to erroneous
facts or data presented during the prior examination of the patent with
respect to an issue under 35 U.S.C. 103 as to patent claim 10, then
each item of information contained within the declaration will be
counted separately, resulting in two items of information. As another
example, if the declaration presents one item of information, such as
information regarding erroneous data presented during the prior
examination of the patent with respect to an issue under 35 U.S.C. 103
as to patent claim 10, and relies upon a single exhibit, such as a new
table of data, to support facts presented in the declaration, the
Office is likely to count the declaration, including the supporting
exhibit, as a single item of information. However, as a further
example, if the declaration presents information relating to a
potential sale of the invention and relies upon two separate and
distinct sales receipts (e.g., a sales receipt dated March 2011 which
provides evidence of the sale of the invention, and a second, separate
sales receipt dated October 2011, which provides evidence of a second,
separate sale of the invention), then each additional sales receipt
will be counted separately, resulting in two items of information (one
item consisting of the declaration and one sales receipt, and the
second item consisting of the second sales receipt). As a final
example, if the declaration relies not only upon a sales receipt as
evidence of a sale of the invention under 35 U.S.C. 102(b), but also
upon a reference patent as evidence of a potential ground under 35
U.S.C. 103, then again, each additional exhibit will be counted separately.
In this example, the reference patent will be counted as a second item of
information.
A discussion within the body of the request will only be counted if
the information to be considered, reconsidered, or corrected is not, at
least in part, contained within or based on a supporting document. See
§ 1.605(b). If, for example, the discussion within the body of the
request identifies a sales receipt supplied as an exhibit to the
request as a potential ground under 35 U.S.C. 102(b), the discussion in
the body of the request regarding a sales receipt will not be counted
because the "information," i.e., the sale, is at least in part, if
not wholly, contained within or based on the sales receipt. Patent
owners are encouraged to draft the request for supplemental examination
in a manner that clearly and consistently sets forth the items of
information which the patent owner wishes the Office to consider,
reconsider, or correct.
Comment 12: A number of comments questioned whether a new reference
cited in an information disclosure statement by the patent owner during
a reexamination ordered under 35 U.S.C. 257 will be designated as
"considered during the supplemental examination of the patent" within
the meaning of 35 U.S.C. 257(c) for purposes of enforceability.
Response: 35 U.S.C. 257(c) specifies the effect of a supplemental
examination proceeding on the enforceability of the patent.
Specifically, 35 U.S.C. 257(c)(1) provides that, with two exceptions,
"[a] patent shall not be held unenforceable on the basis of conduct
relating to information that had not been considered, was inadequately
considered, or was incorrect in a prior examination of the patent if
the information was considered, reconsidered, or corrected during a
supplemental examination of the patent." A supplemental examination
proceeding commences with the receipt of a request for supplemental
examination, and concludes with the issuance of a supplemental
examination certificate. See 35 U.S.C. 257(a). Reexamination is not
ordered until after the supplemental examination certificate has
issued. See 35 U.S.C. 257(b) ("[i]f the certificate issued under
subsection (a) indicates that a substantial new question of
patentability is raised * * * the Director shall order
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 228 |
reexamination"). Thus, if the patent owner wishes to ensure that the
benefits of 35 U.S.C. 257(c)(1) attach to an item of information, the
patent owner should submit the item of information as part of the
request for supplemental examination and not wait to submit it in an
information disclosure statement during a reexamination.
Ownership Requirement
Comment 13: A number of comments suggested that an owner of less
than the entire right, title, and interest in the patent be permitted
to file a request for supplemental examination. A number of comments
suggested that filing by fewer than all of the owners be permitted when
a joint owner is deceased, is legally incapacitated, refuses to join,
or cannot be found after diligent effort, or where one of the owners is
an organization that is dissolved.
Response: 35 U.S.C. 257(a) only permits a patent owner to file a
request for supplemental examination. All parties having an interest in
a patent are deemed "a patent owner" as a composite entity and must
act together in proceedings before the Office. See MPEP § 301
("Ownership/Assignability of Patents and Applications"), which
expressly states: "All parties having any portion of the ownership of
the patent property must act together as a composite entity in patent
matters before the Office." See also MPEP § 324.
The Office's practice for supplemental examination is consistent
with ex parte reexamination practice, which requires a patent owner
requester of an ex parte reexamination to comply with the provisions of
§§ 3.71 and 3.73, and MPEP § 324 for establishing an
assignee's right to take action when submitting a power of attorney.
See MPEP § 2222.
The Office may, under rare circumstances, permit less than all of
the owners to file a request for supplemental examination if a
grantable petition under § 1.183 requesting waiver of the
provisions of §§ 3.71 and 3.73(c) is filed. For example, such a
petition may be filed in the case of a deceased or legally
incapacitated joint owner, or where the joint owner refuses to join or
cannot be found after diligent effort. In the case of a deceased joint
owner, the heirs, administrators, or executors of the joint owner may
be permitted to join in filing the request for supplemental
examination. If one of the owners is legally incapacitated, the legal
representative of the joint owner may be permitted to join in filing
the request for supplemental examination. If a joint owner refuses to
sign or cannot be found or reached after diligent effort, the remaining
owners in the petition must include proof of the pertinent facts, a
showing that such action is necessary to preserve the rights of the
parties or to prevent irreparable damage, and the last known address of
all of the joint owners. Finally, if an owner of all or a portion of
the entire right, title, and interest of the patent is an organization
that is dissolved, the Office may require that a determination of the
ownership of the patent be obtained from a court of competent
jurisdiction.
Comment 14: A number of comments suggested that a licensee, and in
particular, an exclusive licensee, be permitted to file a request for
supplemental examination. A number of comments also suggested that if
an assignee or any person with sufficient proprietary interest, as
authorized by 35 U.S.C. 118 as amended by the AIA, can apply for a
patent, then the same assignee may file a request for supplemental
examination. One comment questioned whether a legal representative of
the patent owner may file a request and conduct prosecution.
Response: 35 U.S.C. 257(a) only permits a patent owner to file a
request for supplemental examination. Accordingly, the Office is not
authorized to permit a party who is not a patent owner, or a party who
merely states that it is, for example, an exclusive licensee or a
person with sufficient proprietary interest under 35 U.S.C. 118, to
file a request for supplemental examination.
A legal representative of the patent owner may file a request for
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 229 |
supplemental examination on behalf of the patent owner. The request,
however, may not be filed anonymously. The request must identify the
owner(s) of the entire right, title, and interest in the patent to be
examined, on whose behalf the legal representative is acting, as
required by this final rule. See § 1.610(b)(9). Where an attorney
or agent files a request on behalf of a patent owner, he or she may act
under a power of attorney under § 1.32, or in a representative
capacity under § 1.34. A patent owner may not be represented during
a supplemental examination proceeding or the resulting ex parte
reexamination proceeding by an attorney or other person who is not
registered to practice before the Office. Any correspondence from the
Office will be directed to the patent owner at the address indicated in
the file of the patent for which supplemental examination is requested
pursuant to § 1.33(c), regardless of the address of the person
filing the request.
Content of Request
Comment 15: A number of comments suggested that the content
requirements for a supplemental examination request are overly
burdensome, and suggested a variety of alternative and simplified
requirements. A number of comments suggested that the detailed content
requirements may potentially expose the patent owner to subsequent
allegations of inequitable conduct based on an omission, or a specific
statement or characterization, made in a supplemental examination request.
Response: In response to the public's comments, the Office has
revised the content requirements for a request for supplemental
examination to include the following: (1) An identification of the
number of the patent for which supplemental examination is requested;
(2) a list of the items of information that are requested to be
considered, reconsidered, or corrected; (3) a list identifying any
other prior or concurrent post-patent Office proceedings involving the
patent for which supplemental examination is being requested; (4) an
identification of each claim of the patent for which supplemental
examination is requested; (5) a separate, detailed explanation of the
relevance and manner of applying each item of information to each claim
of the patent for which supplemental examination is requested; (6) a
copy of the patent for which supplemental examination is requested and
a copy of any disclaimer or certificate issued for the patent; (7) a
copy of each listed item of information, accompanied by a written
English translation of all of the necessary and pertinent parts of any
non-English language item of information (except for items of
information that form part of the discussion within the body of the
request, or copies of U.S. patents and U.S. patent application
publications); (8) a summary of the relevant portions of any submitted
document, other than the request, that is over 50 pages in length; and
(9) an identification of the owner(s) of the entire right, title, and
interest in the patent requested to be examined, and a submission by
the patent owner in compliance with § 3.73(c) establishing the
entirety of the ownership in the patent requested to be examined. See
§ 1.610(b). These requirements balance the interests of the public
with the Office's need to make an accurate and comprehensive
determination, within the statutory three-month time period, whether
any of the items of information submitted as part of the request raise
a substantial new question of patentability.
Comment 16: A number of comments questioned whether permitting an
explanation of how the claims distinguish over the items of information
would be contrary to the spirit of 35 U.S.C. 257(b), which provides
that "reexamination shall be conducted according to the procedures
established by chapter 30, except that the patent owner shall not have
the right to file a statement pursuant to section 304."
Response: Section 1.610(c) permits the patent owner to include, in
the request, an explanation of how the claims patentably distinguish
over the submitted items of information. Section 1.610(c) is consistent
with established ex parte reexamination practice, which allows the
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 230 |
patent owner to describe, in the request, how the claims distinguish
over the cited prior art patents and printed publications (see MPEP
§ 2217). This provision is not contrary to the spirit of 35 U.S.C.
257(b), which removes the right of the patent owner to file a statement
under 35 U.S.C. 304 during any subsequent reexamination. A patent
owner's statement under 35 U.S.C. 304 is filed after the order granting
reexamination and serves a different function. Specifically, patent
owner's statement under 35 U.S.C. 304 addresses the Office's
determination in the order granting reexamination that a substantial
new question of patentability has been raised by the request. In
contrast, a patent owner's explanation that may form part of the
request for supplemental examination under § 1.610 discusses how
the claims may be distinguished over the items of information submitted
as part of the request. Furthermore, § 1.610(c) is also consistent
with established ex parte reexamination practice, which allows the
patent owner to describe, in the request, how the claims distinguish
over the cited prior art patents and printed publications (see MPEP
§ 2217).
Comment 17: A number of comments suggested that the requirements
for a copy of the patent for which supplemental examination is
requested, and for a copy of each item of information, are unnecessary
because such copies would be available to the Office. One comment
suggested that the Office may obtain copies of any items of information
that are available through the Common Citation Document (CCD), which
was launched by the Trilateral Offices.
Response: The requirement for a copy of the patent for which
supplemental examination is requested assists in preventing an
inadvertent misidentification by the patent owner of the patent, for
example, by transposing some of the digits of the patent number in the
transmittal sheet and/or in the body of the request. The requirement
also assists the Office in quickly discovering such inadvertent errors
upon the receipt of the request. This requirement likwise assists in
preventing any similar misidentification by the Office, thus avoiding
an erroneous supplemental examination of a patent that is not owned by
the requester. A copy of each item of information is required for the
same reasons; i.e., to prevent any inadvertent misidentification of the
item of information in the list of items of information and/or in the
body of the request by the patent owner or the Office. However, copies
of items of information that form part of the discussion within the
body of the request as specified in § 1.605(b) are not required to
be submitted. Copies of items of information which are U.S. patents and
U.S. patent application publications are also not required, but may be
submitted. See § 1.610(b)(7).
The Common Citation Document (CCD) is an effective work sharing
tool developed by the Trilateral Offices. Use of the CCD to obtain
copies of items of information would not be feasible. The Office is
required by statute to make a determination on the request within three
months from the filing date of the request. To receive a filing date, a
request for supplemental examination must be in a condition which
permits the Office to promptly initiate supplemental examination of the
patent. For the Office to be able to promptly initiate supplemental
examination, a copy of the subject patent and all items of information
must be available for review. If a copy of an item of information
identified in the request were not obtainable through the CCD tool due
to, for example, an inadvertent misidentification of the identifying
information by the patent owner, an inadvertent difficulty with the
hyperlink or other form of browser-executable code that appears on the
CCD Web site, or it being an inaccessible non-patent document, the
Office would not be able to initiate supplemental examination, and the
request would not be entitled to a filing date until the item could be
obtained. Accordingly, the final rule requires that a copy of the
patent for which supplemental examination is requested, and copies of
each item of information identified in the request, must be submitted
as part of the request.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 231 |
Comment 18: A number of comments suggested that the requirement to
identify any other prior or concurrent post-patent Office proceedings
involving the patent for which supplemental examination is requested is
unnecessary because this information may be obtained by the Office.
Response: The Office anticipates that a patent for which
supplemental examination is requested may be involved in other post-patent
Office proceedings, including another supplemental examination proceeding.
Daily monitoring by the Office for the potential filing, in each and
every supplemental examination proceeding, of any concurrent post-
patent Office proceedings would not be feasible. The patent owner is in
the best position to inform the Office of the existence of any other
post-patent Office proceedings, whether the Office proceedings are
prior or concurrent to the present supplemental examination proceeding.
For these reasons, the final rule requires a list identifying any other
prior or concurrent post-patent Office proceedings involving the patent
for which supplemental examination is being requested. See § 1.610(b)(3).
Comment 19: A number of comments suggested that the requirement for
a summary of the relevant portions of any submitted document, other
than the request, that is over 50 pages in length be eliminated and/or
replaced with an alternative requirement, such as a requirement for a
summary of the entire document (rather than a summary of only the
relevant portions) with citations to the particular pages believed to
be relevant.
Response: As discussed previously, the requirement for the summary
directs the Office's attention to the relevant information presented in
lengthy documents. Patent owners are encouraged to redact lengthy
documents to include only the relevant portions, unless the redaction
would remove context such that the examiner would not be provided with
a full indication of the relevance of the information.
Comment 20: One comment questioned whether the required detailed
explanation of the relevance and manner of applying each item of
information will be available to the examiner during reexamination
ordered as a result of the supplemental examination, and whether the
required detailed explanation will be made part of the record.
Response: The entire contents of a request for supplemental
examination, including the required detailed explanation of the
relevance and manner of applying each item of information will be
available to the examiner if a reexamination is ordered as a result of
the supplemental examination. Also, the contents of a request for
supplemental examination that has received a filing date will be made
part of the official record of the patent, and will be available to the
public.
Comment 21: One comment questioned how the Office will address a
request to consider, reconsider, or correct an item of information
based on a given document in view of "all existing prior art for the
purposes of 35 U.S.C. 103."
Response: If a patent owner requests the Office to consider an item
of information in view of "all existing prior art for the purposes of
35 U.S.C. 103" in a request for supplemental examination, the request
will not be given a filing date, due to the failure to comply with the
requirements of the request. See § 1.610(d). The request may only
be based on twelve items of information. If one item of information is
combined in the request with one or more additional items of
information, each item of information of the combination may be
separately counted. See §§ 1.605(a) and (d). If an item of
information is requested to be considered in view of all existing prior
art under 35 U.S.C. 103, each piece of prior art would need to be
provided and counted, and would presumably result in a number far
greater than twelve. In addition, the request must include inter alia:
(1) a list identifying each of the items of information that the patent
owner requests the Office to consider, reconsider, or correct; and (2)
a detailed explanation of the relevance and manner of applying each
item of information to each claim of the patent for which supplemental
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 232 |
examination is requested. See § 1.610(b). A request to consider,
reconsider, or correct an item of information in view of "all existing
prior art for the purposes of 35 U.S.C. 103" will not be deemed to
meet these requirements.
Filing Date of Request
Comment 22: A number of comments suggested that the procedure for
determining the filing date of a request for supplemental examination
is unduly strict, and suggested a variety of alternative procedures,
such as a procedure in which a filing date is granted to a
substantially complete request, or to any request that does not contain
a gross deficiency. These comments suggested that if an appropriately
corrected request is timely filed in response to a notice by the Office
of the defects, the request would retain the original filing date. A
number of comments also suggested that a broader range of non-
substantive or minimal defects, such as the mistakes in meeting format
requirements, or a deficiency in a fee payment, be included in the
exceptions to the requirement that the request be complete.
Response: The Office appreciates the importance of the filing date
of a supplemental examination request. As discussed previously, the
Office has simplified the content requirements for the request for
supplemental examination to make it easier for a patent owner. See
§ 1.610(b). These requirements have been carefully formulated to
address the concerns of the public, while providing the Office with the
necessary information to make an accurate and comprehensive
determination on the request for supplemental examination within the
statutory three-month time period. As discussed previously, since the
statutory three-month period commences with the filing date of the
request, the final rule provides that a filing date will not be granted
if the request is not in compliance with §§ 1.605, 1.610, and
1.615. The Office, however, has the discretion under § 1.610(d) to
grant a filing date if the request contains only minor defects, such as
improper margins or other format issues.
Comment 23: A number of comments suggested that the request not be
made public until after a filing date is granted to avoid a "race to
the court." These comments suggested that a request that is not
granted a filing date, due to the presence of one or more defects in
the request, could inform an accused infringer of the manner in which
an inequitable conduct charge could be raised in court. These comments
further suggested that such an inequitable conduct charge could be
maintained in court notwithstanding a later-filed corrected request for
supplemental examination that cures all of the defects of the
originally filed request, but which is given a filing date that is
later than the date on which the inequitable conduct charge is raised
in court by the accused infringer.
Response: In response to the public's comments, the Office does not
intend to make a request for supplemental examination public until the
request is granted a filing date. The Office is establishing a
procedure in which the request, and any other papers or information
submitted as part of or accompanying the request, would not be viewable
in Public PAIR until a filing date is granted by the Office.
Comment 24: A number of comments suggested that the statute permits
the filing date of the original request to be distinct from the date
that starts the three-month period to conduct the supplemental
examination when a corrected request is filed. These comments suggested
that the original filing date may be granted upon correction of any
defects, and that the date starting the three-month period may be
separately determined to be the date of the corrected request.
Response: 35 U.S.C. 257(a) provides for a single date only-- "the
date a request for supplemental examination meeting the requirements of
this section is received." The statute does not authorize the Office
to grant a date that is separate and distinct from the date established
by the statute as a filing date. Thus, the date specified in 35 U.S.C.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 233 |
257(a) is both the filing date and the date that starts the three-month
period to conduct the supplemental examination.
Conduct of Supplemental Examination
Comment 25: A number of comments suggested that the review by the
Office of the items of information presented in a request for
supplemental examination should not be generally limited to a review of
the issues identified in the request, but rather that the supplemental
examination should entail a general reassessment of all issues of
patentability. Several comments suggested that such a limitation is not
authorized by 35 U.S.C. 257. These comments also suggested that this
limitation would provide unwarranted unenforceability protection,
because a patent owner could include in its request a discussion of
some issues of patentability with respect to an item of information,
while withholding comment as to other relevant issues of patentability,
a court would be statutorily required to dismiss any allegations of
inequitable conduct based on any conduct relating to the items of
information.
Response: 35 U.S.C. 257(a) expressly authorizes the Office to set
forth regulatory requirements governing supplemental examination: "A
patent owner may request supplemental examination * * * in accordance
with such requirements as the Director may establish." See also 35
U.S.C. 257(d)(2) ("[t]he Director shall issue regulations governing
the form, content, and other requirements of requests for supplemental
examination, and establishing procedures for reviewing information
submitted in such requests"). In response to the public comments, this
final rule has been clarified to state that the Office's determination
of whether a substantial new question of patentability affecting any
claim of the patent has been raised by any of the items of information
presented in the request will be generally limited to a review of the
item(s) of information identified in the request with respect to the
identified claim(s) of the patent. 35 U.S.C. 257(a) requires the Office
to determine, within three months of the filing date of each request,
whether any of the items of information on which the request is based
raises a substantial new question of patentability. In order to ensure
an accurate and comprehensive determination of whether the request
raises a substantial new question of patentability within the statutory
three-month period, it is reasonable to put the patent owner on notice
that unless the patent owner identifies the particular claim(s) which
the patent owner requests the Office to consider with respect to each
item of information, the record may not reflect that these claim(s)
were explicitly considered by the examiner. As to the level of
unenforceability protection, the issue of whether a court would be
statutorily required to dismiss all allegations of inequitable conduct
involving a particular item of information is within the purview of the
courts.
Comment 26: A number of comments suggested that the term "material
fraud" be clarified. These comments suggested that the Office provide
guidance as to the standard and the burden of proof that will be used
for determining a threshold finding that is sufficient to justify a
referral to the Office of Enrollment and Discipline (OED) and/or the
Attorney General. A number of comments also suggested that any persons
implicated by a potential material fraud be provided notice and
opportunity to be heard prior to any referral to OED or to the Attorney
General, and that the patent owner be required to notify the person or
practitioner as to the particular items of information and the alleged
conduct pertaining to them.
Response: 35 U.S.C. 257 does not provide for the Office to make any
definitive determination or finding of material fraud, nor does the
statute provide for the Office to set up procedures to make such a
determination. Moreover, the Office anticipates that such instances
will be rare. Accordingly, the Office does not intend to create a unit
to investigate instances of material fraud. If an employee of the
Office, such as an examiner in the Central Reexamination Unit (CRU),
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 234 |
becomes aware, during the course of supplemental examination or of any
reexamination ordered under 35 U.S.C. 257, that a material fraud on the
Office may have been committed in connection with the patent subject to
a supplemental examination or resulting reexamination ordered under 35
U.S.C. 257, the employee would notify the supervisory official in
charge of the section of the Office to which the employee is assigned,
such as the Director of the CRU. The supplemental examination
proceeding, or any reexamination proceeding ordered under 35 U.S.C.
257, would continue. If the supervisory official concurs, he or she
would refer the matter to the Deputy Commissioner for Patent
Examination Policy. If the Deputy Commissioner for Patent Examination
Policy concurs, the matter would be referred to the Office's General
Counsel.
Comment 27: One comment suggested that supplemental examination
should be available after litigation is filed. A number of comments
suggested that the Office specifically retain the discretion to permit
a supplemental examination proceeding to proceed concurrently with an
action brought under Section 337(a) of the Tariff Act of 1930 (19
U.S.C. 1337(a)) in which a defense of inequitable conduct has been
raised, if an ordered ex parte reexamination under 35 U.S.C. 257 has
proceeded to a stage at which it is likely to be concluded prior to the
trial proceeding. These comments suggested that if the ordered ex parte
reexamination under 35 U.S.C. 257 has not proceeded to such a stage,
then the Office should retain discretion to suspend the supplemental
examination or any ordered ex parte reexamination until the merits of
the defense are concluded in the trial proceeding.
Response: If the patent owner files a request for supplemental
examination that is in compliance with 35 U.S.C. 257 and all applicable
rules, the Office is required under 35 U.S.C. 257(a) to conduct the
examination and conclude the proceeding within three months from the
filing date of the request. Any reexamination proceeding resulting from
the supplemental examination proceeding must, in accordance with 35
U.S.C. 257(b), be conducted "according to the procedures established
by chapter 30," which govern ex parte reexamination. If reexamination
is ordered, the Office is required to proceed with the reexamination.
35 U.S.C. 304 requires the Office to resolve any substantial new
question of patentability determined to be raised: "[i]f * * * the
Director finds that a substantial new question of patentability
affecting any claim of a patent is raised, the determination will
include an order for reexamination of the patent for resolution of the
question" (emphasis added). In addition, 35 U.S.C. 305 expressly
provides that, after the order (and after the time period set for
filing a patent owner statement under 35 U.S.C. 304, which is excluded
by 35 U.S.C. 257(b)), "reexamination will be conducted."
Therefore, once reexamination is ordered, the Office is required by
statute to conduct the reexamination. 35 U.S.C. 305 also requires that
an ex parte reexamination proceeding "be conducted with special
dispatch within the Office." See Ethicon v. Quigg, 849 F.2d 1422 (Fed.
Cir. 1988). For these reasons, any reexamination proceeding ordered
under 35 U.S.C. 257 will generally not be suspended. The patent owner
may wish to consider the provisions of 35 U.S.C. 257(c)(1) and (c)(2)
on the effectiveness of any supplemental examination on already pending
litigation when determining whether and when to file a request for
supplemental examination.
Comment 28: One comment suggested that the rules make clear whether
the Office will hold in abeyance any petition or paper filed by a third
party in a supplemental examination proceeding until after the
proceeding is concluded.
Response: In accordance with 35 U.S.C. 257(a), which only permits a
patent owner to file a request for supplemental examination, this final
rule expressly prohibits any party other than the patent owner from
filing papers or otherwise participating in any manner in the
supplemental examination proceeding. See § 1.601(b). If a third
party files any petition or other paper in a supplemental examination
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 235 |
proceeding, it will not be entered into the official file or
considered. If such papers are inadvertently entered, they will be
expunged. See § 1.620(c).
Interviews
Comment 29: A number of comments suggested that interviews be
permitted at the discretion of the examiner during the time period
prior to the issuance of a supplemental examination certificate.
Several comments suggested interviews be permitted as a matter of right
during this time period.
Response: The Office must make a determination on the request
within the three-month statutory period, which limits the amount of
time that an examiner can devote to any one request. The prohibition of
interviews, as implemented in this final rule, will assist the Office
in meeting the statutory deadline. See § 1.620(e). A telephone call
to the Office to confirm the receipt of a request, or to discuss
general procedural questions, is not considered to be an interview for
the purposes of this provision. Additionally, the prohibition applies
only to supplemental examination proceedings. Interviews will be
permitted in any ex parte reexamination proceeding ordered as a result
of the supplemental examination proceeding, in accordance with the
regulations governing ex parte reexamination. Further, interviews are
generally permitted to discuss issues of patentability, which are
directly addressed during any reexamination proceeding ordered under 35
U.S.C. 257, and not during the supplemental examination proceeding.
Finally, the only determination made in a supplemental examination
proceeding is whether a substantial new question of patentability is
raised by any of the items of information submitted as part of the
request. The prohibition of interviews in a supplemental examination
proceeding, as implemented in this final rule, is consistent with
established ex parte reexamination practice, which prohibits interviews
involving a discussion of the patentability of the claims prior to a
first Office action on the merits. See § 1.560(a).
Amendments
Comment 30: Several comments suggested that amendments be permitted
to be filed with the request for supplemental examination. These
comments suggested that permitting amendments to be filed with the
request would prevent the examiner from unnecessarily applying, in any
reexamination ordered under 35 U.S.C. 257, a rejection to a claim which
the patent owner intends to amend or cancel. One comment questioned
whether a discussion of proposed alternative claim language in the
request will be considered to be a prohibited proposed amendment.
Response: 35 U.S.C. 257(a) permits a patent owner to present only
items of information in a request for supplemental examination. An
amendment is not an item of information and therefore the final rule
provides that no amendment may be filed in a supplemental examination
proceeding. See § 1.620(f). Any proposed amendment included with a
request for supplemental examination would not be considered by the
Office in making the determination of whether a substantial new
question of patentability is raised by any of the items of information.
Furthermore, if the Office makes the determination that no substantial
new question of patentability is raised, any amendment filed with the
request would remain in the file, and may create a cloud on the patent.
An amendment may be submitted during a reexamination ordered under
35 U.S.C. 257. Patent owners, however, are reminded that 35 U.S.C.
257(b) expressly removes the right of the patent owner to file a
statement under 35 U.S.C. 304, which includes any amendment that the
patent owner may wish to file prior to an initial Office action on the
merits. As the patent owner is prohibited from filing a statement under
35 U.S.C. 304, no amendment may be filed, in any reexamination
proceeding ordered under 35 U.S.C. 257, until after the initial Office
action on the merits. As discussed previously, a patent owner may file
a statutory disclaimer under 35 U.S.C. 253 and § 1.321(a) prior to
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 236 |
filing any request for supplemental examination. See MPEP § 1490.
Moreover, if the patent owner merely wishes to amend the patent claims,
the patent owner may file a reissue application instead of a request
for supplemental examination.
Supplemental Examination Certificate
Comment 31: A number of comments suggested that the Office specify
that the electronically issued supplemental examination certificate
will display the filing date of the request. These comments also
suggested that the Office consider whether any ex parte reexamination
certificate published as a result of an ex parte reexamination ordered
under 35 U.S.C. 257 will be issued electronically, in the same manner
as the supplemental examination certificate. A number of comments
requested that the supplemental examination certificate list each item
of information presented by the request, and expressly state that the
item was considered during the supplemental examination of the patent
even if the item is determined not to raise a substantial new question
of patentability.
Response: The electronically issued supplemental examination
certificate will display the filing date of the request. The Office is
mindful of the importance of the filing date in determining the effect
under 35 U.S.C. 257(c) of the supplemental examination proceeding. The
electronically issued supplemental examination certificate will also
list each of the items of information properly submitted as part of the
request, and state whether each of these items raises a substantial new
question of patentability affecting the identified claims of the
patent. Any ex parte reexamination certificate resulting from a
reexamination ordered under 35 U.S.C. 257 will be published in
accordance with established ex parte reexamination practice (see § 1.570)
since 35 U.S.C. 257(b) requires that any resulting reexamination be
conducted according to procedures established for ex parte reexamination.
Comment 32: One comment suggested that supplemental examination
proceedings do not conclude with the issuance of the initial
(supplemental examination) certificate. This comment suggested that the
(ex parte reexamination) certificate, which is issued at the conclusion
of any reexamination ordered under 35 U.S.C. 257, should be designated
as the supplemental examination certificate.
Response: 35 U.S.C. 257(a) requires that supplemental examination
"shall conclude with the issuance of a certificate indicating whether
the information presented in the request raises a substantial new
question of patentability." An ex parte reexamination certificate does
not indicate whether the information presented in the request raises a
substantial new question of patentability. Instead, it provides the
results of the Office's later determination, in any reexamination
ordered as a result of the supplemental examination proceeding, whether
the claims are patentable. In addition, if the Office determines in a
supplemental examination proceeding that none of the items of
information raise a substantial question of patentability, then
reexamination would not be ordered, and no reexamination certificate
would issue that could be designated as a supplemental examination
certificate. For these reasons, a supplemental examination proceeding
will conclude with the electronic issuance of a supplemental
examination certificate, which is separate and distinct from an ex
parte reexamination certificate. See § 1.625(a).
Comment 33: One comment suggested that the order for reexamination
be published in the Official Gazette so as to put third parties on
notice that they are prohibited from making a submission or otherwise
participating in the reexamination.
Response: The final rule specifically provides that no party other
than the patent owner may file any papers or otherwise participate in
any manner in a supplemental examination proceeding. See §
1.601(b). Accordingly, third parties are on notice that they have no
participatory rights in a supplemental examination proceeding.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 237 |
Furthermore, even in ex parte reexamination practice, third party
participation is limited. After the request has been filed by the third
party, there is no opportunity for the third party to participate,
other than to file a reply in response to any statement under 35 U.S.C.
304 filed by the patent owner prior to the first Office action. In any
reexamination resulting from a supplemental examination proceeding,
however, there is no request for reexamination filed by a third party.
For this reason, third parties have no participatory rights in any ex
parte reexamination proceeding ordered under 35 U.S.C. 257.
Miscellaneous
Comment 34: A number of comments suggested the rules be amended to
specify that a request for supplemental examination may be filed at any
time during the enforceability of the patent for which supplemental
examination is requested.
Response: In response to the public's comments, § 1.601(c) now
provides that a request for supplemental examination of a patent may be
filed at any time during the period of enforceability of the patent.
This policy is consistent with ex parte reexamination practice. See
§ 1.510(a). If the patent is not enforceable, then the Office
believes that the benefits of 35 U.S.C. 257 will have no effect.
Comment 35: One comment suggested that the rules should require the
patent owner to make a statement regarding why an item is not material.
Response: The Office must determine whether any of the items of
information raises a substantial new question of patentability, not
whether any of the items of information is "material." Therefore, the
Office is not adopting a requirement that the patent owner state
whether or why an item of information is or is not material.
Comment 36: One comment questioned whether the supplemental
examination request is subject to a page limit. This comment also
questioned whether the determination of a substantial new question of
patentability will be decided by the same or a different examiner from
the examiner in charge of the original prosecution of the patent. This
comment also questioned which post-patent proceeding would proceed
first if multiple post-patent proceedings are filed, such as a
supplemental examination proceeding, an ex parte reexamination
proceeding, and a post-grant review proceeding.
Response: A request for supplemental examination is not subject to
a page limit requirement. However, if any document, other than the
request, is over 50 pages in length, then the patent owner must provide
a summary of the relevant portions of the document with citations to
the particular pages containing the relevant portions. See §
1.610(b)(8). In addition, any non-patent document that is submitted as
part of the request is subject to document size fees, if the document
is over 20 pages in length. See § 1.20(k)(3). The determination of
the substantial new question of patentability will not generally be
decided by the same examiner who examined the original patent
application, since the Office intends for supplemental examination
proceedings to be examined by the Central Reexamination Unit. If
multiple post-patent proceedings are simultaneously filed, any
determination of which proceedings to initiate, and the order in which
to initiate them, will be made on a case-by-case basis. Because a
supplemental reexamination proceeding must conclude within three months
from the filing date of the request, a supplemental examination
proceeding will not be suspended, as a general rule. The Office,
however, reserves its option to suspend a supplemental examination
proceeding as circumstances arise.
Comment 37: One comment suggested the use of the term "ex parte
reexamination" to refer to reexamination under 35 U.S.C. 257 is
confusingly similar to the use of the same term when referring to ex
parte reexamination ordered under 35 U.S.C. 302. This comment suggests
the term "reexamination under 35 U.S.C. 257" be used to refer to
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 238 |
reexamination ordered as a result of a supplemental examination
proceeding, and that "ex parte reexamination" only be used to refer
to ex parte reexamination ordered under 35 U.S.C. 302.
Response: When it is necessary to distinguish ex parte
reexamination ordered under 35 U.S.C. 257 from ex parte reexamination
ordered under 35 U.S.C. 302, the Office will utilize language such as
"reexamination resulting from a supplemental examination proceeding"
or "ex parte reexamination ordered under 35 U.S.C. 257" to avoid
confusion.
Rulemaking Considerations
A. Administrative Procedure Act
This final rule amends the rules of practice in patent cases to
implement the supplemental examination provisions of the AIA. The
Office is also adjusting the fee for filing a request for ex parte
reexamination and to set a fee for petitions filed in ex parte and
inter partes reexamination proceedings to more accurately reflect the
cost of these processes. The changes in this rulemaking do not change
the substantive criteria of patentability. These changes involve rules
of agency practice and procedure and/or interpretive rules. See Bachow
Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (rules
governing an application process are procedural under the Administrative
Procedure Act); Inova Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th
Cir. 2001) (rules for handling appeals were procedural where they did not
change the substantive standard for reviewing claims); Nat'l Org. of
Veterans' Advocates v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375
(Fed. Cir. 2001) (rule that clarifies interpretation of a statute is
interpretive).
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008)
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not
require notice and comment rulemaking for "interpretative rules,
general statements of policy, or rules of agency organization,
procedure, or practice") (quoting 5 U.S.C. 553(b)(A)). The Office,
however, published proposed changes and an Initial Regulatory
Flexibility Act (IRFA) analysis for comment as it sought the benefit of
the public's views on the Office's proposed implementation of this
provision of the AIA. The Office provides the Final Regulatory
Flexibility Analysis as follows.
B. Final Regulatory Flexibility Analysis
1. Description of the reasons that action by the agency is being
considered: The Office is revising the rules of patent practice to
implement the supplemental examination provisions of the AIA, which
take effect September 16, 2012. The Office is also adjusting the fee
for filing a request for ex parte reexamination, and setting a fee for
petitions filed in ex parte and inter partes reexamination proceedings,
to more accurately reflect the cost of these processes.
2. Statement of the objectives of, and legal basis for, the final
rules: The objective of the rules is to implement the supplemental
examination provisions of the AIA by establishing a process which
allows: (1) patent owners to exercise their statutory right to request
supplemental examination to consider, reconsider, or correct
information believed to be relevant to a patent; and (2) the Office to
make its determination whether the information presented in the request
raises a substantial new question of patentability within three months
of the filing date of the supplemental examination request. The
objective of the rules to adjust the fee for filing a request for ex
parte reexamination, and to set a fee for petitions filed in ex parte
and inter partes reexamination proceedings, is to recover the estimated
average cost to the Office of ex parte reexamination proceedings and
petitions filed in ex parte and inter partes reexamination proceedings.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 239 |
Section 12 of the AIA provides a legal basis for the rules to
implement supplemental examination. 35 U.S.C. 41(d)(2) provides a legal
basis for the rules to set the fee for supplemental examination, to
adjust the fee for filing a request for ex parte reexamination, and to
set a fee for petitions filed in ex parte and inter partes
reexamination proceedings. Specifically, 35 U.S.C. 41(d)(2) provides
that fees for all processing, services, or materials relating to
patents not specified in 35 U.S.C. 41 are to be set at amounts to
recover the estimated average cost to the Office of such processing,
services, or materials.
3. Statement of significant issues raised by the public comments in
response to the IRFA and the Office's response to such issues: The
Office published an IRFA analysis to consider the economic impact of
the proposed rules on small entities. See Changes to Implement the
Supplemental Examination Provisions of the Leahy-Smith Invents Act and
to Revise Reexamination Fees, 77 FR at 3675-76. The Office did not
receive any comments that specifically referenced the IRFA or cited to
the Regulatory Flexibility Act.
The Office received a few comments indicating that the Office may
be overestimating the number requests for supplemental examination that
will be submitted annually. The Office, however, did not receive any
comments indicating that the Office was understating the number of
requests for supplemental examination that will be submitted annually
by small entities. No change has been made in response to these
comments because the Office's estimates as to the impact on small
entities are conservative.
No comments asserted that the Office's estimates concerning the
projected reporting, recordkeeping and other compliance requirements
were inaccurate.
In response to general public comments, this final rule reduces the
number of procedural requirements for requesting supplemental
examination, which may have the effect of reducing the impact on all
entities requesting supplemental examination. In particular, the Office
has determined to not implement in this final rule the following
proposed requirements for a request for supplemental examination to
contain: (1) An identification of each item of information requiring
consideration, reconsideration, or correction, explaining why
consideration or reconsideration of the item of information is being
requested or how the item of information it is being corrected; (2) an
identification of the structure, material, or acts in the specification
that correspond to each means-plus-function or step-plus-function
element, as set forth in 35 U.S.C. 112(f), in any claim to be examined;
(3) an identification of each issue raised by each item of information;
(4) an explanation of the support in the specification for each
limitation of each claim identified for examination if an identified
issue involves the application of 35 U.S.C. 101 (other than double
patenting) or 35 U.S.C. 112; and (5) an explanation of how each
limitation of each claim identified for examination is met, or is not
met, by each item of information if an identified issue involves the
application of 35 U.S.C. 102, 35 U.S.C. 103, or double patenting. In
addition, the Office reduced the fee for requesting supplemental
examination by $40, to $5140.
4. Description and estimate of the number of affected small
entities:
a. Size Standard and Description of Entities Affected. The Small
Business Administration (SBA) small business size standards applicable
to most analyses conducted to comply with the Regulatory Flexibility
Act are set forth in 13 CFR 121.201. These regulations generally define
small businesses as those with fewer than a specified maximum number of
employees or less than a specified level of annual receipts for the
entity's industrial sector or North American Industry Classification
System (NAICS) code. As provided by the Regulatory Flexibility Act, and
after consultation with the Small Business Administration, the Office
formally adopted an alternate size standard as the size standard for
the purpose of conducting an analysis or making a certification under
the Regulatory Flexibility Act for patent-related regulations. See
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 240 |
Business Size Standard for Purposes of United States Patent and
Trademark Office Regulatory Flexibility Analysis for Patent-Related
Regulations, 71 FR 67109 (Nov. 20, 2006), 1313 Off. Gaz. Pat. Office 60
(Dec. 12, 2006). This alternate small business size standard is the
SBA's previously established size standard that identifies the criteria
entities must meet to be entitled to pay reduced patent fees. See 13
CFR 121.802. If patent applicants identify themselves on a patent
application as qualifying for reduced patent fees, the Office captures
this data in the Patent Application Location and Monitoring (PALM)
database system, which tracks information on each patent application
submitted to the Office.
Unlike the SBA small business size standards set forth in 13 CFR
121.201, the size standard for USPTO is not industry-specific.
Specifically, the Office's definition of small business concern for
Regulatory Flexibility Act purposes is a business or other concern
that: (1) meets the SBA's definition of a "business concern or
concern" set forth in 13 CFR 121.105; and (2) meets the size standards
set forth in 13 CFR 121.802 for the purpose of paying reduced patent
fees, namely, an entity: (a) whose number of employees, including
affiliates, does not exceed 500 persons; and (b) which has not
assigned, granted, conveyed, or licensed (and is under no obligation to
do so) any rights in the invention to any person who made it and could
not be classified as an independent inventor, or to any concern which
would not qualify as a non-profit organization or a small business
concern under this definition. See Business Size Standard for Purposes
of United States Patent and Trademark Office Regulatory Flexibility
Analysis for Patent-Related Regulations, 71 FR at 67112 (Nov 20, 2006),
1313 Off. Gaz. Pat. Office at 63 (Dec. 12, 2006).
b. Overview of Estimates of Number of Entities Affected. The rules
will apply to any small entity that files a request for supplemental
examination, a request for ex parte reexamination, or a petition in an
ex parte and inter partes reexamination proceeding. To estimate the
number of requests for supplemental examination, ex parte
reexamination, and petitions filed in ex parte and inter partes
reexamination expected to be submitted annually by small entities, the
Office considered the information concerning ex parte reexamination
filings published in the United States Patent and Trademark Office
Performance and Accountability Report, Fiscal Year 2011. The Office
received 758 requests for ex parte reexamination in fiscal year 2011,
of which 104 (14 percent) were by the patent owner and 654 (86 percent)
were by a third party. See United States Patent and Trademark Office
Performance and Accountability Report, Fiscal Year 2011, at 171 (table
14A) (2011). Based upon that information, the Office estimates that it
will receive about 800 (758 rounded to be nearest 100) requests for ex
parte reexamination annually and that about 14 percent of all requests
for ex parte reexamination are filed by patent owners.
c. Number of Entities Filing Requests for Ex parte Reexamination.
As discussed previously, the Office estimates that it will receive
about 800 requests for ex parte reexamination annually and that about
14 percent of all requests for ex parte reexamination are filed by
patent owners and 86 percent of all requests for ex parte reexamination
are filed by a third party. Thus, the Office estimates that it receives
approximately 110 (14 percent of 800 rounded to the nearest 10)
requests for ex parte reexamination filed by patent owners annually and
approximately 690 (86 percent of 800 rounded to the nearest 10)
requests for ex parte reexamination filed by third parties annually.
Due to the availability of supplemental examination beginning in fiscal
year 2013, the Office estimates that all 110 requests for ex parte
reexamination that would have been filed annually by patent owners will
instead be filed as requests for supplemental examination.
As discussed previously, the Office estimates that approximately
690 requests for ex parte reexamination are filed by third parties
annually. Reexamination requesters are not required to identify their
small entity status. Therefore, the Office does not have precise data
on the number of requests for ex parte reexamination submitted annually
by small entities. However, the Office tracks the number of requests
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 241 |
for ex parte reexamination that are filed in which the patent that is
the subject of the reexamination was prosecuted under small entity
status. For fiscal year 2011, approximately 36 percent of the requests
for ex parte reexamination that were filed requested reexamination of a
patent that was prosecuted under small entity status.
It is difficult to estimate what fraction of the anticipated 690
requests for ex parte reexamination submitted annually will be by small
entities, because the entity status of the third party requester is not
necessarily the same as the entity status of the patentee and
reexamination requesters currently have no reason to identify whether
they are a small entity. The data that the Office keeps regarding the
number of requests for ex parte reexamination that are filed in which
the patent that is the subject of the reexamination was prosecuted
under small entity status provides no insight into the number of
requests for ex parte reexamination submitted by small entity third
party requesters. Therefore, for purposes of this analysis, the Office
is considering all 690 requests for ex parte reexamination expected to
be submitted annually as being submitted by small entities.
d. Number of Entities Filing Petitions in Ex parte Reexamination
Proceedings. The rule to set a fee for petitions filed in reexamination
proceedings (except for those petitions specifically enumerated in 37
CFR 1.550(i) and 1.937(d)) will apply to any small entity that files a
petition in a reexamination proceeding. The Office decided 832
petitions in reexamination proceedings (ex parte and inter partes) in
fiscal year 2010. In view of the statutory mandate to conduct
reexamination proceedings with special dispatch, the Office estimates
that the number of petitions decided in reexamination proceedings in
fiscal year 2010 (i.e., 832) reasonably approximates the number of
petitions filed in reexamination proceedings that year. The Office
estimates that no more than 850 (832 rounded to the nearest 50) will be
filed annually in reexamination proceedings. The data that the Office
keeps regarding petitions filed in reexamination proceedings does not
indicate the number of petitions submitted by unique small entities.
Therefore, for purposes of this analysis, the Office is considering all
850 petitions expected to be submitted annually in a reexamination
proceeding as being submitted by small entities. Hence, the Office
estimates that no more than 850 small entities will file a petition in
a reexamination proceeding annually.
e. Number of Entities Filing Request for Supplemental Examination.
As discussed previously, the Office estimates that it receives
approximately 110 requests for ex parte reexamination filed by patent
owners annually. In view of the benefits to patent owners afforded by
supplemental examination under 35 U.S.C. 257(c), the Office is
estimating that all 110 requests for ex parte reexamination that would
have been filed annually by patent owners will instead be filed as
requests for supplemental examination. However, the Office is also
estimating that more than 110 requests for supplemental examination
will be filed annually due to a combination of: (1) The benefits to
patent owners afforded by supplemental examination; (2) the fact that
the "information" that may form the basis of a request for
supplemental examination is not limited to patents and printed
publications; and (3) the fact that the issues that may be raised
during supplemental examination may include issues in addition to those
permitted to be raised in ex parte reexamination (e.g., issues under 35
U.S.C. 112).
Because a main benefit afforded to patent owners by supplemental
examination is to potentially shield patent owners from a finding of
unenforceability due to inequitable conduct for the information
considered by the Office and subject to a written
decision by the Office, the Office estimates that the number of cases
annually in which inequitable conduct is pled in the United States
district courts represents an approximation of the upper limit of the
number of annual requests for supplemental examination that the Office
will receive. Data from the United States district courts reveals that
between 2,900 and 3,301 patent cases were filed each year during the
period between 2006 and 2010. See U.S. Courts, Judicial Business of the
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 242 |
United States Courts,
www.uscourts.gov/uscourts/Statistics/JudicialBusiness/2010/appendices/
C02ASep10.pdf (last visited Nov. 11, 2011) (hosting annual reports for
1997 through 2010). Thus, the Office projects that no more than 3,300
(the highest number of yearly filings between 2006 and 2010 rounded to
the nearest 100) patent cases are likely to be filed annually. Note that
inequitable conduct is pled in approximately 40 percent of the patent
cases filed annually in U.S. District Courts. See Christian E. Mammen,
Controlling the "Plague": Reforming the Doctrine of Inequitable Conduct,
24 Berkeley Tech. L.J. 1329, 1358-60 (2010) (displaying a chart estimating
the steady increase in assertions of the inequitable conduct defense).
However, the number of patent cases in which a finding of inequitable
conduct is upheld by the U.S. Court of Appeals for the Federal Circuit
(Federal Circuit) is only a fraction of a percent. See id. The Office also
anticipates that the percentage of patent cases in which inequitable
conduct is pled and in which a finding of inequitable conduct is upheld by
the Federal Circuit will begin to decline due to the en banc decision by
the Federal Circuit in Therasense, Inc. v. Becton, Dickinson, and Co., 649
F.3d 1276 (Fed. Cir. 2011).
The Office also anticipates that supplemental examination will lead
to a reduction in the number of district court patent infringement
cases in which inequitable conduct is pled as a defense. See H.R. Rep.
No. 112-98, Part 1, at pages 50 and 78 (2011) (the information
submitted in a request for supplemental examination cannot later be
used to hold the patent unenforceable or invalid on the basis of
inequitable conduct during civil litigation). The Office understands
that the costs related to inequitable conduct (e.g., discovery related
to inequitable conduct) are a significant portion of litigation costs.
See e.g., Mammen, Controlling the "Plague": Reforming the Doctrine of
Inequitable Conduct, 24 Berkeley Tech. L.J. at 1347.
Therefore, the Office estimated that it will receive about 1,430
(40 percent of 3,300 plus the 110 requests for ex parte reexamination
filed by patent owners annually as discussed previously) requests for
supplemental examination annually. Assuming that requests for
supplemental examination will be filed by small entities in roughly the
same percentage as requests for ex parte reexamination where a small
entity prosecuted the underlying patent (36 percent), the Office
estimates that about 500 (36 percent of 1,430 (515) rounded to the
nearest 100) requests for supplemental examination will be submitted
annually by small entities.
5. Description of the projected reporting, recordkeeping, and other
compliance requirements of the rules, including an estimate of the
classes of small entities which will be subject to the requirement and
the type of professional skills necessary for preparation of the report
or record: The rules will apply to any small entity that files a
request for supplemental examination, a request for ex parte
reexamination, or a petition in an ex parte or inter partes
reexamination proceeding. The rules to implement the supplemental
examination provisions of the AIA will impose procedural requirements
on patent owners who request supplemental examination to consider,
reconsider, or correct information believed to be relevant to a patent.
The rules will charge a fee to any patent owner who requests
supplemental examination, and change the fee applicable to any entity
that files a request for ex parte reexamination or a petition in an ex
parte or inter partes reexamination proceeding.
All papers in a supplemental examination proceeding must be filed
in accordance with the requirements set forth in 37 CFR 1.601 and must
be formatted in accordance with the requirements set forth in 37 CFR
1.615. All "items of information" submitted as part of the request
must meet the requirements of 37 CFR 1.605. The request itself must
include the items set forth in 37 CFR 1.610. The rules to implement the
supplemental examination provisions of the AIA also require: (1) A fee
of $5,140.00 for processing and treating a request for supplemental
examination; (2) a fee of $16,120.00 for an ex parte reexamination
ordered as a result of a supplemental examination proceeding; and (3)
for processing and treating, in a supplemental examination proceeding,
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 243 |
a non-patent document over 20 pages in length, a fee of $170.00 for a
document of between 21 and 50 pages, and a fee of $280.00 for each
additional 50 pages or a fraction thereof.
A patent practitioner would have the type of professional skills
necessary for preparation of a request for supplemental examination.
Office staff with experience and expertise in a wide range of patent
prosecution matters as a patent practitioner estimate that preparing
and filing a request for supplemental examination will require about 25
patent practitioner hours, costing $9,275 (25 hours at the $371 per
hour mean rate for attorneys reported in the American Intellectual
Property Law Association (AIPLA) Report of the Economic Survey 2011).
As discussed previously, a request for supplemental examination is
comparable to a request for ex parte reexamination, in that both
present information to the Office for evaluation as to whether the
information raises a substantial new question of patentability. The
AIPLA Report of the Economic Survey 2011 indicates that the average
cost of preparing and filing a request for ex parte reexamination (the
current Office proceeding most similar to a request for supplemental
examination) is $19,000. The Office staff estimate for preparing a
supplemental examination is lower than the comparable ex parte
reexamination cost because a patentee in supplemental examination would
simply be preparing a supplemental examination request in compliance
with the applicable statutes and regulations with information already
at hand, whereas a third party requester in an ex parte reexamination
(the majority of ex parte reexamination requests being by third
parties) is not merely preparing an ex parte reexamination request in
compliance with the applicable statutes and regulations, but is also
seeking to convince the Office that the claims in the patent for which
reexamination is sought are unpatentable with patents and printed
publications that the third party must uncover as part of the process.
The Office estimates $19,000 for the cost to prepare and file a request
for supplemental examination even though many of the requirements
initially proposed have been eliminated in this final rule because the
requirements in this final rule closely track the requirements for ex
parte examination.
The rules to adjust or set fees in ex parte reexamination are as
follows: (1) $17,750.00 for filing a request for ex parte
reexamination; (2) $1,930.00 for filing a petition in an ex parte or
inter partes reexamination proceeding, except for those specifically
enumerated in 37 CFR 1.550(i) and 1.937(d)); and (3) $4,320.00 for a
denied request for ex parte reexamination under 37 CFR 1.510
(this amount is included in the request for ex parte reexamination fee,
and is the portion not refunded if the request for reexamination is
denied). The rules to adjust the fee for filing a request for ex parte
reexamination, and to set a fee for petitions filed in ex parte and
inter partes reexamination proceedings, do not impose any discernible
reporting, recordkeeping, or other compliance requirements. The rules
to adjust the fee for filing a request for ex parte reexamination, and
to set a fee for petitions filed in ex parte and inter partes
reexamination proceedings, only adjust or establish certain fees (as
discussed previously) to more accurately reflect the cost of the
process or service.
6. Description of any significant alternatives to the rules which
accomplish the stated objectives of applicable statutes and which
minimize any significant economic impact of the rules on small
entities: This analysis considered significant alternatives such as:
(1) The establishment of differing compliance or reporting requirements
or timetables that take into account the resources available to small
entities; (2) the clarification, consolidation, or simplification of
compliance and reporting requirements under the rule for such small
entities; (3) the use of performance rather than design standards; and
(4) an exemption from coverage of the rule, or any part thereof, for
such small entities. See 5 U.S.C. 603; see also 35 U.S.C. 41(h) (fee
reduction for small business concerns not applicable to fees set under
35 U.S.C. 41(d)(2)).
With respect to the rules to implement the supplemental examination
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 244 |
provisions of the AIA, the Office considered requiring less than, or
exempting small entities from, what is currently set forth at 37 CFR
1.601, 1.605, 1.610, and 1.615. As discussed previously, this final
rule adopts content requirements for a request for supplemental
examination that are comparable to the requirements for a request for
ex parte reexamination (e.g., list of each item of information to be
considered, reconsidered, or corrected, an identification of each claim
of the patent for which supplemental examination is requested, and a
separate, detailed explanation of the relevance and manner of applying
each item of information to each claim of the patent for which
supplemental examination is requested). See 37 CFR 1.510.
One alternative the Office considered was proposed in the NPRM.
Namely, the Office considered, and proposed, to require that a request
for supplemental examination contain: (1) An identification of each
item of information requiring consideration, reconsideration, or
correction, explaining why consideration or reconsideration of the item
of information is being requested or how the item of information is
being corrected; (2) an identification of the structure, material, or
acts in the specification that correspond to each means-plus-function
or step-plus-function element, as set forth in 35 U.S.C. 112(f), in any
claim to be examined; (3) an identification of each issue raised by
each item of information; (4) an explanation of the support in the
specification for each limitation of each claim identified for
examination if an identified issue involves the application of 35
U.S.C. 101 (other than double patenting) or 35 U.S.C. 112; and (5) an
explanation of how each limitation of each claim identified for
examination is met, or is not met, by each item of information if an
identified issue involves the application of 35 U.S.C. 102, 35 U.S.C.
103, or double patenting. These proposed requirements were not included
in this final rule in response to public comments and because the
Office decided to make the requirements for requesting supplemental
examination closely track the requirements for requesting
reexamination.
The Office adopted the requirements in this final rule because it
is in the patent owner's interest to have the supplemental examination
proceeding, and any reexamination proceeding ordered pursuant to the
supplemental examination request, concluded as soon as possible. See 35
U.S.C. 257(c)(2)(B) (stating that the potential benefits to patent
owners afforded by 35 U.S.C. 257(c)(1) shall not apply "unless the
supplemental examination, and any reexamination ordered pursuant to the
request, are concluded before the date on which [a patent infringement
action] is brought"). The information that may be submitted in a
supplemental examination is more extensive than the information
permitted in an ex parte reexamination proceeding, and the issues that
may be raised during supplemental examination include issues that are
not permitted to be raised in ex parte reexamination (e.g., issues
under 35 U.S.C. 101 and 112). The Office needs to require this
information to promptly resolve a supplemental examination proceeding,
and any reexamination proceeding ordered pursuant to the supplemental
examination request. Finally, it is in the patent owner's interest to
have the supplemental examination request be as complete as possible.
With these factors in mind, the Office designed the requirements set
forth in the final rules to permit: (1) efficient processing and
treatment of each request for supplemental examination within the
statutory three-month time period; and (2) completion of any
reexamination ordered as a result of the supplemental examination
proceeding with special dispatch.
With respect to the rules to adjust the fee for filing a request
for ex parte reexamination, and to set a fee for petitions filed in
reexamination proceedings, the Office considered the alternative of not
adjusting or setting the fees, which would have reduced the economic
impact on small entities, but this alternative would not accomplish the
stated objectives of applicable statutes. See 35 U.S.C. 41(d)(2)
(provides that fees set by the Office recover the estimated average
cost to the Office of the processing, services, or materials); see also
35 U.S.C. 41(h) (fee reduction for small business concerns not
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 245 |
applicable to fees set under 35 U.S.C. 41(d)(2)). In addition, a
decision to forego this fee adjustment and fee setting would have a
negative impact on Office funding, which in turn would have a negative
impact on the ability of the Office to meet the statutory mandate to
conduct reexamination proceedings with special dispatch.
A request for supplemental examination is a unique submission (the
rule does not involve periodic reporting requirements). Thus, the
establishment of timetables that take into account the resources
available to small entities and consolidation of compliance and
reporting requirements is inapplicable. In addition, the use of
performance rather than design standards is also inapplicable to a
request for supplemental examination.
7. Identification, to the extent practicable, of all relevant
Federal rules which may duplicate, overlap or conflict with the rules:
The Office is the sole agency of the United States Government
responsible for administering the provisions of title 35, United States
Code, pertaining to examination and granting patents. Therefore, no
other Federal, state, or local entity shares jurisdiction over the
examination and granting of patents.
Other countries, however, have their own patent laws, and an entity
desiring a patent in a particular country must make an application for
patent in that country, in accordance with the applicable law. Although
the potential for overlap exists internationally, this cannot be
avoided except by treaty (such as the Paris Convention for the Protection
of Industrial Property or the Patent Cooperation Treaty (PCT)).
Nevertheless, the Office believes that there are no other duplicative or
overlapping rules.
C. Executive Order 12866 (Regulatory Planning and Review)
This rulemaking has been determined to be significant for purposes
of Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory Review)
The Office has complied with Executive Order 13563. Specifically,
the Office has, to the extent feasible and applicable: (1) Made a
reasoned determination that the benefits justify the costs of the rule;
(2) tailored the rule to impose the least burden on society consistent
with obtaining the regulatory objectives; (3) selected a regulatory
approach that maximizes net benefits; (4) specified performance
objectives; (5) identified and assessed available alternatives; (6)
involved the public in an open exchange of information and perspectives
among experts in relevant disciplines, affected stakeholders in the
private sector, and the public as a whole, and provided on-line access
to the rulemaking docket; (7) attempted to promote coordination,
simplification, and harmonization across government agencies and
identified goals designed to promote innovation; (8) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (9) ensured the objectivity of scientific
and technological information and processes.
E. Executive Order 13132 (Federalism)
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation)
This rulemaking will not: (1) Have substantial direct effects on
one or more Indian tribes; (2) impose substantial direct compliance
costs on Indian tribal governments; or (3) preempt tribal law.
Therefore, a tribal summary impact statement is not required under
Executive Order 13175 (Nov. 6, 2000).
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 246 |
G. Executive Order 13211 (Energy Effects)
This rulemaking is not a significant energy action under Executive
Order 13211 because this rulemaking is not likely to have a significant
adverse effect on the supply, distribution, or use of energy.
Therefore, a Statement of Energy Effects is not required under
Executive Order 13211 (May 18, 2001).
H. Executive Order 12988 (Civil Justice Reform)
This rulemaking meets applicable standards to minimize litigation,
eliminate ambiguity, and reduce burden as set forth in sections 3(a)
and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996). The rulemaking
carries out a statute designed to lessen litigation. See, e.g., H.R.
Rep. No. 112-98, Part 1, at pages 50 and 78 (2011) (information
submitted in a request for supplemental examination cannot later be
used to hold the patent unenforceable or invalid on the basis of
inequitable conduct during civil litigation).
I. Executive Order 13045 (Protection of Children)
This rulemaking does not concern an environmental risk to health or
safety that may disproportionately affect children under Executive
Order 13045 (Apr. 21, 1997).
J. Executive Order 12630 (Taking of Private Property)
This rulemaking will not effect a taking of private property or
otherwise have taking implications under Executive Order 12630 (Mar.
15, 1988).
K. Congressional Review Act
Under the Congressional Review Act provisions of the Small Business
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), the
United States Patent and Trademark Office will submit a report
containing this final rule and other required information to the United
States Senate, the United States House of Representatives, and the
Comptroller General of the Government Accountability Office. The
changes in this final rule are not expected to result in an annual
effect on the economy of 100 million dollars or more, a major increase
in costs or prices, or significant adverse effects on competition,
employment, investment, productivity, innovation, or the ability of
United States-based enterprises to compete with foreign-based
enterprises in domestic and export markets. Therefore, this final rule
is not a "major rule" as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995
The changes set forth in this final rule do not involve a Federal
intergovernmental mandate that will result in the expenditure by State,
local, and tribal governments, in the aggregate, of 100 million dollars
(as adjusted) or more in any one year, or a Federal private sector
mandate that will result in the expenditure by the private sector of
100 million dollars (as adjusted) or more in any one year, and will not
significantly or uniquely affect small governments. Therefore, no
actions are necessary under the provisions of the Unfunded Mandates
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
M. National Environmental Policy Act
This rulemaking will not have any effect on the quality of the
environment and is thus categorically excluded from review under the
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 247 |
The requirements of section 12(d) of the National Technology
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not
applicable because this rulemaking does not contain provisions which
involve the use of technical standards.
O. Paperwork Reduction Act
The Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.)
requires that the USPTO consider the impact of paperwork and other
information collection burdens imposed on the public. This final rule
makes changes to the rules of practice that would impose new
information collection requirements and impact existing information
collection requirements previously approved by the Office of Management
and Budget (OMB) under OMB Control Number 0651-0064. Accordingly, the
Office submitted a proposed revision to the information collection
requirements under 0651-0064 to OMB for its review and approval when
the notice of proposed rulemaking was published. The Office also
published the title, description, and respondent description of the
information collection, with an estimate of the annual reporting
burdens, in the notice of proposed rulemaking (See Changes to Implement
the Supplemental Examination Provisions of the Leahy-Smith America
Invents Act and to Revise Reexamination Fees, 77 FR at 3678). The
Office did not receive any comments on the proposed revision to the
information collection requirements under 0651-0064.
As discussed previously, however, this final rule adopts content
requirements for a request for supplemental examination that are
comparable to the requirements for a request for ex parte reexamination
(e.g., list of each item of information to be considered, reconsidered,
or corrected, an identification of each claim of the patent for which
supplemental examination is requested, and a separate, detailed
explanation of the relevance and manner of applying each item of
information to each claim of the patent for which supplemental
examination is requested). See 37 CFR 1.510. Thus, this final rule does
not adopt the proposed requirements that a request for supplemental
examination contain: (1) An identification of each item of information
requiring consideration, reconsideration, or correction, explaining why
consideration or reconsideration of the item of information is being
requested or how the item of information is being corrected; (2) an
identification of the structure, material, or acts in the specification
that correspond to each means-plus-function or step-plus-function
element, as set forth in 35 U.S.C. 112(f), in any claim to be examined;
(3) an identification of each issue raised by each item of information;
(4) an explanation of the support in the specification for each
limitation of each claim identified for examination if an identified
issue involves the application of 35 U.S.C. 101 (other than double
patenting) or 35 U.S.C. 112; and (5) an explanation of how each
limitation of each claim identified for examination is met, or is not
met, by each item of information if an identified issue involves the
application of 35 U.S.C. 102, 35 U.S.C. 103, or double patenting. This
final rule also adopts a fee for a request for supplemental examination
that is $40 less than the proposed fee.
The Office has resubmitted the proposed revision to the information
collection requirements under 0651-0064 to OMB. The proposed revision
to the information collection requirements under 0651-0064 is available
at the OMB's Information Collection Review Web site
(www.reginfo.gov/public/do/PRAMain).
Notwithstanding any other provision of law, no person is required
to respond to, nor shall a person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act, unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 248 |
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is amended
as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
. 1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
. 2. Section 1.20 is amended by revising paragraph (c)(1) and by adding
paragraphs (c)(6), (c)(7), and (k) to read as follows:
§ 1.20 Post issuance fees.
* * * * *
(c) * * *
(1) For filing a request for ex parte reexamination $17,750.00
(§ 1.510(a))
* * * * *
(6) For filing a petition in a reexamination proceeding, $1,930.00
except for those specifically enumerated in
§§ 1.550(i) and 1.937(d)
(7) For a denied request for ex parte reexamination under $4,320.00
§ 1.510 (included in the request for ex parte
reexamination fee)
* * * * *
(k) In supplemental examination proceedings:
(1) For processing and treating a request for supplemental $5,140.00
examination
(2) For ex parte reexamination ordered as a result of a $16,120.00
supplemental examination proceeding
(3) For processing and treating, in a supplemental
examination proceeding, a non-patent document over 20
pages in length, per document:
(i) Between 21 and 50 pages $170.00
(ii) For each additional 50 pages or a fraction thereof, $280.00
in addition to the fee specified in paragraph (k)(3)(i)
of this section
. 3. Section 1.26 is amended by revising paragraph (c) to read as follows:
§ 1.26 Refunds.
* * * * *
(c) If the Director decides not to institute a reexamination
proceeding in response to a request for reexamination or supplemental
examination, fees paid with the request for reexamination or
supplemental examination will be refunded or returned in accordance
with paragraphs (c)(1) through (c)(3) of this section. The
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 249 |
reexamination requester or the patent owner who requested a
supplemental examination proceeding, as appropriate, should indicate
the form in which any refund should be made (e.g., by check, electronic
funds transfer, credit to a deposit account). Generally, refunds will
be issued in the form that the original payment was provided.
(1) For an ex parte reexamination request, the ex parte
reexamination filing fee paid by the reexamination requester, less the
fee set forth in § 1.20(c)(7), will be refunded to the requester if
the Director decides not to institute an ex parte reexamination
proceeding.
(2) For an inter partes reexamination request, a refund of $7,970
will be made to the reexamination requester if the Director decides not
to institute an inter partes reexamination proceeding.
(3) For a supplemental examination request, the fee for
reexamination ordered as a result of supplemental examination, as set
forth in § 1.20(k)(2), will be returned to the patent owner who
requested the supplemental examination proceeding if the Director
decides not to institute a reexamination proceeding.
. 4. Section 1.550 is amended by adding a new paragraph (i) to read as
follows:
§ 1.550 Conduct of ex parte reexamination proceedings.
* * * * *
(i) A petition in an ex parte reexamination proceeding must be
accompanied by the fee set forth in § 1.20(c)(6), except for
petitions under paragraph (c) of this section to extend the period for
response by a patent owner, petitions under paragraph (e) of this
section to accept a delayed response by a patent owner, petitions under
§ 1.78 to accept an unintentionally delayed benefit claim, and
petitions under § 1.530(l) for correction of inventorship in a
reexamination proceeding.
. 5. Subpart E, consisting of §§ 1.601, 1.605, 1.610, 1.615, 1.620, and
1.625, is added to Part 1 to read as follows:
Subpart E - Supplemental Examination of Patents
Sec.
1.601 Filing of papers in supplemental examination.
1.605 Items of information.
1.610 Content of request for supplemental examination.
1.615 Format of papers filed in a supplemental examination
proceeding.
1.620 Conduct of supplemental examination proceeding.
1.625 Conclusion of supplemental examination; publication of
supplemental examination certificate; procedure after conclusion.
Subpart E - Supplemental Examination of Patents
§ 1.601 Filing of papers in supplemental examination.
(a) A request for supplemental examination of a patent must be
filed by the owner(s) of the entire right, title, and interest in the
patent.
(b) Any party other than the patent owner (i.e., any third party)
is prohibited from filing papers or otherwise participating in any
manner in a supplemental examination proceeding.
(c) A request for supplemental examination of a patent may be filed
at any time during the period of enforceability of the patent.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 250 |
§ 1.605 Items of information.
(a) Each request for supplemental examination may include no more
than twelve items of information believed to be relevant to the patent.
More than one request for supplemental examination of the same patent
may be filed at any time during the period of enforceability of the
patent.
(b) An item of information includes a document submitted as part of
the request that contains information, believed to be relevant to the
patent, that the patent owner requests the Office to consider,
reconsider, or correct. If the information to be considered,
reconsidered, or corrected is not, at least in part, contained within
or based on any document submitted as part of the request, the
discussion within the body of the request relative to the information
will be considered as an item of information.
(c) An item of information must be in writing in accordance with
§ 1.2. To be considered, any audio or video recording must be
submitted in the form of a written transcript.
(d) If one item of information is combined in the request with one
or more additional items of information, each item of information of
the combination may be separately counted. Exceptions include the
combination of a non-English language document and its translation, and
the combination of a document that is over 50 pages in length and its
summary pursuant to § 1.610(b)(8).
§ 1.610 Content of request for supplemental examination.
(a) A request for supplemental examination must be accompanied by
the fee for filing a request for supplemental examination as set forth
in § 1.20(k)(1), the fee for reexamination ordered as a result of a
supplemental examination proceeding as set forth in § 1.20(k)(2),
and any applicable document size fees as set forth in § 1.20(k)(3).
(b) A request for supplemental examination must include:
(1) An identification of the number of the patent for which
supplemental examination is requested.
(2) A list of the items of information that are requested to be
considered, reconsidered, or corrected. Where appropriate, the list
must meet the requirements of § 1.98(b).
(3) A list identifying any other prior or concurrent post-patent
Office proceedings involving the patent for which supplemental
examination is being requested, including an identification of the type
of proceeding, the identifying number of any such proceeding (e.g., a
control number or reissue application number), and the filing date of
any such proceeding.
(4) An identification of each claim of the patent for which
supplemental examination is requested.
(5) A separate, detailed explanation of the relevance and manner of
applying each item of information to each claim of the patent for which
supplemental examination is requested.
(6) A copy of the patent for which supplemental examination is
requested and a copy of any disclaimer or certificate issued for the
patent.
(7) A copy of each item of information listed in paragraph (b)(2)
of this section, accompanied by a written English translation of all of
the necessary and pertinent parts of any non-English language item of
information. The patent owner is not required to submit copies of items
of information that form part of the discussion within the body of the
request as specified in § 1.605(b), or copies of U.S. patents and
U.S. patent application publications.
(8) A summary of the relevant portions of any submitted document,
other than the request, that is over 50 pages in length. The summary
must include citations to the particular pages containing the relevant
portions.
(9) An identification of the owner(s) of the entire right, title,
and interest in the patent requested to be examined, and a submission
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 251 |
by the patent owner in compliance with § 3.73(c) of this chapter
establishing the entirety of the ownership in the patent requested to
be examined.
(c) The request may also include:
(1) A cover sheet itemizing each component submitted as part of the
request;
(2) A table of contents for the request;
(3) An explanation of how the claims patentably distinguish over
the items of information; and
(4) An explanation of why each item of information submitted with
the request does or does not raise a substantial new question of
patentability.
(d) The filing date of a request for supplemental examination will
not be granted if the request is not in compliance with §§ 1.605, 1.615,
and this section, subject to the discretion of the
Office. If the Office determines that the request, as originally
submitted, is not entitled to a filing date, the patent owner will be
so notified and will be given an opportunity to complete the request
within a specified time. If the patent owner does not timely comply
with the notice, the request for supplemental examination will not be
granted a filing date and the fee for reexamination as set forth in
§ 1.20(k)(2) will be refunded. If the patent owner timely files a
corrected request in response to the notice that properly addresses all
of the defects set forth in the notice and that otherwise complies with
all of the requirements of §§ 1.605, 1.615, and this section,
the filing date of the supplemental examination request will be the
receipt date of the corrected request.
§ 1.615 Format of papers filed in a supplemental examination
proceeding.
(a) All papers submitted in a supplemental examination proceeding
must be formatted in accordance with § 1.52.
(b) Court documents and non-patent literature may be redacted, but
must otherwise be identical both in content and in format to the
original documents, and, if a court document, to the document submitted
in court, and must not otherwise be reduced in size or modified,
particularly in terms of font type, font size, line spacing, and
margins. Patents, patent application publications, and third-party-
generated affidavits or declarations must not be reduced in size or
otherwise modified in the manner described in this paragraph.
§ 1.620 Conduct of supplemental examination proceeding.
(a) Within three months after the filing date of a request for
supplemental examination, the Office will determine whether a
substantial new question of patentability affecting any claim of the
patent is raised by any of the items of information presented in the
request. The determination will generally be limited to a review of the
item(s) of information identified in the request as applied to the
identified claim(s) of the patent. The determination will be based on
the claims in effect at the time of thedetermination and will become a
part of the official record of the patent.
(b) The Office may hold in abeyance action on any petition or other
paper filed in a supplemental examination proceeding until after the
proceeding is concluded by the electronic issuance of the supplemental
examination certificate as set forth in § 1.625.
(c) If an unauthorized or otherwise improper paper is filed in a
supplemental examination proceeding, it will not be entered into the
official file or considered, or if inadvertently entered, it will be
expunged.
(d) The patent owner must, as soon as possible upon the discovery
of any other prior or concurrent post-patent Office proceeding
involving the patent for which the current supplemental examination is
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 252 |
requested, file a paper limited to notifying the Office of the post-
patent Office proceeding, if such notice has not been previously
provided with the request. The notice shall be limited to an
identification of the post-patent Office proceeding, including the type
of proceeding, the identifying number of any such proceeding (e.g., a
control number or reissue application number), and the filing date of
any such proceeding, without any discussion of the issues of the
current supplemental examination proceeding or of the identified post-
patent Office proceeding(s).
(e) Interviews are prohibited in a supplemental examination
proceeding.
(f) No amendment may be filed in a supplemental examination
proceeding.
(g) If the Office becomes aware, during the course of supplemental
examination or of any reexamination ordered under 35 U.S.C. 257 as a
result of the supplemental examination proceeding, that a material
fraud on the Office may have been committed in connection with the
patent requested to be examined, the supplemental examination
proceeding or any reexamination proceeding ordered under 35 U.S.C. 257
will continue, and the matter will be referred to the U.S. Attorney
General in accordance with 35 U.S.C. 257(e).
§ 1.625 Conclusion of supplemental examination; publication of
supplemental examination certificate; procedure after conclusion.
(a) A supplemental examination proceeding will conclude with the
electronic issuance of a supplemental examination certificate. The
supplemental examination certificate will indicate the result of the
determination whether any of the items of information presented in the
request raised a substantial new question of patentability.
(b) If the supplemental examination certificate states that a
substantial new question of patentability is raised by one or more
items of information in the request, ex parte reexamination of the
patent will be ordered under 35 U.S.C. 257. Upon the conclusion of the
ex parte reexamination proceeding, an ex parte reexamination
certificate, which will include a statement specifying that ex parte
reexamination was ordered under 35 U.S.C. 257, will be published. The
electronically issued supplemental examination certificate will remain
as part of the public record of the patent.
(c) If the supplemental examination certificate indicates that no
substantial new question of patentability is raised by any of the items
of information in the request, and ex parte reexamination is not
ordered under 35 U.S.C. 257, the electronically issued supplemental
examination certificate will be published in due course. The fee for
reexamination ordered as a result of supplemental examination, as set
forth in § 1.20(k)(2), will be refunded in accordance with § 1.26(c).
(d) Any ex parte reexamination ordered under 35 U.S.C. 257 will be
conducted in accordance with §§ 1.530 through 1.570, which
govern ex parte reexamination, except that:
(1) The patent owner will not have the right to file a statement
pursuant to § 1.530, and the order will not set a time period
within which to file such a statement;
(2) Reexamination of any claim of the patent may be conducted on
the basis of any item of information as set forth in § 1.605, and
is not limited to patents and printed publications or to subject matter
that has been added or deleted during the reexamination proceeding,
notwithstanding § 1.552(a);
(3) Issues in addition to those raised by patents and printed
publications, and by subject matter added or deleted during a
reexamination proceeding, may be considered and resolved,
notwithstanding § 1.552(c); and
(4) Information material to patentability will be defined by § 1.56(b),
notwithstanding § 1.555(b).
. 6. Section 1.937 is amended by adding a new paragraph (d) to read as
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 253 |
follows:
§ 1.937 Conduct of inter partes reexamination.
* * * * *
(d) A petition in an inter partes reexamination proceeding must be
accompanied by the fee set forth in § 1.20(c)(6), except for
petitions under § 1.956 to extend the period for response by a
patent owner, petitions under § 1.958 to accept a delayed response
by a patent owner, petitions under § 1.78 to accept an
unintentionally delayed benefit claim, and petitions under § 1.530(l)
for correction of inventorship in a reexamination proceeding.
July 17, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
| Extension of the Full First Action Interview Pilot Program |
Extension of the Full First Action Interview Pilot Program
The United States Patent and Trademark Office (USPTO) published a notice
to implement the Full First Action Interview (FAI) Pilot Program. See Full
First Action Interview Pilot Program, 1367 Off. Gaz. Pat. Office 42 (June
7, 2011). Under the program, participants are permitted to conduct an
interview with the examiner after reviewing a Pre-Interview Communication
providing the results of a prior art search conducted by the examiner.
Participants experienced many benefits including: (1) the ability to
advance prosecution of an application; (2) enhanced interaction between
applicant and the examiner; (3) the opportunity to resolve patentability
issues one-on-one with the examiner at the beginning of the prosecution
process; and (4) the opportunity to facilitate possible early allowance.
The Full First Action Interview Pilot Program expanded the eligibility
criteria to all utility applications of the previous Enhanced First Action
Interview Pilot Program. See Enhanced First Action Interview Pilot
Program, 1347 Off. Gaz. Pat. Office 173 (October 20, 2009).
The USPTO is extending the Full FAI Pilot Program until November 16,
2012. During this time, the Office will be analyzing feedback obtained in
response to the July 9, 2012 request for comments notice to determine
whether to modify the program's procedure and to determine the future of
the program. See Extension of the Full First Action Interview Pilot
Program and Request for Comments, 77 Fed. Reg. 40,342 (July 9, 2012).
Inquiries concerning a specific application should be directed to the
appropriate Technology Center. Questions concerning this notice or the
program may be directed to Joseph Weiss, Legal Advisor, Office of Patent
Legal Administration (by phone (571) 272-7759, or e-mailed to
first.action.interview@uspto.gov).
August 13, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
| Notice of Inquiry Regarding Adjustment of Fees for Trademark Applications |
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Docket No. PTO-T-2012-0029
Notice of Inquiry Regarding Adjustment of Fees for Trademark Applications
AGENCY: United States Patent and Trademark Office, Commerce
ACTIONS: Notice of Inquiry.
SUMMARY: The United States Patent and Trademark Office ("USPTO" or
"Office") is considering adjusting trademark application filing fees so as
to promote efficiency for the USPTO and customers by incentivizing complete
electronic communication. The USPTO invites the public to submit comments
regarding such possible adjustments.
DATES: Written comments must be received on or before [60 days from the
date of publication in the Federal Register].
ADDRESSES: The USPTO prefers that comments be submitted via electronic
mail message to TMFRNotices@uspto.gov. Written comments may also be
submitted by mail to Commissioner for Trademarks, P.O. Box 1451, Alexandria,
VA 22313-1451, attention Cynthia C. Lynch; by hand delivery to the
Trademark Assistance Center, Concourse Level, James Madison Building-East
Wing, 600 Dulany Street, Alexandria, Virginia, attention Cynthia C. Lynch;
or by electronic mail message via the Federal eRulemaking Portal. See the
Federal eRulemaking Portal Web site (http://www.regulations.gov) for
additional instructions on providing comments via the Federal eRulemaking
Portal. All comments submitted directly to the Office or provided on the
Federal eRulemaking Portal should include the docket number
(PTO-T-2012-0029). The comments will be available for public inspection on
the USPTO's Web site at http://www.uspto.gov, and will also be available at
the Office of the Commissioner for Trademarks, Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia. Because comments will be made
available for public inspection, information that is not desired to be made
public, such as an address or phone number, should not be included.
FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy
Commissioner for Trademark Examination Policy, at (571) 272-8742.
SUPPLEMENTARY INFORMATION
The USPTO is providing the public, including user groups, with an
opportunity to comment on possible adjustments to trademark application
fees. In particular, the USPTO is considering adjusting filing fees to
incentivize complete electronic communications by reducing the TEAS Plus
filing fee and by providing a discount on applications filed using the
regular TEAS application form, if the applicant authorizes email
communication and agrees to file all responses and other documents
electronically during the prosecution of the application. The USPTO is
also contemplating increasing the fee for paper applications to more
accurately reflect the higher cost of processing such filings.
1. Fees for filing an application for registration of a trademark are
currently set at:
$375 per class for filing by a paper application;
$325 per class for filing electronically using TEAS;
$275 per class for filing electronically using TEAS Plus (additional
requirements apply, including authorizing e-mail communication from the
USPTO, agreeing to file all subsequent documents electronically, and
selecting goods/services from a pre-approved entry in the U.S. Acceptable
Identification of Goods and Services Manual).
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 256 |
Given the objective to increase end-to-end electronic processing of
trademark applications, the significantly higher cost of processing paper
applications, and the ability of the USPTO to offer some fee reductions,
what fee amounts would you consider reasonable for the three existing
methods of filing?
2. How much of a discount do you consider appropriate for the proposed
TEAS application fee discount if the applicant authorizes email
communnication and agrees to file all responses and other documents
electronically during the prosecution of the application?
3. If you generally file trademark applications using TEAS, but not TEAS
Plus, how much of a proposed discount would motivate you to authorize
e-mail communication and agree to file all responses and other documents
electronically during the prosecution of a trademark application?
4. If the TEAS Plus fee were reduced and remained the lowest fee, and
the discount TEAS option were also offered, what would be the impact on the
TEAS Plus filing level - i.e. would you be more likely to choose TEAS Plus
as the lowest fee, or to select the discount TEAS option with its less
burdensome requirements?
5. The cost of processing paper filed applications is substantially
higher than electronically filed applications. If you generally file paper
trademark applications, would you continue to do so even if the paper
application fee were to increase, and why?
6. What advantages and disadvantages do you see in a fee structure that
includes the TEAS application fee discount and a significantly higher fee
for paper-filed applications?
While the USPTO welcomes and values all comments from the public in
response to this notice, these comments do not bind the USPTO to any
further actions related to the comments. Persons submitting written
comments should note that the USPTO will not provide "comment and response"
analysis, since notice and opportunity for public comment are not required
for this notice under 5 U.S.C. 553(b) or any other law.
Once the USPTO receives comments, the USPTO will decide whether to
propose a change in the fees. If the USPTO decides to propose a fee
change, the Office will provide an opportunity for public comment in a
Notice of Proposed Rulemaking. The USPTO would intend to use the
procedures set forth in Section 10 of the Leahy-Smith America Invents Act
("AIA") for these possible fee changes. Leahy-Smith America Invents Act,
Pub. L. No. 112-29, § 10, 125 Stat. 284, 316-17 (2011). Those Section 10
procedures include: providing any proposed fee to the Trademark Public
Advisory Committee ("TPAC") prior to issuing a Notice of Proposed
Rulemaking; providing at least 30 days for TPAC to deliberate, consider,
and comment on such proposal; holding a public hearing relating to such
proposal; and making available a written report from TPAC setting forth
their comments, advice, and recommendations, which the USPTO shall consider
before setting or adjusting fees. See AIA § 10(d).
August 10, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
| Notice Regarding Full Implementation of Patent Prosecution Highway Program between the United States Patent and Trademark Office and the Mexican Institute of Industrial Property |
Notice Regarding Full Implementation of Patent Prosecution Highway Program between the United States Patent and Trademark Office and the Mexican Institute of Industrial Property
|
I. Background
On March 1, 2011, the United States Patent and Trademark Office (USPTO) began a Patent Prosecution Highway (PPH) pilot program with the Mexican Institute of Industrial Property (IMPI). For a complete description of the PPH pilot program, see “Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the Mexican Institute of Industrial Property,” 1364 Off. Gaz. Pat. Office 201 (March 15, 2011). The PPH program permits: (1) applicants to expeditiously obtain a patent in the Office of second filing (OSF) at an early stage, by utilizing the petition to make special procedures currently available in the OSF, based on claims that have been allowed in the Office of first filing (OFF); (2) the OSF to reduce duplication of search efforts by exploiting the search and examination results of the OFF to the extent practicable; and (3) the OSF to reduce the examination workload since the scope of the claims in the OSF application has been clarified through the OFF’s examination prosecution.
II. Full Implementation of the Patent Prosecution Highway Program
The USPTO and the IMPI agreed to fully implement the PPH program on a permanent basis starting on September 1, 2012. While the program itself will become a permanent cooperative arrangement between the offices, the specific program requirements are subject to change in the future depending on further development and evolution of the PPH. Notice of any such changes to the program will be published.
Note that the procedures for a petition to make special under the accelerated examination program set forth in MPEP 708.02(a) do NOT apply to a PPH request for expedited examination by order of the Director to expedite the business of the Office under 37 CFR 1.102(a). The procedures and requirements for filing a request in the USPTO for participation in the PPH program are set forth below.
A. Requirements for Requesting Participation in the PPH Program in the USPTO
In order to be eligible to participate in the PPH program, the following conditions must be met:
(1) The U.S. application is
| |
(a) a Paris Convention application which either
| |
(i) validly claims priority under 35 U.S.C. § 119(a) and 37 CFR 1.55 to one or more applications filed with the IMPI, or |
| |
(ii) validly claims priority under 35 U.S.C. §§ 119(a)/365(a) to a PCT application that contains no priority claims; |
|
| |
or |
| |
(b) a national stage application under the PCT (an application which entered the national stage in the U.S. from a PCT international application after compliance with 35 U.S.C. § 371), in which the PCT application
| |
(i) validly claims priority under 35 U.S.C. § 365(b) to an application filed with the IMPI, or |
| |
(ii) validly claims priority under 35 U.S.C. § 365(b) to a PCT application that contains no priority claims, or |
| |
(iii) contains no priority claim; |
|
| |
or |
| |
(c) a so-called bypass application filed under 35 U.S.C. § 111(a) which validly claims benefit under 35 U.S.C. § 120 to a PCT application, in which the PCT application
| |
(i) validly claims priority under 35 U.S.C. § 365(b) to an application filed with the IMPI, or |
| |
(ii) validly claims priority under 35 U.S.C. § 365(b) to a PCT application that contains no priority claims, or |
| |
(iii) contains no priority claim. |
|
Examples of U.S. applications that fall under requirement (1) are:
(1)(a)(i):
- U.S. application with single Paris Convention priority claim to an application filed in Mexico (MX)
- U.S. application with multiple Paris Convention priority claims to MX applications
- Paris route and domestic priority
- Paris route and divisional application
(1)(a)(ii):
- U.S. application claims Paris Convention priority to a PCT application
* DO – Designated Office
(1)(b)(i):
- U.S. application is a national stage of a PCT application which claims Paris Convention priority to an MX application
- PCT Route
(1)(b)(ii):
- U.S. application is a national stage of a PCT application which claims Paris Convention priority to another PCT application
- Direct PCT and PCT Route
(1)(b)(iii):
- U.S. application is a national stage of a PCT application without priority claim
(1)(c)(i):
- U.S. application is a § 111(a) bypass of a PCT application which claims Paris Convention priority to an MX application
(1)(c)(ii):
- U.S. application is a § 111(a) bypass of a PCT application which claims Paris Convention priority to another PCT application
(1)(c)(iii):
- U.S. application is a § 111(a) bypass of a PCT application which contains no priority claim
The MX application whose claims are determined to be allowable/patentable does not have to be the application for which priority is claimed in the U.S. application (the basic application). The MX application can be an application explicitly derived from the basic application (e.g., a divisional application of the basic application). Note that where the MX application that contains the allowable/patentable claims is not the same application for which priority is claimed in the U.S. application, the applicant must identify the relationship between the MX application that contains the allowable/patentable claims and the MX priority application claimed in the U.S. application (e.g., MX application X that contains the allowable/patentable claims is a divisional application of MX application Y, which is the priority application claimed in the U.S. application).
Provisional applications, plant applications, design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order are excluded and not subject to participation in the PPH.
(2) The MX application(s) have at least one claim that was determined by the IMPI to be allowable/patentable in a substantive examination carried out in the name of the IMPI. The applicant must submit a copy of the allowable/patentable claims from the MX application(s) along with an English translation thereof and a statement that the English translation is accurate if the claims are not in the English language. If the IMPI office action does not explicitly state that a particular claim is allowable, the applicant must include a statement in the request for participation in the PPH program or in the transmittal letter accompanying the request for participation that no rejection has been made in the IMPI office action regarding that claim, and therefore, the claim is deemed allowable by the IMPI.
(3) All the claims in each U.S. application for which a request for participation in the PPH program is made must sufficiently correspond or be amended to sufficiently correspond to the allowable/patentable claims in the MX application(s). A claim is considered to "sufficiently correspond" where, accounting for differences due to translations and claim format, the claim in the U.S. application is of the same or similar scope as a claim indicated as allowable in the application filed in the IMPI. A claim in the U.S. application which is narrower in scope than the claims indicated as allowable in the application filed in the IMPI will also sufficiently correspond if presented as a claim dependent upon a claim which is of the same or similar scope as a claim indicated as allowable in the application filed in the IMPI. The additional limitation that makes the claim in the U.S. application narrower in scope than the allowable/patentable claims in the application filed in the IMPI must have support in the written description of the U.S. application.
A claim in the U.S. application which introduces a new/different category of claims to those claims indicated as allowable in the application filed in the IMPI is not considered to sufficiently correspond. For example, if the only allowable/patentable claims in the application filed in the IMPI are claims to a process of manufacturing a product, then any product claims in the U.S. application are not considered to sufficiently correspond, even if the product claims are dependent on process claims which sufficiently correspond to allowable/patentable claims in the application filed in the IMPI.
The applicant is required to submit a claims correspondence table in English. The claims correspondence table must indicate how all the claims in the U.S. application correspond to the allowable/patentable claims in the application(s) filed in the IMPI. Any dependent claims with additional limitations must be clearly identified in the claims correspondence table.
(4) Examination of the U.S. application for which participation in the PPH program is requested has not begun.
(5) The applicant must file a request for participation in the PPH program and a request that the U.S. application be advanced out of turn for examination by order of the Director to expedite the business of the Office under 37 CFR 1.102(a). A sample request/petition form (PTO/SB/20MX) is available from the USPTO Web site at http://www.uspto.gov/forms/. Applicants are encouraged to use the USPTO request/petition form. A petition fee under 37 CFR 1.17(h) is NOT required. See Notice Regarding the Elimination of the Fee for Petitions To Make Special Filed Under the Patent Prosecution Highway (PPH) Programs, 75 Fed. Reg. 29312 (May 25, 2010).
(6) The applicant must submit a copy of all the office actions (which are relevant to patentability) from each of the MX application(s) containing the allowable/patentable claims that are the basis for the request, along with an English translation thereof and a statement that the English translation is accurate if the office actions are not in the English language. In addition, the applicant must submit copies of any office actions (which are relevant to patentability) from the MX application(s) issued after the grant of the request for participation in the PPH program in the USPTO (especially where the IMPI might have reversed a prior holding of allowability).
(7) The applicant must submit an information disclosure statement (IDS) listing the documents cited by the IMPI examiner in the IMPI office action (unless such an IDS has already been filed in the U.S. application). The applicant must submit copies of all the documents cited in the IMPI office action (unless the copies have already been filed in the U.S. application) except U.S. patents or U.S. patent application publications.
The request for participation in the PPH program and all the supporting documents must be submitted to the USPTO via EFS-Web and indexed with the following document description: “Petition to make special under Patent Pros Hwy.” Information regarding EFS-Web is available at http://www.uspto.gov/patents/process/file/efs/. Any preliminary amendments and IDS submitted with the PPH documents must be separately indexed as a preliminary amendment and IDS, respectively.
Where the request for participation in the PPH program and special status are granted, the applicant will be notified and the U.S. application will be advanced out of turn for examination. In those instances where the request for participation in the PPH program does not meet all the requirements set forth above, the applicant will be notified and the defects in the request will be identified. The applicant will be given one opportunity to perfect the request in a renewed request for participation (which must be submitted via EFS-Web and indexed accordingly as noted above). Note that action on the application by the examiner will NOT be suspended (37 CFR 1.103) awaiting a reply by the applicant to perfect the request in a renewed request for participation. That is, if the application is picked up for examination by the examiner after the applicant has been notified of the defects in the request, any renewed request will be dismissed. If the renewed request is perfected and examination has not begun, the request and special status will be granted, the applicant will be notified and the U.S. application will be advanced out of turn for examination. If not perfected, the applicant will be notified and the application will await action in its regular turn.
(8) Request for participation in the PPH program and special status granted in a parent application will not carry over to a continuing application. The applicant must fulfill all the conditions set forth above in order for special status to be granted in the continuing application.
If any of the documents identified in items (2), (6) and (7) above have already been filed in the U.S. application prior to the request for participation in the PPH program, it will not be necessary for the applicant to resubmit these documents with the request for participation. The applicant may simply refer to these documents and indicate in the request for participation in the PPH program when these documents were previously filed in the U.S. application.
B. Special Examining Procedures
Once the request for participation in the PPH program and special status have been granted to the U.S. application, the U.S. application will be taken up for examination by the U.S. examiner before all other categories of applications except those clearly in condition for allowance, those with set time limits, such as examiner’s answers, and those that have been granted special status for “accelerated examination.”
Any claims amended or added after the grant of the request for participation in the PPH program must sufficiently correspond to one or more allowable/patentable claims in the MX application(s). The applicant is required to submit a claims correspondence table along with the amendment (see A.(3) above). If the amended or newly added claims do not sufficiently correspond to the allowable/patentable claims in the MX application(s), the amendment will not be entered and will be treated as a non-responsive reply.
The PPH program does not absolve applicants of all their duties under 37 CFR 1.56 and 37 CFR 11.18. By complying with requirements A.(6) and (7) identified above, applicants would be considered to have complied with their duties to bring to the attention of the USPTO any material prior art cited in the corresponding foreign application(s) (see MPEP § 2001.06(a)). Applicants still have a duty of candor and good faith, including providing to the USPTO other information known to them to be material to patentability.
Any inquiries concerning this notice may be directed to Bryan Lin, Office of PCT Legal Administration, at 571-272-3303, or via e-mail addressed to bryan.lin@uspto.gov.
Specific questions about the Patent Prosecution Highway should be directed to the Office of Petitions at 571-272-3282, or via e-mail addressed to PPHfeedback@uspto.gov.
| July 16, 2012 |
DAVID J. KAPPOS |
| |
Under Secretary of Commerce for Intellectual Property and |
| |
Director of the United States Patent and Trademark Office |
| Patents and Serial Numbers Available for License or Sale |
Patents and Serial Numbers Available for License or Sale
8,068,376 LOW LEAKAGE HIGH STABILITY MEMORY ARRAY SYSTEM
Contact: Hiep Tran
5017 Willow Ln
Dallas TX 75244
(Voice) 469-222-9615
(Email) htran@ieee.org
D. 658,310 CONSTRUCTION BRACE
Contact: Jose Amaral Medeiros
28 Newstead Cres.
Brampton, Ontario
L6V 2A7 Canada
(Voice) 905-456-2898
(Email) joe1962@bell.net
8,154,392 APPARATUS THAT PREPARES AND DELIVERS INTELLIGIBLE INFORMATION
TO THE HUMAN BRAIN BY STIMULATING THE SENSE OF TOUCH IN
INTELLIGIBLE PATTERNS WITHIN AN AREA OF SKIN
Contact: Aaron Renwick Cathcart
4940 Haley Farms Drive
Cumming, Georgia 30028
(Voice) 678-528-5020
(Email) aaroncathcart@aol.com
(Web) www.TeletoucherPatent.com
7,441,781 LIFT SYSTEM FOR RAISING THE REAR OF A TRUCK
Attorney: Theresa M. Seal, Esq., Registration No. 46,177
Contact: David P. Gaudio, Esq., The Inventors Network, Inc.
332 Academy Street, Carnegie, PA 15106
(Voice) 412-278-0607
(Fax) 412-2789-1693
(Email) david@inventorsnetwork.net
D. 493,621 SOAP BAR SCRUB BRUSH COMBINATION
Attorney: David P. Gaudio
Contact: Marilyn V. Wilson
Nicole Cole
4066 Rookwood Ave.
Indianapolis, IN 46208
(Voice) 317-408-7863
(Voice) 317-695-1227
(Email) mwilson3261@yahoo.com
6,142,320 METHOD OF STORING ELONGATED IMPLEMENTS BETWEEN CORNER SIDE
WALLS, A HOLDING MEMBER, AND A FLOOR
Attorney: David Pressman
Contact: Jack Z. DeLorean
2779 Amberly Road
Bloomfield, MI 48301
(Voice) 248-646-1930
(Email) jzd7@hotmail.com
7,750,056 LOW-DENSITY, HIGH R-VALUE TRANSLUCENT NANOCRYSTALLITES
Attorney: Sami Daoud
Contact: Sami Daoud
4091 N. San Simeon Road
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 259 |
Tucson, AZ 85718
(Voice) 520-529-5836
(Voice) 215-450-0027
(Fax) 520-529-5836
(Email) AirLLC@comcast.net
(Email) Ldaoud@comcast.net
8,104,188 SUSPENDED-CEILING GRID CONTROLL LINES AND GRID COMPONENTS
HOLDERS
Contact: Jose G. Aguilar
P.O. Box 1545
Elgin, Illinois 60121
(Voice) 224-855-0056
(Email) josesgaguilar71@yahoo.com
6,990,861 STRATIFIED HOT WATER HEATED DEPTH DISPLAY SYSTEM
Attorney: Reid Schmidt (www.2020law.ca)
Contact: Eric Ham
3732 Logan Crescent SW
Calgary AB T3E 5Z5
(Voice) (403) 249-0839
(Fax) (403) 249-0839
(Email) ericham@shaw.ca
7,748,068 A DECORATION SOLAR PANEL BRIDGE SUPPLYING POWER SOURCES
Attorney: Chris Carroll
Contact: Min Carroll
P.O. Box 236
Warrenville, IL 60555, USA
(Voice) 630-518-1741
(Fax) 630-892-6543
(Email) mcapps999@gmail.com
8,156,594 DECORATION SOLAR PANEL BRIDGE SUPPLYING POWER SOURCES
Attorney: Chris Carroll
Contact: Min Carroll
P.O. Box 236
Warrenville, IL 60555, USA
(Voice) 630-518-1741
(Fax) 630-892-6543
(Email) mcapps999@gmail.com
8,004,233 SOLAR POWERED WATER PUMP AND ILLUMINATION SYSTEM
Attorney: Chris Carroll
Contact: Min Carroll
P.O. Box 236
Warrenville, IL 60555, USA
(Voice) 630-518-1741
(Fax) 630-892-6543
(Email) mcapps999@gmail.com
7,847,512 SOLAR POWERED DC LOAD SYSTEM
Attorney: Chris Carroll
Contact: Min Carroll
P.O. Box 236
Warrenville, IL 60555, USA
(Voice) 630-518-1741
(Fax) 630-892-6543
(Email) mcapps999@gmail.com
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 260 |
6,954,953 NOVELTY CUSHION
Contact: Nancy Bordan
(Email) nancybordan@gmail.com
6,994,513 VARIABLE WIDTH BACKHOE BUCKET
Attorney: Walter E. Kubitz
Contact: Richard M. Harris
108 Arabian Trail
Spotsylvania, VA 22551
(Voice) 540-582-6280
(Fax) 540-582-6198
(Email) RMH397@comcast.net
| Request for Comments Regarding Amending the First Filing Deadline for Affidavits or Declarations of Use or Excusable Nonuse |
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Docket No. PTO-T-2012-0031
Request for Comments Regarding Amending the
First Filing Deadline for Affidavits or
Declarations of Use or Excusable Nonuse
AGENCY: United States Patent and Trademark Office, Commerce
ACTIONS: Request for comments.
SUMMARY: To further ensure the accuracy of the trademark register, the
United States Patent and Trademark Office ("USPTO") is seeking public
comment on a potential legislative change to amend the first filing
deadline for Affidavits or Declarations of Use or Excusable Nonuse under
Sections 8 and 71 of the Trademark Act from between the fifth and sixth
years after the registration date, or the six-month grace period that
follows, to between the third and fourth years after the registration date,
or the six-month grace period that follows. The change would require
Congress to amend the Trademark Act, and the USPTO is interested in
receiving public input on whether and why such an amendment is or is not
favored.
DATES: Written comments must be received on or before [60 days from the
date of publication in the Federal Register].
ADDRESSES: The USPTO prefers that comments be submitted via electronic
mail message to TMFRNotices@uspto.gov. Written comments may also be
submitted by mail to Commissioner for Trademarks, P.O. Box 1451, Alexandria,
VA 22313-1451, attention Cynthia C. Lynch; by hand delivery to the
Trademark Assistance Center, Concourse Level, James Madison Building-East
Wing, 600 Dulany Street, Alexandria, Virginia, attention Cynthia C. Lynch;
or by electronic mail message via the Federal eRulemaking Portal. See the
Federal eRulemaking Portal Web site (http://www.regulations.gov) for
additional instructions on providing comments via the Federal eRulemaking
Portal. All comments submitted directly to the Office or provided on the
Federal eRulemaking Portal should include the docket number
(PTO-T-2012-0031). The comments will be available for public inspection on
the USPTO's Web site at http://www.uspto.gov, and will also be available at
the Office of the Commissioner for Trademarks, Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia. Because comments will be made
available for public inspection, information that is not desired to be made
public, such as an address or phone number, should not be included.
FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy
Commissioner for Trademark Examination Policy, at (571) 272-8742.
SUPPLEMENTARY INFORMATION
A Section 8 or 71 affidavit of continued use is a sworn statement that
the mark is in use in commerce, filed by the owner of a registration. If
the owner is claiming excusable nonuse of the mark, a Section 8 or 71
affidavit of excusable nonuse may be filed. The purpose of the Section 8
or 71 affidavit is to ensure the accuracy of the trademark register by
removing "deadwood," or marks no longer in use, from the register.
In the interest of ensuring that registered marks are actually in use in
commerce, the USPTO is exploring whether or not there would be a benefit in
shortening the first filing deadline for Affidavits or Declarations of Use
or Excusable Nonuse under Sections 8 and 71 of the Trademark Act (15 U.S.C.
1058, 1141k). Therefore, the USPTO is providing the public, including user
groups, with an opportunity to comment on the idea of a statutory change to
shorten the first filing deadline from between the fifth and sixth years
after the registration date, or the six-month grace period that follows, to
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 262 |
between the third and fourth years after the registration date, or the
six-month grace period that follows. Such a change would necessitate a
legislative amendment of the Trademark Act, and thus is beyond the
authority of the USPTO, but the USPTO wishes to collect public comment that
might assist in the consideration of such an amendment, or another
alternative.
The accuracy of the trademark register as a reflection of marks that are
actually in use in the United States for the goods/services identified in
the registration serves an important purpose for the public. Members of
the public rely on the register to clear trademarks that they may wish to
adopt or are already using. When a party searching the register uncovers
a similar mark, registered for goods or services that may be related to the
searching party's goods or services, that party may incur a variety of
resulting costs and burdens in assessing and addressing potential consumer
confusion. Such costs and burdens may include changing its mark,
investigative costs to determine the nature and extent of use of the
similar mark and to assess whether any conflict exists, or cancellation
proceedings or other litigation to resolve a dispute over the mark. If a
registered mark is not actually in use in the United States, or is not in
use on all the goods/services recited in the registration, these costs and
burdens may be incurred unnecessarily. Thus, improving the accuracy and
reliability of the trademark register helps reduce such costs and burdens,
and thereby benefits the public.
The current requirement to file an affidavit of use or excusable nonuse
during the fifth year after registration developed in 1939. Reasons for
adding the requirement included removing deadwood from the register,
showing that a mark was still in use at the time it became incontestable,
and to correspond to English law. See Trade-Marks: Hearings on H.R. 4744
Before the Subcomm. on Trademarks of the H. Comm. on Patents, 76th Cong.
72-74 (1939).
For marks registered under Section 44(e) (15 U.S.C. 1126(e)) or Section
66(a) (15 U.S.C. 1141f(a)) of the Trademark Act, no specimen of use in
commerce in the United States is required prior to registration. In
addition, recent research indicates that a significantly higher percentage
of businesses fail during the first two years after their establishment
than during the three years that follow. See SBA Office of Advocacy,
Frequently Asked Questions (Jan. 2011), http://www.sba.gov/sites/default/
files/sbfaq.pdf. Thus, use of marks registered by such failed businesses
may have ceased long before the first Section 8 or 71 affidavit is
currently required to be filed. Therefore, the proposed amendment would
help ensure the accuracy of the trademark register by more promptly
cancelling marks that are not in use.
The USPTO notes that shortening the first filing deadline for Affidavits
or Declarations of Use or Excusable Nonuse under Sections 8 and 71 would
foreclose the ability that currently exists to combine the filing of an
Affidavit or Declaration of Incontestability under Section 15 of the
Trademark Act with the first-filed Section 8 or 71 affidavit (see 15 U.S.C.
1065). However, the Section 15 affidavit is optional, and it is often
filed independently of the Section 8 or 71 affidavit. Moreover, any
impact on the ability to file it in combination with a Section 8 or 71
affidavit should be considered within the context of a more accurate
register, where deadwood is removed several years sooner.
Please consider responding to the following questions in your comments:
(1) Is "deadwood" on the trademark register a concern of yours, and what
impact do you believe it has?
(2) Do you favor or oppose an amendment to shorten the first filing
deadline for Affidavits or Declarations of Use or Excusable Nonuse under
Sections 8 and 71 as a means of ensuring the accuracy of the trademark
register? (Please explain why.)
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 263 |
(3) If you favor shortening the deadline, what time period do you
believe would be most appropriate for the first filing deadline?
(4) Are you concerned that an amendment to the first Section 8 and 71
affidavit deadline would foreclose the ability to combine the filing withe
the filing of an Affidavit or Declaration of Incontestability under Section
15? What impact do you believe separating these filings would have?
While the USPTO welcomes and values all comments from the public in
response to this request, these comments do not bind the USPTO to any
further actions related to the comments. Persons submitting written
comments should note that the USPTO will not provide "comment and response"
analysis, since notice and opportunity for public comment are not required
for this notice under 5 U.S.C. 553(b) or any other law.
August 10, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
| Revision of Patent Term Adjustment Provisions Relating to Appellate Review |
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2011-0058]
RIN 0651-AC63
Revision of Patent Term Adjustment Provisions
Relating to Appellate Review
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
revising the patent term adjustment provisions of the rules of practice
in patent cases to better reflect the period of appellate review. The
patent term adjustment provisions of the American Inventors Protection
Act of 1999 (AIPA) provide for patent term adjustment if, inter alia,
the issuance of the patent was delayed due to appellate review by the
Board of Patent Appeals and Interferences (Board) or by a Federal
court, and the patent was issued under a decision in the review
reversing an adverse determination of patentability. The Office is
specifically revising the rules of practice to indicate that the period
of appellate review under the patent term adjustment provisions of the
AIPA begins when jurisdiction over the application passes to the Board
rather than the date on which a notice of appeal to the Board is filed.
DATES: Effective date: This final rule is effective September 17, 2012.
Applicability date: The amendments to 37 CFR 1.703 in this final
rule are applicable to any application in which a notice of allowance
is issued on or after September 17, 2012, and any patent issuing
thereon. The amendment to 37 CFR 1.704 is applicable with respect to
the filing of an appeal brief in any application in which a notice of
appeal under 37 CFR 41.31 is filed on or after September 17, 2012.
FOR FURTHER INFORMATION CONTACT: Kery A. Fries, Senior Legal Advisor,
Office of Patent Legal Administration, by telephone at 571-272-7757, by
mail addressed to: Box Comments--Patents, Commissioner for Patents,
P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of
Kery A. Fries.
SUPPLEMENTARY INFORMATION:
Executive Summary
Purpose: The Office is revising the patent term adjustment
provisions of the rules of practice in patent cases to better reflect
the period of appellate review.
Summary of Major Provisions: The final rule will result in patent
term adjustment determinations that better reflect any delays an
application experiences during the appellate review process. The final
rule defines the day that an appellate review period begins for patent
term adjustment purposes as the day that jurisdiction over the patent
application passes to the Board. Also, the final rule provides
applicants with a three-month time period for filing a compliant appeal
brief before the Office will consider applicant as having failed to
engage in reasonable efforts to conclude processing or examination of
the application.
Costs and Benefits: This rulemaking is not significant or
economically significant under Executive Order 12866 (Sept. 30, 1993),
as amended by Executive Order 13258 (Feb. 26, 2002) and Executive Order
13422 (Jan. 18, 2007).
Background
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 265 |
The Uruguay Round Agreements Act (URAA) amended 35 U.S.C. 154 to
provide that the term of a patent ends on the date that is twenty years
from the filing date of the application, or the earliest filing date
for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c). See
Public Law 103-465, § 532(a)(1), 108 Stat. 4809, 4983-85 (1994).
The URAA also contained provisions, codified at 35 U.S.C. 154(b), for
patent term extension due to certain examination delays. Under the
patent term extension provisions of 35 U.S.C. 154(b) as amended by the
URAA, an applicant is entitled to patent term extension for delays due
to interference, secrecy order, or successful appellate review. See 35
U.S.C. 154(b) (1995). The Office implemented the patent term extension
provisions of the URAA in a final rule published in April of 1995. See
Changes to Implement 20-Year Patent Term and Provisional Applications,
60 FR 20195 (Apr. 25, 1995) (twenty-year patent term final rule).
The American Inventors Protection Act of 1999 (AIPA) further
amended 35 U.S.C. 154(b) to expand the list of administrative delays
which may give rise to patent term adjustment (characterized as
"patent term adjustment" in the AIPA). See Public Law 106-113, 113
Stat. 1501, 1501A-552 through 1501A-591 (1999). Specifically, under the
patent term adjustment provisions of 35 U.S.C. 154(b) as amended by the
AIPA, an applicant is entitled to patent term adjustment for the
following reasons: (1) If the Office fails to take certain actions
during the examination and issue process within specified time frames
(known as the "A" provision, being in 35 U.S.C. 154(b)(1)(A)); (2)
subject to certain enumerated examples, if the Office fails to issue a
patent within three years of the actual filing date of the application
in the United States (known as the "B" provision, being in 35 U.S.C.
154(b)(1)(B)); and (3) for delays due to interference, secrecy order,
or successful appellate review (known as the "C" provision, being in
35 U.S.C. 154(b)(1)(C)). See 35 U.S.C. 154(b)(1). The Office
implemented the patent term adjustment provisions of 35 U.S.C. 154(b)
as amended by the AIPA in a final rule published in September of 2000.
See Changes to Implement Patent Term Adjustment Under Twenty-Year
Patent Term, 65 FR 56365 (Sept. 18, 2000) (patent term adjustment final
rule).
The patent term adjustment provisions of the AIPA apply to original
(i.e., non-reissue) utility and plant applications filed on or after
May 29, 2000. See Changes to Implement Patent Term Adjustment Under
Twenty-Year Patent Term, 65 FR at 56367. The patent term extension
provisions of the URAA (for delays due to secrecy order, interference
or successful appellate review) continue to apply to original utility
and plant applications filed on or after June 8, 1995, and before May
29, 2000. See id.
In April 2011, the Office proposed to revise the patent term
extension and adjustment provisions of the URAA and AIPA to provide,
with certain exceptions, that the reopening of prosecution by an
examiner would be considered a "decision in the review reversing an
adverse determination of patentability," since in many such
situations, the Office decision in the pre-Board review reveals some
weakness in the adverse patentability determination from which the
appeal was taken, making it appropriate to treat such situations as a
"decision in the review reversing an adverse determination of
patentability" under the patent term adjustment and extension
provisions. See Revision of Patent Term Extension and Adjustment
Provisions Relating to Appellate Review and Information Disclosure
Statements, 76 FR 18990 (Apr. 6, 2011). The Office received several
comments suggesting that a better approach would be to treat the
appellate review period as beginning when jurisdiction passes to the
Board, rather than on the date a notice of appeal to the Board was
filed. This approach would give applicants the possibility of obtaining
patent term adjustment under the "B" provision for Office delays
during the pre-Board process (including when prosecution is reopened).
Specifically, the Office would not subtract from the "B" period the period
of time from the filing of the notice of appeal to the earlier of the
filing of a reply brief or the expiration of the period to file the reply
brief.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 266 |
In November 2011, the Office published a final rule concerning
practice before the Board in ex parte appeals, and defined that
jurisdiction of an appeal passes to the Board at the earlier of the
filing of the reply brief or upon the expiration of the time period for
filing a reply brief. See Rules Of Practice Before the Board of Patent
Appeals and Interferences in Ex Parte Appeals 76 FR 72270, 72273 (Nov.
2011).
In December 2011, the Office published a notice seeking public
comment on a proposal to change its interpretation of the appellate
review language of the "B" provision (35 U.S.C. 154(b)(1)(B)(ii)) to
provide that appellate review begins on the date on which jurisdiction
over the application passes to the Board under 37 CFR 41.35 (rather
than the date on which a notice of appeal under 35 U.S.C. 134 was filed
as in the current rule). See Revision of Patent Term Extension and
Adjustment Provisions Relating to Appellate Review, 76 FR 81432 (Dec.
28, 2011). The December 2011 notice of proposed rulemaking indicated
that to change the interpretation of the appellate review language of
the "B" provision without also changing the appellate review language
of the "C" provision (35 U.S.C. 154(b)(1)(C)(iii)) would require the
Office to interpret the same statutory term, "appellate review by the
Board," appearing in two closely related provisions, in two different
ways, violating well-recognized canon of statutory interpretation that
the same terms appearing in related statutory provisions are to be
given the same meaning. See Revision of Patent Term Extension and
Adjustment Provisions Relating to Appellate Review, 76 FR at 81434
(citing Yi v. Fed. Bureau of Prisons, 412 F.3d 526, 531 (4th Cir.
2005)). The December 2011 notice of proposed rulemaking further
indicated a later beginning of the appellate review by the Board, as
was being proposed, would result in the possibility of a greater period
of patent term adjustment under the "B" provision vis-[agrave]-vis
the Office's interpretation of this provision in 2000, but would result
in the possibility of a lesser period of patent term adjustment under
the "C" provision vis-à-vis the Office's interpretation of
this provision in 2000. See id. Accordingly, for purposes of
calculating patent term adjustment based upon appellate review, the
impact of the rule change would be to reduce the amount of patent term
adjustment awarded for a successful appeal under 35 U.S.C.
154(b)(1)(C)(iii) by beginning the appellate review period at the time
the Board assumes jurisdiction of the appeal. Any negative impact to
applicant, however, may be offset by potentially increasing the amount
of patent term adjustment awarded for the Office failing to issue the
patent within three years of the actual filing date in the United
States under 35 U.S.C. 154(b)(1)(B) ("`B' delay"). For example, the
patent term adjustment awarded pursuant to the "B" delay may increase
when the examiner reopens prosecution after a notice of appeal is filed
(e.g., following a pre-appeal conference or an appeal conference) and
the patent issues thereafter, because the period of time between the
filing of the notice of appeal and the examiner's reopening of
prosecution would no longer be deducted under 35 U.S.C. 154(b)(1)(B)(ii).
The December 2011 notice of proposed rulemaking also indicated that
the AIPA sets forth a number of conditions and limitations on any
patent term adjustment accrued under 35 U.S.C. 154(b)(1). See Revision
of Patent Term Extension and Adjustment Provisions Relating to
Appellate Review, 76 FR at 81434-35. Specifically, 35 U.S.C.
154(b)(2)(C) provides, in part, that "[t]he period of adjustment of
the term of a patent under [35 U.S.C.154(b)(1)] shall be reduced by a
period equal to the period of time during which the applicant failed to
engage in reasonable efforts to conclude prosecution of the
application" and that "[t]he Director shall prescribe regulations
establishing the circumstances that constitute a failure of an
applicant to engage in reasonable efforts to conclude processing or
examination of an application." 35 U.S.C. 154(b)(2)(C)(i) and (iii).
The rules of practice (37 CFR 41.37) require that an appeal brief be
filed within two months from the date of filing of the notice of appeal
under 35 U.S.C. 134 and 37 CFR 41.31, with extensions available
pursuant to 37 CFR 1.136 and 1.550(c). An applicant, however, may delay
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 267 |
or prevent the passing of jurisdiction of the application to the Board
by: (1) Obtaining an extension of time to file the appeal brief, (2)
filing an appeal brief that does not comply with the requirements of 37
CFR 41.37, or (3) seeking further prosecution before the examiner by
filing a request for continued examination under 37 CFR 1.114.
Therefore, the Office is providing, under its authority in this final
rule under 35 U.S.C. 154(b)(2)(C), that the failure to file an appeal
brief in compliance with 37 CFR 41.37 within three months from the date
on which a notice of appeal to the Board was filed under 35 U.S.C. 134
and 37 CFR 41.31 constitutes a failure of an applicant to engage in
reasonable efforts to conclude processing or examination of an
application.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended as
follows:
Section 1.703: Section 1.703(b)(4), which defines the period of
appellate review in 35 U.S.C. 154(b)(1)(B)(ii), is amended to define
this period as the sum of the number of days, if any, in the period
beginning on the date on which jurisdiction over the application passes
to the Board under § 41.35(a) of this title and ending on the date
that jurisdiction ends under § 41.35(b) of this title or the date
of the last decision by a Federal court in an appeal under 35 U.S.C.
141 or a civil action under 35 U.S.C. 145, whichever is later. Section
1.703(b)(4) formerly defined this period as beginning on the date on
which a notice of appeal to the Board was filed under 35 U.S.C. 134 and
§ 41.31.
Section 1.703(e), which defines the period of appellate review in
35 U.S.C. 154(b)(1)(C)(iii), is amended to define this period as the
sum of the number of days, if any, in the period beginning on the date
on which jurisdiction over the application passes to the Board under
§ 41.35(a) of this title and ending on the date of a final decision
in favor of the applicant by the Board or by a Federal court in an
appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
Section 1.703(e) formerly defined this period as beginning on the date
on which a notice of appeal to the Board was filed under 35 U.S.C. 134
and § 41.31.
Section 1.704: Section 1.704(c) is amended to provide that the
failure to file an appeal brief in compliance with § 41.37 within
three months from the date on which a notice of appeal to the Board was
filed under 35 U.S.C. 134 and § 41.31 constitutes a failure of an
applicant to engage in reasonable efforts to conclude processing or
examination of an application. Section 1.704(c) would also provide that
in such a case the period of adjustment set forth in § 1.703 shall
be reduced by the number of days, if any, beginning on the day after
the date that is three months from the day on which a notice of appeal
to the Board was filed under 35 U.S.C. 134 and § 41.31 of this
title and ending on the date an appeal brief was filed in compliance with
§ 41.37 or a request for continued examination was filed in compliance
with § 1.114. Section 1.704(c) also renumbers current § 1.704(c)(11) as
new § 1.704(c)(12).
As discussed previously, the changes to § 1.703 in this final
rule are applicable to any application in which a notice of allowance
is issued on or after September 17, 2012, and any patent issuing
thereon, and the change to § 1.704 is applicable with respect to
the filing of an appeal brief in any application in which a notice of
appeal under § 41.31 is filed on or after September 17, 2012.
The Office will also apply the changes to § 1.703 in this final
rule in any timely patent term adjustment reconsideration proceeding
that is initiated on or after September 17, 2012. To allow patentees to
take advantage of this final rule, and for purposes limited to this
final rule, such patent term adjustment reconsideration proceedings
shall be the following timely filed proceedings initiated on or after
September 17, 2012: (1) Reconsideration proceedings initiated pursuant
to a remand from a timely filed civil action in Federal court; (2)
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 268 |
reconsideration proceedings initiated pursuant to a timely request for
reconsideration of the patent term adjustment indicated in the patent
under ¦ 1.705(d) in which the patentee argues that the change to
§ 1.703 in this final rule is applicable to his or her patent; and
(3) reconsideration proceedings initiated pursuant to a request for
reconsideration that seeks reconsideration of the Office's decision
under § 1.705(d) regarding patent term adjustment under the
Office's former interpretation of the appellate review language of 35
U.S.C. 154(b)(1)(B)(ii) and (C)(iii), if such request is filed within
two months of the date of the decision for which reconsideration is
requested (§ 1.181(f)). Section 1.705(d) provides, in part, that
any request for reconsideration of the patent term adjustment indicated
in the patent must be filed within two months of the date the patent
issued and must comply with the requirements of §§ 1.705(b)(1)
and (b)(2).
Comments and Response to Comments
As discussed previously, the Office published a notice on December
28, 2011, proposing to change the rules of practice pertaining to
patent term adjustment to: (1) Indicate that the period of appellate
review under the patent term provisions of the AIPA begins when
jurisdiction over the application passes to the Board rather than when
the notice of appeal is filed;
(2) Indicate that the provisions relating to the "B" delay under
35 U.S.C 154(b)(1)(B) will reduce the amount of "B" delay for the
period beginning from the date of the notice of appeal until the
earlier of the filing of a reply brief or the expiration of the period
to file the reply brief; and (3) introduce a new type of applicant
delay for the applicant's failure to file a compliant appeal brief
within two months of the filing of a notice of appeal. See Revision of
Patent Term Adjustment Provisions Relating to Appellee Review, 76 FR
81432-37. The Office received comments from four commenters.
Comment 1: One comment suggested that the Office not consider it a
failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application under proposed §
1.704(c)(9) (§ 1.704(c)(11) as adopted) unless more than three
months has passed from the filing of the notice of appeal until a
compliant appeal brief is filed. The comment urges that preparing an
appeal brief requires considerable effort and the standard should be
the same as for responses to an Office action.
Response: As suggested in the comment, the Office is revising the
provision to provide that it will be considered a failure of an
applicant to engage in reasonable efforts to conclude processing or
examination of an application under § 1.704(c)(11) if the applicant
takes more than three months from the date of the filing of the notice
of appeal to file a compliant appeal brief. The Office finds that the
three-month period would be equivalent to the statutory time provided
an applicant to respond to a notice from the Office making any
rejection, objection, argument, or other request before applicant is
deemed to have failed to engage in reasonable efforts to conclude
processing or examination of the application under 35 U.S.C.
154(b)(2)(C)(ii).
Comment 2: Two comments suggested that the Office should not
retroactively apply the provisions of proposed § 1.704(c)(9)
(§ 1.704(c)(11) as adopted) to any notice of appeal that is filed prior
to the final enactment of the provision.
Response: As suggested in the comments, the Office will apply the
provision of 1.704(c)(11) only with respect to an appeal brief in which
the notice of appeal was filed on or after September 17, 2012.
Comment 3: One comment requested clarification of the patent term
adjustment effect under proposed § 1.704(c)(9) (§ 1.704(c)(11)
as adopted) if the examiner reopens prosecution before a compliant
appeal brief is filed, but more than two months after a notice of
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 269 |
appeal was filed.
Response: The Office proposed that if more than two months passed
from the date a notice of appeal is filed until the date a compliant
appeal brief is filed, the Office would assess an applicant delay. The
Office has decided not to assess applicant delay under 1.704(c)(11)
unless three months has passed from the date a notice of appeal is
filed until the date a compliant brief is filed. If the Office reopens
prosecution after three months from the applicant's filing of the
notice of appeal but prior to applicant's submission of a compliant
appeal brief under § 41.37, the Office would not find any applicant
delay under § 1.704(c)(11). Moreover, the Office would not deem the
reopening of the prosecution as vacating any previous filed response
that potentially increases patent term adjustment under 35 U.S.C.
154(b)(1)(A)(i) through (iv). Reopening prosecution after the notice of
appeal may increase pendency of the application and under certain
circumstances result in patent term adjustment under 35 U.S.C.
154(b)(1)(B).
Comment 4: One comment requested clarification of whether the two-
month period under proposed § 1.704(c)(9) (three-month period of
§ 1.704(c)(11) as adopted) would be extendable for weekends and
holidays under ArQule v. Kappos, 793 F.Supp.2d 214 (D.D.C. 2011).
Response: Deadlines for patent term adjustment will be calculated
pursuant to 35 U.S.C. 21(b) since the Office is establishing a time
frame for taking action. If the last day of the three-month period set
forth in 1.704(c)(11) as adopted falls on a Saturday, Sunday, or a
Federal holiday within the District of Columbia, an applicant would be
able to file the appeal brief on the next succeeding secular or
business day without reduction of patent term adjustment under
§ 1.704(c)(11). For example, if a notice of appeal were filed on Friday,
May 18, 2012, such that the three-month deadline fell on Saturday,
August 18, 2012, and the appeal brief were filed on Monday, August 20,
2012, applicant would not receive any reduction of patent term
adjustment under § 1.704(c)(11) because the three-month date fell
on a Saturday. If applicant filed the compliant appeal brief on
Tuesday, August 21, 2012, applicant would be assessed a one-day patent
term adjustment reduction under § 1.704(c)(11).
Comment 5: One comment requested clarification of whether a
response to a non-compliant appeal brief will be considered a supplemental
response under § 1.704(c)(8).
Response: The filing of a compliant appeal brief under 41.37 after
a non-compliant appeal brief has been filed is not considered a
supplemental reply under § 1.704(c)(8). Moreover, the Office will
not consider it to be an omission under § 1.704(c)(7). However, it
will be considered a failure of an applicant to engage in reasonable
efforts to conclude processing or examination of an application under
§ 1.704(c)(11) if the compliant appeal brief is not filed within
three months of the date of the notice of appeal, regardless of the
filing of a non-compliant appeal brief.
Comment 6: Two comments requested clarification as to the patent
term adjustment consequences of filing an information disclosure
statement or an amendment after the notice of appeal has been filed.
Response: There will be a reduction of patent term adjustment if
the applicant submits an information disclosure statement pursuant to
§ 1.97(c) or an amendment under § 41.33 after a notice of
appeal has been filed but prior to jurisdiction passing to the Board
under § 1.704(c)(8). Under § 1.97(c), an applicant who submits
an information disclosure statement meeting the requirements of
§§ 1.97 and 1.98 will have such submission considered by the
examiner if it is accompanied by a statement under § 1.97(e) and
the fee under § 1.17(p). Moreover, the Office may consider an
amendment under § 41.33(a) and (b) if it meets the requirements for
consideration. As § 1.703(b)(4) would no longer treat the period of
time between the notice of appeal and the date that jurisdiction passes
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 270 |
to the Board as being excluded from the "B" period, an applicant may
increase "B" delay by taking actions that extend the period between
the notice of appeal and the date that jurisdiction passes to the
Board. Accordingly, treating the IDS and amendments filed after a
notice of appeal as an applicant delay under (c)(8) will discourage
attempts to increase "B" delay, and accordingly, the Office will so
treat them.
Comment 7: One comment suggested that an applicant should be
entitled to patent term adjustment if the Office does not respond to a
request for a pre-appeal review within 45 days.
Response: The suggestion was not adopted. 35 U.S.C. 154(b)(1)(A)
provides conditions under which an applicant is entitled to patent term
adjustment due to delayed responses by the Office, but does not provide
patent term adjustment for the situation suggested in the comment. 35
U.S.C. 154(b)(1)(A)(ii) requires that the Office respond to an appeal
within four months after the date on which the appeal was taken. The
Office implemented this patent term adjustment provision in September
2000, and indicated that the phrase "appeal taken" means the date of
the filing of an appeal brief in compliance with § 41.37. See
Changes to Implement Patent Term Adjustment Under the Twenty-Year
Patent Term, 65 FR 56366, 56368 (Sept. 18, 2000).
Comment 8: One comment suggested that the applicant should be
entitled to patent term adjustment if the Office does not mail either
an examiner's answer or a notice of non-compliant appeal brief within
two months of the filing of the appeal brief.
Response: The suggestion was not adopted. 35 U.S.C. 154(b)(1)(A)
provides conditions upon which an application is entitled additional
patent term adjustment due to delayed responses by the Office, and does
not provide patent term adjustment on this basis. As discussed
previously, 35 U.S.C. 154(b)(1)(A)(ii) requires that the Office respond
to an appeal within four months after the date on which the appeal was
taken. Accordingly, the Office could not provide patent term adjustment
on the basis suggested in the comment.
Comment 9: One comment requested clarification as to whether the
applicant is entitled to patent term adjustment if a supplemental
examiner's answer or acknowledgment of the reply brief by the examiner
is delayed.
Response: The Office recently revised the appeal rules to reduce
the period of time before the application is transferred to the Board.
See Rules of Practice Before the Board of Patent Appeals and
Interferences in Ex Parte Appeals, 76 FR 72270, 72271 (Nov. 22, 2011).
Under the revised rules, the examiner will no longer acknowledge the
reply brief or mail a supplemental examiner's answer in response to the
reply brief. As a result, the Board takes jurisdiction over the
proceeding upon the earlier of the filing of the reply brief under
§ 41.41 or the expiration of the period of time in which applicant
may file a reply brief. See § 41.35(a). Accordingly, the issue is
moot in light of the changes to the appeal rules.
Comment 10: One comment sought clarification as to the date that
the file is transferred to the Board under § 41.35 in order to
calculate patent term adjustment under 35 U.S.C. 154(b)(1)(C)(iii).
Response: The Office recently revised the ex parte appeal rules,
which no longer define the date that the Board assumes jurisdiction of
the appeal as the date that the file is transferred to the Board. See
Rules of Practice Before the Board of Patent Appeals and Interferences
in Ex Parte Appeals, 76 FR at 72271. Jurisdiction now passes to the
Board upon the earlier of the date of filing of the reply brief under
§ 41.41 or when the period for filing of the reply brief has
expired. See § 41.35(a). The change to the ex parte appeal rules
provides clarity as to when jurisdiction is passed and when the
application is deemed to be under appellate review by the Board for
purposes of 35 U.S.C. 154(b)(1)(C)(iii).
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 271 |
Comment 11: One comment sought clarification as to whether the
applicant is entitled to patent term adjustment if an examiner reopens
prosecution of the application.
Response: The applicant is not entitled to patent term adjustment
for the reopening of prosecution of the application per se. However,
under certain circumstances, the reopening of prosecution by the
examiner may lead to additional patent term adjustment under 35 U.S.C.
154(b)(1)(B) because the period of time from the filing of the notice
of appeal to the reopening of prosecution will not be excluded from the
three-year provision of 35 U.S.C. 154(b)(1)(B)(ii) as such time would
occur prior to the date that jurisdiction is passed to the Board. See
§ 1.703(b)(4).
Comment 12: One comment sought clarification as to what would
happen if jurisdiction ends without a decision by the Board or a
Federal court; e.g., appellant files a request for continued
examination under 37 CFR 1.114 after jurisdiction passes to the Board.
Response: Section 1.703(b)(4) has been amended to address
situations where the jurisdiction ends without a decision by the Board
or a Federal court. Under the revised rule, the appeal review period
will end on the date that jurisdiction ends under § 41.35(b) or the
date of the last decision by a Federal court in an appeal under 35
U.S.C. 141 or a civil action under 35 U.S.C. 145, whichever is later.
Accordingly, if appellant files a request for continued examination
under 37 CFR 1.114 after jurisdiction passes to the Board, the period
of "B" delay under 35 U.S.C. 154(b)(1)(B) would not include the
period beginning on the date jurisdiction passed to the Board under
§ 41.35(a) and ending on the filing date of the request for
continued examination under 37 CFR 1.114; that is, the date
jurisdiction of the Board ends.
Comment 13: One comment sought clarification as to the point at
which jurisdiction is remanded by the Board back to the examiner when
the examiner is affirmed, affirmed-in-part, or reversed.
Response: Pursuant to §§ 41.35(b)(2) and 41.54, jurisdiction of
the Board ends when the Board enters a final decision
(see § 41.2) and judicial review is sought or the time for seeking
judicial review has expired. Under 37 CFR 41.54, jurisdiction passes to
the examiner, for further action by appellant or examiner, as the
condition of the application or patent under ex parte reexamination may
require additional action pursuant to the decision. Accordingly, the
amount of patent term adjustment that may accrue under § 1.703(e)
and the period of time not considered "B" time will be fixed to the
date that jurisdiction of the Board ends under § 41.35(b) unless an
appeal under 35 U.S.C. 141 or a civil action under 35. U.S.C. 145 is
filed.
Comment 14: One comment sought clarification as to the point at
which an applicant may file an information disclosure statement after
the Board reverses or remands the application to the examiner without
an applicant delay resulting.
Response: Current § 1.704(c)(9) identifies when applicant delay
occurs after a decision by the Board and is applicable to an
information disclosure statement that is filed after a Board or Federal
court decision. However, an applicant will not be deemed to have failed
to engage in reasonable efforts under § 1.704(c)(9) if the
applicant can file an accompanying statement under § 1.704(d).
Comment 15: One comment suggested that the Office should adopt its
original proposal as set forth in the notice of proposed rulemaking,
Revision of Patent Term Extension and Adjustment Provisions Relating to
Appellate Rule and Information Disclosure Statements, 76 FR 18990
(April 6, 2011), that an applicant should receive additional patent
term adjustment if the Office reopens prosecution and issues an Office
action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 272 |
after a notice of appeal has been filed but before any decision by the
Board. This comment suggested that the proposal set forth in the April
2011 notice of proposed rulemaking is fairer in that only meritorious
appeals will be rewarded, and that under the latest proposal,
meritorious appeals will not be rewarded if prosecution is reopened
after the filing of a request for continued examination. The comment
further suggested that applicant can increase the patent term
adjustment of the "B" delay by distorting the time between the notice
of appeal and the date that jurisdiction passes to the Board by filing
extensions of time under § 1.136(a). In addition, the comment
suggested that the Board conducts "appellate review prior to the
jurisdiction change under § 41.35."
Response: The suggestions were not adopted. The Office has
acknowledged that the impact of the rule would reduce the amount of
patent term adjustment awarded for a successful appeal under 35 U.S.C.
154(b)(1)(C)(iii). The Office, however, believes that any such impact
may be offset by potentially increased patent term adjustment awarded
for the Office failing to issue the patent within three years of the
actual filing date under 35 U.S.C. 154(b)(1)(B). See Revision of Patent
Term Adjustment Provisions relating to Appellate Review, 76 FR 81432
(Dec. 28, 2011). The Office is aware that under certain scenarios an
applicant may have received more overall patent term adjustment under
one approach than the other. However, to change the interpretation of
the appellate review language of the "B" provision without also
changing the appellate review language of the "C" provision would
require the Office to interpret the same statutory term, "appellate
review by the Board," appearing in two closely related provisions, in
two different ways. The Office is aware that prior to the passage of
jurisdiction from the examiner to the Board, the Board reviews briefs
for compliance with § 41.37, but the Office notes that Revised
Procedures for Appellate Review memorandum expressly states that the
responsibility of the Board for determining whether appeal briefs
comply with § 41.37 is not considered a transfer of jurisdiction
when an appeal brief is filed. See Revised Procedures for Appellate
Brief Review (March 29, 2010)
http://www.uspto.gov/patents/law/exam/bpai_revised_procedure_20100329.pdf.
Instead, this review is only a transfer of the specific responsibility of
notifying appellants under § 41.37(d) of the reasons for non-compliance.
id. As for an applicant's ability to distort the time from the notice of
appeal to the date jurisdiction passes under § 41.35, the Office has
prevented applicant from increasing the "B" period by adding an
additional applicant delay if applicant takes more than three months
from the notice of appeal to the date of the submission of a compliant
appeal brief under § 1.704(c)(11). An applicant, for example, who
obtains a five-month extension of time to file the appeal brief would
have an applicant delay beginning on the day after the three-month date
of the filing of the notice of appeal and ending on the date of the
filing of the compliant appeal brief.
Rulemaking Considerations
A. Regulatory Flexibility Act
The Deputy General Counsel for General Law of the United States
Patent and Trademark Office certified to the Chief Counsel for Advocacy
of the Small Business Administration at the proposed rule stage that
changes in the proposed rule will not have a significant economic
impact on a substantial number of small entities. See 5 U.S.C. 605(b).
The Office received no comments on that certification. For the reasons
set forth herein, the Deputy General Counsel for General Law of the
United States Patent and Trademark Office has certified to the Chief
Counsel for Advocacy of the Small Business Administration that changes
in this final rule will not have significant economic impact on a
substantial number of small entities. See 5 U.S.C. 605(b).
The changes to the rules of practice in this final rule: (1) Revise
the provisions that define the beginning and ending dates of the period
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 273 |
of appellate review under 35 U.S.C. 154(b)(1)(B)(ii) and
154(b)(1)(C)(iii) to provide that this period begins on the date on
which jurisdiction over the application passes to the Board under 37
CFR 41.35; and (2) provide that the failure to file a proper appeal
brief within three months from the date on which a notice of appeal to
the Board was filed, as required by 35 U.S.C. 134, constitutes a
failure of an applicant to engage in reasonable efforts to conclude
processing or examination of an application. This final rule does not
add any additional requirements (including information collection
requirements) or fees for patent applicants or patentees.
The changes to 37 CFR 1.703(b)(4) and (e) merely reinterpret the
beginning and ending dates of the period of appellate review under 35
U.S.C. 154(b)(1)(B)(ii) and 154(b)(1)(C)(iii) for purposes of patent
term adjustment calculations. They do not impose any additional burden
on applicants. The change to 37 CFR 1.704(c) specifies that the failure
to file a proper appeal brief within three months from the date on
which a notice of appeal to the Board was filed, as required by 35
U.S.C. 134, constitutes failure of an applicant to engage in reasonable
efforts to conclude processing or examination of an application for
purposes of patent term adjustment calculations. This revision will not
have a significant economic impact on a substantial number of small
entities because: (1) Applicants are not entitled to patent term
adjustment for examination delays that result from their delay in
prosecuting the application (35 U.S.C. 154(b)(2)(C)(i) and 37 CFR
1.704(a)); and (2) applicants may avoid any consequences from this
provision simply by filing an appeal brief in compliance with 37
CFR 41.37 (or filing a request for continued examination under 37
CFR 1.114) within three months from the date on which a notice of appeal
to Board was filed.
For the foregoing reasons, neither of the changes in this notice
will have a significant economic impact on a substantial number of
small entities.
B. Executive Order 12866 (Regulatory Planning and Review)
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
C. Executive Order 13563 (Improving Regulation and Regulatory Review)
The Office has complied with Executive Order 13563. Specifically,
the Office has, to the extent feasible and applicable: (1) Made a
reasoned determination that the benefits justify the costs of the rule;
(2) tailored the rule to impose the least burden on society consistent
with obtaining the regulatory objectives; (3) selected a regulatory
approach that maximizes net benefits; (4) specified performance
objectives; (5) identified and assessed available alternatives; (6)
involved the public in an open exchange of information and perspectives
among experts in relevant disciplines, affected stakeholders in the
private sector and the public as a whole, and provided on-line access
to the rulemaking docket; (7) attempted to promote coordination,
simplification and harmonization across government agencies and
identified goals designed to promote innovation; (8) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (9) ensured the objectivity of scientific
and technological information and processes.
D. Executive Order 13132 (Federalism)
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
E. Executive Order 13175 (Tribal Consultation)
This rulemaking will not: (1) Have substantial direct effects on
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 274 |
one or more Indian tribes; (2) impose substantial direct compliance
costs on Indian tribal governments; or (3) preempt tribal law.
Therefore, a tribal summary impact statement is not required under
Executive Order 13175 (Nov. 6, 2000).
F. Executive Order 13211 (Energy Effects)
This rulemaking is not a significant energy action under Executive
Order 13211 because this rulemaking is not likely to have a significant
adverse effect on the supply, distribution, or use of energy.
Therefore, a Statement of Energy Effects is not required under
Executive Order 13211 (May 18, 2001).
G. Executive Order 12988 (Civil Justice Reform)
This rulemaking meets applicable standards to minimize litigation,
eliminate ambiguity, and reduce burden as set forth in sections 3(a)
and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).
H. Executive Order 13045 (Protection of Children)
This rulemaking does not concern an environmental risk to health or
safety that may disproportionately affect children under Executive
Order 13045 (Apr. 21, 1997).
I. Executive Order 12630 (Taking of Private Property)
This rulemaking will not effect a taking of private property or
otherwise have taking implications under Executive Order 12630 (Mar.
15, 1988).
J. Congressional Review Act
Under the Congressional Review Act provisions of the Small Business
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.),
prior to issuing any final rule, the United States Patent and Trademark
Office will submit a report containing the final rule and other
required information to the U.S. Senate, the U.S. House of
Representatives and the Comptroller General of the Government
Accountability Office. The changes in this notice are not expected to
result in an annual effect on the economy of 100 million dollars or
more, a major increase in costs or prices, or significant adverse
effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign-based enterprises in domestic and export markets.
Therefore, this notice is not expected to result in a "major rule" as
defined in 5 U.S.C. 804(2).
K. Unfunded Mandates Reform Act of 1995
The changes in this notice do not involve a Federal
intergovernmental mandate that will result in the expenditure by State,
local, and tribal governments, in the aggregate, of 100 million dollars
(as adjusted) or more in any one year, or a Federal private sector
mandate that will result in the expenditure by the private sector of
100 million dollars (as adjusted) or more in any one year, and will not
significantly or uniquely affect small governments. Therefore, no
actions are necessary under the provisions of the Unfunded Mandates
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
L. National Environmental Policy Act
This rulemaking will not have any effect on the quality of
environment and is thus categorically excluded from review under the
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 275 |
M. National Technology Transfer and Advancement Act
The requirements of section 12(d) of the National Technology
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not
applicable because this rulemaking does not contain provisions which
involve the use of technical standards.
N. Paperwork Reduction Act
The rules of practice pertaining to patent term adjustment and
extension have been reviewed and approved by the Office of Management
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C.
3501 et seq.) under OMB control number 0651-0020. The changes to the
rules of practice in this final rule: (1) Revise the provisions that
define the beginning and ending dates of the period of appellate review
under 35 U.S.C. 154(b)(1)(B)(ii) and 154(b)(1)(C)(iii) to provide that
this period begins on the date on which jurisdiction over the
application passes to the Board under 37 CFR 41.35; and
(2) provide that the failure to file a proper appeal brief within
three months from the date on which a notice of appeal to the Board was
filed, as required by 35 U.S.C. 134, constitutes a failure of an
applicant to engage in reasonable efforts to conclude processing or
examination of an application. This final rule does not propose to add
any additional requirements (including information collection
requirements) or fees for patent applicants or patentees. Therefore,
the Office is not resubmitting the pertinent information collection
package to OMB for its review and approval because the changes in this
notice do not affect the information collection requirements associated
with the information collections approved under OMB control number
0651-0020 or any other information collections.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall any person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is amended
as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
. 1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
. 2. Section 1.703 is amended by revising paragraph (b)(4) and (e) to
read as follows:
§ 1.703 Period of adjustment of patent term due to examination delay.
* * * * *
(b) * * *
(4) The number of days, if any, in the period beginning on the date
on which jurisdiction over the application passes to the Patent Trial
and Appeal Board under § 41.35(a) of this chapter and ending on the
date that jurisdiction by the Patent Trial and Appeal Board ends under
§ 41.35(b) of this chapter or the date of the last decision by a
Federal court in an appeal under 35 U.S.C. 141 or a civil action under
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 276 |
35 U.S.C. 145, whichever is later.
* * * * *
(e) The period of adjustment under § 1.702(e) is the sum of the
number of days, if any, in the period beginning on the date on which
jurisdiction over the application passes to the Patent Trial and Appeal
Board under § 41.35(a) of this chapter and ending on the date of a
final decision in favor of the applicant by the Patent Trial and Appeal
Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil
action under 35 U.S.C. 145.
* * * * *
. 3. Section 1.704 is amended by revising paragraphs (c)(10)(ii) and
(c)(11) and adding paragraph (c)(12) to read as follows:
§ 1.704 Reduction of period of adjustment of patent term.
* * * * *
(c) * * *
(10) * * *
(ii) Four months;
(11) Failure to file an appeal brief in compliance with § 41.37
of this chapter within three months from the date on which a notice of
appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C.
134 and § 41.31 of this chapter, in which case the period of
adjustment set forth in § 1.703 shall be reduced by the number of
days, if any, beginning on the day after the date three months from the
date on which a notice of appeal to the Patent Trial and Appeal Board
was filed under 35 U.S.C. 134 and § 41.31 of this chapter, and
ending on the date an appeal brief in compliance with § 41.37 of
this chapter or a request for continued examination in compliance with
§ 1.114 was filed; and
(12) Further prosecution via a continuing application, in which
case the period of adjustment set forth in § 1.703 shall not
include any period that is prior to the actual filing date of the
application that resulted in the patent.
* * * * *
August 13, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
Errata
"All reference to Patent No. 8,240,337 to David E. Albrecht, et al of
Blue Bell, PA for KIT FOR FASTENING AND LOCKING OF COMPONENTS appearing in
the Official Gazette of August 14, 2012 should be deleted since no patent
was granted."
"All reference to Patent No. 8,240,596 to Stephan Hoetzeldt, et al of
Bremen, Germany for AIRCRAFT CABIN PANEL WITH CORE RECESSES FOR ACOUSTIC
ABSORPTION appearing in the Official Gazette of August 14, 2012 should be
deleted since no patent was granted."
"All reference to Patent No. 8,241,130 to Koji Sugiyama, et al of
Yokohama-shi, Japan for SERVER SYSTEM, SCHEDULE MANAGEMENT DEVICE AND
METHOD appearing in the Official Gazette of August 14, 2012 should be
deleted since no patent was granted."
"All reference to Patent No. 8,241,137 to Joy Eling, et al of Grand
Haven, MI for BOWLING LANE WITH MURAL IMAGE appearing in the Official
Gazette of August 14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,241,164 to Jun Tamenaga of Aichi, Japan
for JOINT DRIVING APPARATUS FOR ROBOT appearing in the Official Gazette of
August 14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,241,666 to Norbert Otterbeck of
Uberlingen, Germany for PELLET FORMULATION FOR THE TREATMENT OF THE
INTESTINAL TRACT appearing in the Official Gazette of August 14, 2012
should be deleted since no patent was granted."
"All reference to Patent No. 8,242,075 to Robert D. Simari, et al of
Rochester, MN for DIURETIC AND NATRIURETIC POLYPEPTIDES LACKING THE BLOOD
PRESSURE LOWERING PROPERTY appearing in the Official Gazette of August 14,
2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,242,155 to Michael T. Nordsiek, et al of
Wayne, PA for METHOD OF TREATING ACTINIC KERATOSIS WITH 3.75% IMIQUIMOD
CREAM appearing in the Official Gazette of August 14, 2012 should be
deleted since no patent was granted."
"All reference to Patent No. 8,242,491 to Koichi Ono, et al of Saitama,
Japan for MICRO-CHANNEL CHIP AND MACRO-ANALYSIS SYSTEM appearing in the
Official Gazette of August 14, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,242,596 to Hem P. Takiar of Sunnyvale, CA
for METHOD FOR EFFICIENTLY PRODUCING REMOVABLE PERIPHERAL CARDS appearing
in the Official Gazette of August 14, 2012 should be deleted since no
patent was granted."
"All reference to Patent No. 8,242,598 to Atsunobu Suzuki, et al of
Osaka, Japan for SEMICONDUCTOR MODULE HAVING SEMICONDUCTOR DEVICE MOUNTED
ON DEVICE MOUNTING SUBSTRATE appearing in the Official Gazette of August
14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,242,609 to John T. Gasner, et al of
Satellite Beach, FL for ACTIVE AREA BONDING COMPATIBLE HIGH CURRENT
STRUCTURES appearing in the Official Gazette of August 14, 2012 should be
deleted since no patent was granted."
"All reference to Patent No. 8,242,635 to Henning Road Nielson of
Brenderup, Denmark for 3-PHASE HIGH-POWER UPS appearing in the Official
Gazette of August 14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,242,691 to Takeshi Fukunaga, et al of
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 278 |
Kanagawa, Japan for LIGHTEMITTING DEVICE appearing in the Official Gazette
of August 14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,242,729 to Erik Kauppi of Ann Arbor, MI
for PERMANENT MAGNET MOTOR WITH FIELD WEAKENING appearing in the Official
Gazette of August 14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,242,839 to David F. Sorrells, et al of
Middleburg, FL for SYSTEMS AND METHODS OF RF POWER TRANSMISSION, MODULATION
AND AMPLIFICATION appearing in the Official Gazette of August 14, 2012
should be deleted since no patent was granted."
"All reference to Patent No. 8,242,883 to Duane W. Buckingham, et al of
Old Lyme, CT for REDUCED POWER ELECTRONIC LOCK SYSTEM appearing in the
Official Gazette of August 14, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,243,221 to Manabu Tanahara of Tokyo,
Japan for ARRAY SUBSTRATE AND DISPLAY DEVICE HAVING NON-QUADRANGLE DISPLAY
REGION appearing in the Official Gazette of August 14, 2012 should be
deleted since no patent was granted."
"All reference to Patent No. 8,243,616 to Gregory G. Raleigh of
Woodside, CA for VERIFIABLE DEVICE ASSISTED SERVICE POLICY IMPLEMENTATION
appearing in the Official Gazette of August 14, 2012 should be deleted
since no patent was granted."
"All reference to Patent No. 8,243,784 to Oscar E. Agazzi, et al of
Irvine, CA for MUTI-CHANNEL EQUALIZATION TO COMPENSATE FOR IMPAIRMENTS
INTRODUCED BY INTERLEAVED DEVICES appearing in the Official Gazette of
August 14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,243,853 to David F. Sorrells, et al of
Middleburg, FL for SYSTEMS AND METHODS OF RF POWER TRANSMISSION,
MODULATION, AND AMPLIFICATION, INCLUDING A SWITCHING STAGE EMBODIMENT
appearing in the Official Gazette of August 14, 2012 should be deleted
since no patent was granted."
"All reference to Patent No. 8,243,886 to Robert Stepanian of San Jose,
CA for CONSUMER ELECTRONIC REGISTRATION, CONTROL AND SUPPORT CONCIERGE
DEVICE AND METHOD appearing in the Official Gazette of August 14, 2012
should be deleted since no patent was granted."
"All reference to Patent No. 8,244,001 to Kan Torii, et al of
Pittsburgh, PA for METHOD AND APPARATUS FOR DETECTING AND PROCESSING
SPECIFIC PATTERN FROM IMAGE appearing in the Official Gazette of August 14,
2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,244,113 to Sachiyo Aoki, et al of Tokyo,
Japan for IMAGE FRAME PROCESSING METHOD AND DEVICE FOR DISPLAYING MOVING
IMAGES TO A VARIETY OF DISPLAYS appearing in the Official Gazette of August
14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,244,308 to Jian-Ming Chen, et al of Taipei
City, Taiwan for HELMET COMMUNICATION DEVICE appearing in the Official
Gazette of August 14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,244,605 to Steve F. Naghshineh, et al of
Cincinnati, OH for DEVICES FOR PROCESSING SHIPPING DOCUMENTATION SENT FROM
A VEHICLE appearing in the Official Gazette of August 14, 2012 should be
deleted since no patent was granted."
"All reference to Patent No. 8,244,627 to G. Christopher Imrey, et al of
Newport Beach, CA for SYSTEM AND METHOD FOR COMPILING INFORMATION FOR
RESOLVING TRANSACTIONS appearing in the Official Gazette of August 14, 2012
should be deleted since no patent was granted."
| September 11, 2012 |
US PATENT AND TRADEMARK OFFICE |
1382 OG 279 |
"All reference to Patent No, 8,244,717 to Gaurav Garg, et al of Palo
Alto, CA for MEDIA OBJECT QUERY SUBMISSION AND RESPONSE appearing in the
Official Gazette of August 14, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,244,835 to Kenji C. Obata, et al of
Seattle, WA for METHOD AND SYSTEM FOR BUILDING AND DISTRIBUTING APPLICATION
PROFILES VIA THE INTERNET appearing in the Official Gazette of August 14,
2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,245,245 to Jesus Molina, et al of
Washington, DC for METHOD AND SYSTEM FOR IMPLEMENTING AN EXTERNAL TRUSTED
PLATFORM MODULE appearing in the Official Gazette of August 14, 2012 should
be deleted since no patent was granted."
| Certificates of Correction |
Certificates of Correction
for August 21, 2012
6,134,432 7,887,605 8,098,485 8,176,712
6,651,636 7,889,933 8,103,746 8,177,505
6,930,579 7,892,093 8,110,261 8,178,448
7,024,474 7,914,834 8,114,459 8,178,873
7,050,284 7,915,236 8,114,696 8,178,880
7,097,378 7,940,978 8,115,014 8,179,587
7,156,734 7,943,107 8,115,593 8,179,844
7,224,564 7,949,791 8,121,415 8,199,995
7,313,309 7,951,843 8,121,787 8,201,196
7,356,905 7,962,843 8,124,191 8,202,873
7,396,917 7,963,729 8,124,313 8,203,488
7,418,498 7,963,842 8,125,499 8,203,921
7,440,541 7,965,760 8,126,020 8,204,479
7,442,881 7,970,699 8,128,705 8,205,181
7,452,323 7,975,393 8,132,851 8,207,547
7,471,765 7,977,324 8,133,525 8,208,118
7,495,999 7,978,646 8,135,020 8,208,199
7,501,504 7,980,955 8,135,029 8,208,433
7,516,215 7,985,004 8,135,238 8,208,488
7,536,697 7,988,256 8,136,506 8,209,123
7,588,380 7,991,661 8,137,404 8,209,231
7,589,616 7,996,467 8,138,698 8,209,274
7,596,105 7,997,832 8,138,910 8,209,291
7,599,502 7,999,378 8,141,269 8,209,418
7,623,273 8,000,441 8,152,029 8,209,685
7,642,351 8,009,855 8,152,680 8,209,715
7,645,286 8,024,663 8,152,769 8,209,869
7,655,797 8,032,477 8,153,773 8,209,879
7,693,891 8,033,054 8,155,247 8,210,206
7,713,375 8,035,938 8,155,723 8,210,248
7,719,639 8,043,153 8,158,060 8,210,523
7,776,511 8,046,292 8,162,209 8,213,161
7,797,073 8,054,313 8,164,468 8,214,790
7,804,319 8,065,377 8,164,718 8,217,724
7,815,326 8,073,254 8,165,941 8,217,781
7,816,645 8,078,576 8,167,581 8,217,887
7,841,162 8,079,902 8,168,310 8,217,939
7,842,635 8,083,825 8,169,729 8,217,942
7,844,242 8,085,630 8,172,118 8,218,187
7,849,035 8,087,170 8,172,268 8,219,323
7,855,370 8,089,950 8,173,121 8,220,041
7,857,672 8,090,401 8,173,228 D. 614,288
7,865,149 8,092,013 8,174,450
7,868,839 8,096,655 8,174,799
7,883,282 8,096,719 8,175,661
| Summary of Final Decisions Issued by the Trademark Trial and Appeal Board |
SUMMARY OF FINAL DECISIONS ISSUED BY THE TRADEMARK TRIAL AND APPEAL BOARD
August 6 – August 10, 2012
| Date Issued |
Type of Case(1) |
Proceeding or Appn. Number |
Party or Parties |
TTAB Panel (2) |
Issue(s) |
TTAB Decision |
Opposer’s or Petitioner’s mark and goods or services |
Applicant’s or Respondent’s mark and goods or services |
Mark and goods or services cited by Examining Attorney |
Issued as Precedent of TTAB |
| 8-7 |
EX
|
77768687 |
Campo’s Deli at Market, Inc. |
Quinn
Shaw Greenbaum* |
2(d); 2(e)(2); 1&45 (specimens) |
Refusal Affirmed on 2(d) and 2(e)(2); Refusal Reversed on 1&45 |
|
w:st="on">PHILADELPHIA’S CHEESESTEAK [sandwiches; cheesesteaks] |
PHILADELPHIA CHEESESTEAK CO. (with and without design), THE ORIGINAL PHILADELPHIA CHEESESTEAK CO. [prepared meat] |
No |
| 8-7 |
OPP |
91196902 |
Sparrow LLC v. Jonathan Fitch |
Seeherman Quinn Kuczma*
|
2(d); 43(c) |
Opposition Dismissed |
LIFE NATURE LOVE [jackets, sweaters, vests, sweat shirts, sweat pants, shirts, blouses, pants, jeans, shorts, skirts, dresses, swim wear, cover-us, head wear and footwear] |
LOVE N LIFE [shirts; t-shirts; tee shirts] |
|
No |
| 8-7 |
EX |
85024101 |
Rocketship Consulting, LLC |
Seeherman Cataldo* Wolfson |
2(e)(1) |
Refusal Affirmed |
|
ENVOICER [computer software for facilitation and automation of electronic invoicing] |
|
No |
| 8-7 |
EX |
77850282 |
Jonathan M. Klokow |
Quinn Holtzman Wolfson* |
2(d) |
Refusal Affirmed |
|
MOO DA CHAINZ [hats; t-shirts] |
MOODA CHAINZ [tops, pants, shorts, skirts, dresses, hats, caps, jackets, coats, headwear, underwear, sleepwear, footwear] |
No |
| 8-7 |
EX |
85025503 |
Adams Mfg. Corp. |
Quinn Grendel Wolfson* |
1,2&45; 2(e)(5), 2(f) |
Refusal Affirmed on all grounds |
|
Design of concentric rings on a suction cup [plastic suction cups, not for medical purposes] |
|
No |
| 8-8 |
EX |
76699385 |
Forte Solutions Group, LLC |
Grendel Mermelstein Bergsman* |
2(d) |
Refusal Affirmed |
|
PLAN4 [business planning services] |
PLAN4DEMAND [business consulting services] |
No |
| 8-9 |
EX |
85047191 |
Guitar Straps Online, LLC |
Grendel Ritchie Lykos* |
Rule 2.72(b)(2) and Rule 2.51(b) |
Refusal Affirmed on both grounds |
|
GOT STRAPS [bumper stickers (Class 16)] [online retail store services featuring straps and accessories for musical instruments (Class 35)] |
|
Yes |
| 8-9 |
EX |
85085379 |
Transformation Wear LLC |
Quinn* Zervas Kuhlke |
2(d) |
Refusal Affirmed |
|
TRANSFORMATION WEAR (and design) [clothing to promote an awareness of the power of words to communicate energy, namely, caps, t-shirts, sports shirts, sweat shirts and tank tops] |
TRANSFORMATION [lingerie, frocks, jackets, hosiery, skirts, blouses, uniforms, suspenders; boots and shoes; hats] |
No |
| 8-10 |
EX |
85139899 |
North Beaches Art Walk Association, Inc. |
Grendel Holtzman Kuczma* |
2(e)(1) |
Refusal Reversed |
|
THE BEST LITTLE ART WALK IN TOWN [art exhibitions; organizing cultural and arts events] |
|
No |
| 8-10 |
EX |
85036344 |
Island Grove Winery, LLC |
Quinn* Grendel Kuczma |
2(d) |
Refusal Affirmed |
|
ISLAND GROVE WINE COMPANY [wine] |
ISLAND GROVE [dipping sauces; hot sauces; marinades; salsa; sauces] |
No |
| 8-10 |
EX |
77798364 |
Grupo Bimbo, S.A.B. de C.V. |
Quinn Bucher* Taylor |
2(e)(1), 2(f), 23 |
Refusal Affirmed on 2(e)(1) and 2(f); Refusal Reversed on 23 |
|
BAGEL THINS [bakery products, not including cookies] |
|
No |
(1) EX=Ex Parte Appeal; OPP=Opposition; CANC=Cancellation; CU=Concurrent Use; (SJ)=Summary Judgment; (R)=Request for Reconsideration; (MD)=Motion to Dismiss (2) *=Opinion Writer; (D)=Dissenting Panel Member
| Mailing and Hand Carry Addresses for Mail to the United States Patent and Trademark Office |
MAILING AND HAND CARRY ADDRESSES FOR
MAIL TO THE UNITED STATES PATENT AND TRADEMARK OFFICE
MAIL TO BE DIRECTED TO THE COMMISSIONER FOR PATENTS
For most correspondence (e.g., new patent applications) no mail stop
is required because the processing of the correspondence is routine.
If NO mail stop is included on the list below, no mail stop is required
for the correspondence. See the listing under "Mail to be Directed to the
Director of the Patent And Trademark Office" for additional mail stops
for patent-related correspondence. Only the specified type of document
should be placed in an envelope addressed to one of these special mail
stops. If any documents other than the specified type identified for each
special mail stop are addressed to that mail stop, they will be
significantly delayed in reaching the appropriate area for which they are
intended. The mail stop should generally appear as the first line in
the address.
Most correspondence may be submitted electronically. See the USPTO's
Electronic Filing System (EFS-Web) internet page
http://www.uspto.gov/patents/process/file/efs/index.jsp for additional
information.
Please address mail to be delivered by the United States Postal Service
(USPS) as follows:
Mail Stop _____
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
If no Mail Stop is indicated below, the line beginning Mail Stop should
be omitted from the address.
NEW: Effective September 16, 2012, the Mail Stop description for Mail
Stop Ex Parte Reexam is being revised and a new Mail Stop for supplemental
examination requests is being added as Mail Stop Supplemental Examination.
Except correspondence for Maintenance Fee payments, Deposit Account
Replenishments (see 37 CFR 1.25(c)(4)), and Licensing and Review (see 37 CFR
5.1(c) and 5.2(c)), please address patent-related correspondence to be
delivered by other delivery services (Federal Express (Fed Ex), UPS, DHL,
Laser, Action, Purolator, etc.) as follows:
United States Patent and Trademark Office
Customer Service Window, Mail Stop _____
Randolph Building
401 Dulany Street
Alexandria, VA 22314
Mail Stop
Designations Explanation
Mail Stop 12 Contributions to the Examiner Education Program.
Mail Stop 313(c) Petitions under 37 CFR 1.313(c) to withdraw a
patent application from issue after payment of
the issue fee and any papers associated with the
petition, including papers necessary for a
continuing application or a request for
continued examination (RCE).
Mail Stop AF Amendments and other responses after final
rejection (e.g., a notice of appeal (and any
request for pre-appeal brief conference)),
other than an appeal brief.
Mail Stop Amendment Information disclosure statements, drawings, and
replies to Office actions in patent applications
with or without an amendment to the application or
a terminal disclaimer. (Use Mail Stop AF for
replies after final rejection.)
Mail Stop Appeal For appeal briefs or other briefs under
Brief-Patents part 41 of title 37 of the Code of Federal
Regulations (e.g., former 37 CFR 1.192).
Mail Stop Public comments regarding patent-related
Comments-Patent regulations and procedures.
Mail Stop Conversion Requests under 37 CFR 1.53(c)(2) to convert a
nonprovisional application to a provisional
application and requests under 37 CFR 1.53(c)(3)
to convert a provisional application to a
nonprovisional application.
Mail Stop EBC Mail for the Electronic Business Center including:
Certificate Action Forms, Request for Customer
Number, and Requests for Customer Number Data
Change (USPTO Forms PTO-2042, PTO/SB/124A and 125A,
respectively) and Customer Number Upload
Spreadsheets and Cover Letters.
Mail Stop Expedited Only to be used for the initial filing of
Design design applications accompanied by a
request for expedited examination under
37 CFR 1.155.
Mail Stop Express Requests for abandonment of a patent
Abandonment application pursuant to 37 CFR 1.138,
including any petitions under 37 CFR
1.138(c) to expressly abandon an
application to avoid publication of the
application.
Mail Stop Applications under 35 U.S.C. 156 for patent term
Hatch-Waxman PTE extension based on regulatory review of a product
subject to pre-market review by a regulating
agency. This mail stop is also to be used for
additional correspondence regarding the
application for patent term extension under
35 U.S.C. 156. It is preferred that such initial
requests be hand-carried to:
Office of Patent Legal Administration
Room MDW 7D55
600 Dulany Street (Madison Building)
Alexandria, VA 22314
Mail Stop ILS Correspondence relating to international patent
classification, exchanges and standards.
Mail Stop Issue Fee All communications following the receipt of a
PTOL-85, "Notice of Allowance and Fee(s)
Due," and prior to the issuance of a patent
should be addressed to Mail Stop Issue Fee,
unless advised to the contrary.
Assignments are the exception. Assignments
(with cover sheets) should be faxed to
571-273-0140, electronically submitted
(http://epas.uspto.gov), or submitted in a
separate envelope and sent to Mail Stop
Assignment Recordation Services,
Director - U.S. Patent and Trademark Office
as shown below.
Mail Stop L&R All documents pertaining to applications subject
to secrecy order pursuant to 35 U.S.C. 181, or
national-security classified and required to be
processed accordingly. Such papers, petitions for
foreign filing license pursuant to 37 CFR 5.12(b)
for which expedited handling is requested, and
petitions for retroactive license under 37 CFR
5.25 may also be hand carried to Licensing and
Review:
Technology Center 3600, Office of the Director
Room 4B41
501 Dulany Street (Knox Building)
Alexandria, VA 22314
Mail Stop Missing Requests for a corrected filing receipt and
Parts replies to OPAP notices such as the Notice
of Omitted Items, Notice to File Corrected
Application Papers, Notice of Incomplete
Application, Notice to Comply with Nucleotide
Sequence Requirements, and Notice to File Missing
Parts of Application, and associated papers and
fees.
Mail Stop MPEP Submissions concerning the Manual of Patent
Examining Procedure.
Mail Stop Patent Ext. Applications for patent term extension or
adjustment under 35 U.S.C. 154 and any
communications relating thereto. This mail stop
is limited to petitions for patent term extension
under 35 U.S.C. 154 for applications filed
between June 8, 1995 and May 29, 2000, and patent
term adjustment (PTA) under 35 U.S.C. 154 for
applications filed on or after May 29, 2000.
For applications for patent term extension under
35 U.S.C. 156, use Mail Stop Hatch-Waxman PTE.
For applications for patent term extension or
adjustment under 35 U.S.C. 154 that are mailed
together with the payment of the issue fee, use
Mail Stop Issue Fee.
Mail Stop Patent Submission of comments regarding search templates.
Search Template
Comments
Mail Stop PCT Mail related to international applications filed
under the Patent Cooperation Treaty in the
international phase and in the national phase
under 35 U.S.C. 371 prior to mailing of a
Notification of Acceptance of Application Under
35 U.S.C. 371 and 37 CFR 1.495 (Form
PCT/DO/EO/903).
Mail Stop Petition Petitions to be decided by the Office of Petitions,
including petitions to revive and petitions to
accept late payment of issue fees or maintenance
fees.
Mail Stop PGPUB Correspondence regarding publication of patent
applications not otherwise provided, including:
requests for early publication made after filing,
rescission of a non-publication request, corrected
patent application publication, and refund of
publication fee.
Mail Stop Post In patented files: requests for changes of
Issue correspondence address, powers of attorney,
revocations of powers of attorney, withdrawal as
attorney or agent and submissions under 37
CFR 1.501. Designation of, or changes to, a fee
address should be addressed to Mail Stop M
Correspondence. Requests for Certificate of
Correction need no special mail stop, but
should be mailed to the attention of Certificate
of Correction Branch.
Mail Stop RCE Requests for continued examination under
37 CFR 1.114.
Mail Stop Correspondence pertaining to the reconstruction
Reconstruction of lost patent files.
Mail Stop Ex Parte Original requests for Ex Parte Reexamination
Reexam and all subsequent correspondence other
than correspondence to the Office of the Solicitor
(see 37 CFR 1.1(a)(3) and 1.302(c)). Effective
September 16, 2012, this mail stop is also to be
used for any papers to be filed in an ex parte
reexamination proceeding ordered as a result of
a supplemental examination proceeding.
Mail Stop Inter Original requests for Inter Partes Reexamination
Partes Reexam and all subsequent correspondence other than
correspondence to the Office of the Solicitor
(see 37 CFR 1.1(a)(3) and 1.302(c)).
Mail Stop Reissue All new and continuing reissue application filings.
Mail Stop Sequence Submission of the computer readable form (CRF) for
applications with sequence listings, when the CRF
is not being filed with the patent application.
Mail Stop Supplemental (Effective September 16, 2012). Requests for
Examination Supplemental Examination, including original
request papers and any other correspondence, other
than correspondence to the Office of the
Solicitor (see 37 CFR Secs. 1.1(a)(3) AND 1.302(c)).
This mail stop is limited to original request papers
and any other papers that are to be filed in a
supplemental examination proceeding. For any papers
to be filed in an ex parte reexamination proceeding
ordered as a result of a supplemental examination
proceeding, use "Mail Stop Ex Parte Reexam".
Information for addressing patent-related correspondence may also be found
on the USPTO's web site at http://www.uspto.gov/patents/mail.jsp.
MAIL TO BE DIRECTED TO THE COMMISSIONER FOR TRADEMARKS
Please address trademark-related correspondence to be delivered by the
United States Postal Service (USPS), except documents sent to the Assignment
Services Division for recordation, requests for copies of trademark
documents, and documents directed to the Madrid Processing Unit, as follows:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Mail to be delivered by the USPS to the Office's Madrid Processing Unit,
must be mailed to:
Madrid Processing Unit
600 Dulany Street
MDE-7B87
Alexandria, VA 22314-5796
Mail to be delivered by the USPS to the Office's Deputy Commissioner for
Trademark Policy regarding Letters of Protest must be mailed to:
Letter of Protest
ATTN: Deputy Commissioner for Trademark Policy
600 Dulany Street
Alexandria, VA 22314-5796
Mail to be delivered by the USPS to the Director regarding the Fastener
Quality Act (FQA) must be mailed to:
Director, USPTO
ATTN: FQA
600 Dulany Street, MDE-10A71
Alexandria, VA 22314-5793
Mail to be delivered by the USPS to the Commissioner regarding the
recordal of a Native American Tribal Insignia (NATI) must be mailed to:
Native American Tribal Insignia
ATTN: Commissioner for Trademarks
600 Dulany Street
MDE-10A71
Alexandria, VA 22314-5793
Do NOT send any of the following via USPS certified mail or with a
"signature required" option: submissions to the Madrid Processing Unit,
Letters of Protest, applications for recordal of insignia under the
Fastener Quality Act, notifications of Native American Tribal Insignia.
Trademark-related mail to be delivered by hand or other private courier
or delivery service (e.g., UPS, Federal Express) to the Trademark Operation,
the Trademark Trial and Appeal Board, or the Office's Madrid Processing Unit,
must be delivered to:
Trademark Assistance Center
Madison East, Concourse Level Room C 55
600 Dulany Street
Alexandria, VA 22314
Information for addressing trademark-related correspondence may also be found
on the USPTO's web site at http://www.uspto.gov/trademarks/mail.jsp.
MAIL TO BE DIRECTED TO THE DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE
Please address correspondence to be directed to a mail stop identified
below to be delivered by the United States Postal Service (USPS) as follows
(unless otherwise instructed):
Mail Stop _____
Director of the U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
Mail Stop
Designations Explanation
Mail Stop 3 Mail for the Office of Personnel from NFC.
Mail Stop 6 Mail for the Office of Procurement.
Mail Stop 8 All papers for the Office of the Solicitor except
communications relating to pending litigation and
disciplinary proceedings; papers relating to pending
litigation in court cases shall be mailed only to
Office of the Solicitor, P.O. Box 15667, Arlington,
VA 22215 and papers related to pending disciplinary
proceedings before the Administrative Law Judge or
the Director shall be mailed only to the Office of
the Solicitor, P.O. Box 16116, Arlington, VA 22215.
Mail Stop 11 Mail for the Electronic Ordering Service (EOS).
Mail Stop 13 Mail for the Employee and Labor Relations Division.
Mail Stop 16 Mail related to refund requests, other than
requests for refund of a patent application
publication fee. Such requests should be directed
to Mail Stop PGPub.
Mail Stop 17 Invoices directed to the Office of Finance.
Mail Stop 24 Mail for the Inventor's Assistance Program,
including complaints about Invention Promoters.
Mail Stop 171 Vacancy Announcement Applications.
Mail Stop Assignment All assignment documents, security interests,
Recordation Services and other documents to be recorded in the
Assignment records. Note that documents with
cover sheets that are faxed to 571-273-0140 or
submitted electronically (http://epas.uspto.gov)
are processed much more quickly than those
submitted by mail.
Mail Stop Document All requests for certified or uncertified
Services copies of patent or trademark documents.
Mail Stop EEO Mail for the Office of Civil Rights.
Mail Stop External Mail for the Office of External Affairs.
Affairs
Mail Stop Interference Communications relating to interferences and
applications and patents involved in interference.
Mail Stop M Mail to designate or change a fee
Correspondence address, or other correspondence related to
maintenance fees, except payments of
maintenance fees in patents. See below for
the address for maintenance fee payments.
Mail Stop OED Mail for the Office of Enrollment and Discipline.
Maintenance Fee Payments
Unless submitted electronically over the Internet at www.uspto.gov,
payments of maintenance fees in patents should be mailed through the
United States Postal Service to:
United States Patent and Trademark Office
P.O. Box 979070
St. Louis, MO 63197-9000
Alternatively, payment of maintenance fees in patents (Attn: Maintenance
Fee) using hand-delivery and delivery by private courier may be made to:
Director of the U.S. Patent and Trademark Office
Attn: Maintenance Fee
2051 Jamieson Avenue, Suite 300
Alexandria, Virginia 22314
Deposit Account Replenishments
To send payment to replenish deposit accounts, send the payments through
the United States Postal Service to:
United States Patent and Trademark Office
P.O. Box 979065
St. Louis, MO 63197-9000
Alternatively, deposit account replenishments (Attn: Deposit Accounts)
using hand-delivery and delivery by private courier (e.g., FedEx, UPS, etc.)
may be delivered to:
Director of the U.S. Patent and Trademark Office
Attn: Deposit Accounts
2051 Jamieson Avenue, Suite 300
Alexandria, VA 22314
Information abount deposit account replenishments may also be found on
the USPTO's web site at
http://www.uspto.gov/about/offices/cfo/finance/Deposit_Account_
Replenishments.jsp
Top of Notices
| Reference Collections of U.S. Patents Available for Public Use in Patent and Trademark Resource Centers |
Reference Collections of U.S. Patents Available for
Public Use in Patent and Trademark Resource Centers
The following libraries, designated as Patent and Trademark Resource Centers
(PTRCs), provide public access to patent and trademark information received
from the United States Patent and Trademark Office (USPTO). This
information includes all issued patents, all registered trademarks, the
Official Gazette of the U.S. Patent and Trademark Office, search tools such
as the Cassis CD-ROM suite of products and supplemental information in a
variety of formats including online, optical disc, microfilm and paper.
Each PTRC also offers access to USPTO resources on the Internet and to
PubWEST (Web based examiner search tool), a system used by patent examiners
that is not available on the Internet.
Staff assistance and training is provided in the use of this information.
All information is available free of charge. However, there may be charges
associated with the use of photocopying and related services. Hours of
service to the public vary, and anyone contemplating use of these
collections at a particular library is urged to contact that library in
advance about its services and hours to avoid inconvenience.
State Name of Library Telephone Contact
Alabama Auburn University Libraries (334) 844-1737
Birmingham Public Library (205) 226-3620
Alaska Fairbanks: Keith B. Mather Library,
Geophysical Institute,
University of Alaska, Fairbanks (907) 474-2636
Arkansas Little Rock: Arkansas State
Library (501) 682-2053
California Los Angeles Public Library (213) 228-7220
Riverside: University of
California, Riverside, Orbach
Science Library (951) 827-3316
Sacramento: California State
Library (916) 654-0261
San Diego Public Library (619) 236-5813
San Francisco Public Library (415) 557-4500
Sunnyvale Public Library (408) 730-7300
Colorado Denver Public Library (720) 865-1711
Connecticut Fairfield: Ryan-Matura Library
Sacred Heart University (203) 371-7726
Delaware Newark: University of Delaware
Library (302) 831-2965
Dist. of Columbia Washington: Howard University
Libraries (202) 806-7252
Florida Fort Lauderdale: Broward County
Main Library (954) 357-7444
Miami-Dade Public Library (305) 375-2665
Orlando: University of Central
Florida Libraries (407) 823-2562
Georgia Atlanta: Library and Information
Center, Georgia Institute of
Technology (404) 385-7185
Hawaii Honolulu: Hawaii State Library (808) 586-3477
Illinois Chicago Public Library (312) 747-4450
Macomb: Western Illinois
University Libraries (309) 298-2722
Indiana Indianapolis-Marion County Public
Library (317) 269-1741
West Lafayette Siegesmund
Engineering Library,
Purdue University (765) 494-2872
Iowa Davenport: Davenport Public Library (563) 326-7832
Kansas Wichita: Ablah Library, Wichita
State University 1 (800) 572-8368
Kentucky Louisville Free Public Library (502) 574-1611
Louisiana Baton Rouge: Troy H. Middleton
Library, Louisiana State University (225) 388-8875
Maine Orono: Raymond H. Fogler Library,
University of Maine (207) 581-1678
Maryland Baltimore: University of Baltimore
Law Library (410) 837-4554
College Park: Engineering and
Physical Sciences Library,
University of Maryland (301) 405-9157
Massachusetts Amherst: Physical Sciences Library,
University of Massachusetts (413) 545-2765
Boston Public Library (617) 536-5400
Ext. 4256
Michigan Ann Arbor: Art, Architecture &
Engineering Library,
University of Michigan (734) 647-5735
Big Rapids: Ferris Library for
Information, Technology &
Education, Ferris State
University (231) 592-3602
Detroit: Public Library (313) 481-1391
Minnesota Hennepin County Library
Minneapolis Central Library (952) 847-8000
Mississippi Jackson: Mississippi Library
Commission (601) 961-4111
Missouri Kansas City: Linda Hall Library (816) 363-4600
Ext. 724
St. Louis Public Library (314) 352-2900
Montana Butte: Montana Tech Library of
the University of Montana (406) 496-4281
Nebraska Lincoln: Engineering Library,
University of Nebraska-Lincoln (402) 472-3411
New Hampshire Concord: University of New
Hampshire School of Law (603) 513-5130
Nevada Reno: University of Nevada, Reno,
Mathewson-IGT Knowledge Center (775) 784-6500
Ext. 257
New Jersey Newark Public Library (973) 733-7779
Piscataway: Library of Science and
Medicine, Rutgers University (732) 445-2895
New Mexico Albuquerque: University of
New Mexico General Library (505) 277-4412
New York Albany: New York State Library (518) 474-5355
Buffalo and Erie County Public
Library (716) 858-7101
Rochester Public Library (716) 428-8110
New York: New York Public Library,
Science Industry & Business Library (212) 592-7000
North Carolina Charlotte: J. Murrey Atkins
Library, (704) 687-2241
University of North Carolina at
Charlotte (919) 515-2935
North Dakota Grand Forks: Chester Fritz Library,
University of North Dakota (701) 777-4888
Ohio Akron - Summit County Public (330) 643-9075
Library
Cincinnati and Hamilton County,
Public Library of (513) 369-6932
Cleveland Public Library (216) 623-2870
Dayton: Paul Laurence Dunbar
Library, Wright State University (937) 775-3521
Toledo/Lucas County Public Library (419) 259-5209
Oklahoma Stillwater: Oklahoma State
University Edmon Low Library (405) 744-6546
Pennsylvania Philadelphia, The Free Library of (215) 686-5394
Pittsburgh, Carnegie Library of (412) 622-3138
University Park: PAMS Library,
Pennsylvania State University (814) 865-7617
Puerto Rico Bayamon: Learning Resources Center,
University of Puerto Rico (787) 993-0000
Ext. 3222
Mayaquez General Library,
University of Puerto Rico (787) 832-4040
Ext. 2023
Bayamon, Learning Resources Center,
University of Puerto Rico (787) 786-5225
Rhode Island Providence Public Library (401) 455-8027
South Carolina Clemson University Libraries (864) 656-3024
South Dakota Rapid City: Devereaux Library,
South Dakota School of Mines and
Technology (605) 394-1275
Tennessee Nashville: Stevenson Science and
Engineering Library, Vanderbilt
University (615) 322-2717
Texas Austin: McKinney Engineering
Library, University of Texas at
Austin (512) 495-4511
College Station: West Campus
Library, Texas A & M University (979) 845-2111
Dallas Public Library (214) 670-1468
Houston: The Fondren Library, Rice
University (713) 348-5483
Lubbock: Texas Tech University (806) 742-2282
San Antonio Public Library (210) 207-2500
Utah Salt Lake City: Marriott Library,
University of Utah (801) 581-8394
Vermont Burlington: Bailey/Howe Library,
University of Vermont (802) 656-2542
Washington Seattle: Engineering Library,
University of Washington (206) 543-0740
West Virginia Morgantown: Evansdale Library,
West Virginia University (304) 293-4695
Wisconsin Wendt Commons Library,
University of Wisconsin-Madison (608) 262-0696
Milwaukee Public Library (414) 286-3051
Wyoming Cheyenne: Wyoming State Library (307) 777-7281
Top of Notices
| Patent Technology Centers |
| PATENT TECHNOLOGY CENTERS |
| AVERAGE FILING DATE OF APPLICATIONS RECEIVING A FIRST OFFICE ACTION IN THE LAST 3 MONTHS1
|
Technology
Center |
GAU |
Avg Filing Date |
| 1600 |
BIOTECHNOLOGY, AND ORGANIC CHEMISTRY |
| |
1610 |
02/05/2011 |
| |
1620 |
01/30/2011 |
| |
1630 |
01/18/2011 |
| |
1640 |
03/23/2011 |
| |
1650 |
12/31/2010 |
| |
1660 |
05/23/2011 |
| |
TOTAL |
02/05/2011 |
| |
|
|
| 1700 |
CHEMICAL AND MATERIALS ENGINEERING AND DESIGNS |
| |
1710 |
07/13/2010 |
| |
1720 |
08/10/2010 |
| |
1730 |
12/06/2010 |
| |
1740 |
12/09/2010 |
| |
1750 |
08/25/2010 |
| |
1760 |
02/11/2011 |
| |
1770 |
11/12/2010 |
| |
1780 |
10/06/2010 |
| |
1790 |
05/10/2010 |
| |
TOTAL |
10/25/2010 |
| |
|
|
| 2100 |
COMPUTER ARCHITECTURE AND SOFTWARE |
| |
2110 |
08/13/2010 |
| |
2120 |
05/26/2010 |
| |
2140 |
04/25/2010 |
| |
2150 |
01/03/2011 |
| |
2160 |
02/23/2011 |
| |
2170 |
08/01/2010 |
| |
2180 |
07/01/2010 |
| |
2190 |
10/16/2009 |
| |
TOTAL |
07/25/2010 |
| |
|
|
| 2400 |
NETWORKING, MULTIPLEXING, CABLE AND SECURITY |
| |
2420 |
05/07/2010 |
| |
2430 |
07/16/2010 |
| |
2440 |
08/22/2010 |
| |
2450 |
08/13/2010 |
| |
2460 |
04/16/2010 |
| |
2470 |
04/13/2010 |
| |
2480 |
02/11/2010 |
| |
2490 |
05/04/2010 |
| |
TOTAL |
05/26/2010 |
| |
|
|
| 2600 |
COMMUNICATIONS |
| |
2610 |
06/28/2010 |
| |
2620 |
03/26/2010 |
| |
TOTAL |
05/10/2010 |
| |
|
|
| 2800
|
SEMICONDUCTORS/MEMORY, CIRCUITS/MEASURING AND TESTING, OPTICS/PHOTOCOPYING |
| |
2810 |
01/18/2011 |
| |
2820 |
12/06/2010 |
| |
2830 |
10/25/2010 |
| |
2850 |
08/10/2010 |
| |
2860 |
10/28/2010 |
| |
2870 |
09/30/2010 |
| |
2880 |
11/18/2010 |
| |
2890 |
02/05/2011 |
| |
TOTAL |
11/09/2010 |
| |
|
|
| 2900
|
|
| |
2910 |
10/13/2011 |
| |
TOTAL |
10/13/2011 |
| |
|
|
| 3600
|
TRANSPORTATION, CONSTRUCTION, ELECTRONIC COMMERCE, AGRICULTURE, NATIONAL SECURITY AND LICENSE AND REVIEW
|
| |
3610 |
12/28/2010 |
| |
3620 |
11/27/2010 |
| |
3630 |
12/25/2010 |
| |
3640 |
10/22/2010 |
| |
3650 |
08/16/2010 |
| |
3660 |
06/28/2010 |
| |
3670 |
11/30/2010 |
| |
3680 |
12/12/2010 |
| |
3690 |
05/01/2011 |
| |
TOTAL |
11/15/2010 |
| |
|
|
| 3700
|
MECHANICAL ENGINEERING, MANUFACTURING AND PRODUCTS |
| |
3710 |
11/30/2010 |
| |
3720 |
08/01/2010 |
| |
3730 |
08/22/2010 |
| |
3740 |
02/17/2010 |
| |
3750 |
07/19/2010 |
| |
3760 |
08/10/2010 |
| |
3770 |
08/04/2010 |
| |
3780 |
07/07/2010 |
| |
TOTAL |
07/22/2010 |
| |
|
|
| |
1 Report last updated on 7-31-12. |
Top of Notices
Top of Notices September 11, 2012