(278) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2012-0015]
RIN 0651-AC77
Changes To Implement the
First Inventor To File Provisions of the
Leahy-Smith America Invents Act
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The Leahy-Smith America Invents Act (AIA) amends the patent
laws pertaining to the conditions of patentability to convert the
United States patent system from a "first to invent" system to a
"first inventor to file" system; treats United States patents and
United States patent application publications as prior art as of their
earliest effective United States, foreign, or international filing
date; eliminates the requirement that a prior public use or sale be
"in this country" to be a prior art activity; and treats commonly
owned or joint research agreement patents and patent application
publications as being by the same inventive entity for purposes of
novelty, as well as nonobviousness. The AIA also repeals the provisions
pertaining to statutory invention registrations. The current rules of
practice in patent cases have a number of provisions based on the
conditions of patentability of a "first to invent" patent system. The
United States Patent and Trademark Office (Office) is proposing to
amend the rules of practice in patent cases to implement the changes to
the conditions of patentability in the AIA, and to eliminate the
provisions pertaining to statutory invention registrations.
DATES: Comment Deadline Date: Written comments must be received on or
before October 5, 2012.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: fitf_rules@uspto.gov. Comments may also be
submitted by postal mail addressed to: Mail Stop Comments - Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450,
marked to the attention of Susy Tsang-Foster, Legal Advisor, Office of
Patent Legal Administration.
Comments may also be sent by electronic mail message over the
Internet 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.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments are preferred to be submitted in
plain text, but also may be submitted in ADOBE® portable
document format or MICROSOFT WORD® format. Comments not
submitted electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE® portable
document format.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, currently located in Madison East,
Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also
will be available for viewing via the Office's Internet Web site
(http://www.uspto.gov). Because comments will be made available for
public inspection, information that the submitter does not desire to
make public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Susy Tsang-Foster, Legal Advisor
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((571) 272-7711), Pinchus M. Laufer, Senior Legal Advisor ((571) 272-
7726), or Eugenia A. Jones, Senior Legal Advisor ((571) 272-7727),
Office of Patent Legal Administration, Office of the Deputy Commissioner
for Patent Examination Policy.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: Section 3 of the AIA, inter alia, amends
the patent laws to: (1) Convert the United States patent system from a
"first to invent" system to a "first inventor to file" system; (2) treat
U.S. patents and U.S. patent application publications as prior art as of
their earliest effective filing date, regardless of whether the
earliest effective filing date is based upon an application filed in
the U.S. or in another country; (3) eliminate the requirement that a
prior public use or sale be "in this country" to be a prior art
activity; and (4) treat commonly owned or joint research agreement
patents and patent application publications as being by the same
inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C.
103. These changes in section 3 of the AIA are effective on March 16,
2013, but apply only to certain applications filed on or after March
16, 2013. The Office sets out the conditions of patentability in 35
U.S.C. 102 and 103 as interpreted by the case law in the Manual of
Patent Examining Procedure (MPEP). See MPEP §§ 2121 through
2143 (8th ed. 2001) (Rev. 8, July 2010). The Office plans to issue
guidelines and train the Patent Examining Corps on how the changes to
35 U.S.C. 102 and 103 in section 3 of the AIA impact the provisions of
the MPEP pertaining to 35 U.S.C. 102 and 103.
The rules of practice for patent cases in title 37 of the Code of
Federal Regulations (CFR) are currently drafted for examination under
the "first to invent" system in effect prior to March 16, 2013. Thus,
this notice proposes changes to the rules of practice in title 37, CFR,
for consistency with, and to address the examination issues raised by,
the changes in section 3 of the AIA.
Summary of Major Provisions: The Office is specifically proposing
to provide the following changes:
The Office is proposing to add the definitions provided in the AIA
to the rules of practice for the terms commonly used in the rules of
practice.
The Office is providing for the submission of affidavits or
declarations showing that: (1) A disclosure upon which a claim
rejection is based was by the inventor or joint inventor or by a party
who obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor; or (2) there was a prior public
disclosure by the inventor or a joint inventor or another who obtained
the subject matter disclosed directly or indirectly from the inventor
or a joint inventor.
The Office is proposing to provide for the situation in which a
U.S. patent or U.S. patent application publication has a prior art
effect as of the filing date of a foreign priority application by
requiring that the certified copy of the foreign application be filed
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.
The Office is eliminating the provisions directed to statutory
invention registrations.
Finally, the Office is proposing additional requirements for
nonprovisional applications filed on or after March 16, 2013, that
claim the benefit of the filing date of a foreign, provisional, or
nonprovisional application filed prior to March 16, 2013. If such a
nonprovisional application contains at any time a claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
the applicant must provide a statement to that effect within the later
of four months from the actual filing date of the later-filed
application, four months from the date of entry into the national stage
in an international application, sixteen months from the filing date of
the prior-filed application, or the date that a first claim to a
claimed invention that has an effective filing date on or after March
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16, 2013, is presented in the application. In addition, if such a
nonprovisional application does not contain a claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
but discloses subject matter not also disclosed in the foreign,
provisional, or nonprovisional application, the applicant must provide
a statement that the application includes subject matter not disclosed
in the foreign, provisional, or nonprovisional application within the
later of four months from the actual filing date of the later-filed
application, four months from the date of entry into the national stage
in an international application, or sixteen months from the filing date
of the prior-filed application. This will permit the Office to readily
determine whether the nonprovisional application is subject to the
changes to 35 U.S.C. 102 and 103 in the AIA.
Costs and Benefits: This rulemaking is not economically significant
as that term is defined in Executive Order 12866 (Sept. 30, 1993).
Specific Changes to title 35, United States Code: The AIA was
enacted into law on September 16, 2011. See Public Law 112-29, 125
Stat. 284 (2011). Section 3 of the AIA specifically amends 35 U.S.C.
102 to provide in 35 U.S.C. 102(a) that a person shall be entitled to a
patent unless: (1) The claimed invention was patented, described in a
printed publication, or in public use, on sale, or otherwise available
to the public before the effective filing date of the claimed
invention; or (2) the claimed invention was described in a patent
issued under 35 U.S.C. 151, or in an application for patent published
or deemed published under 35 U.S.C. 122(b), in which the patent or
application, as the case may be, names another inventor and was
effectively filed before the effective filing date of the claimed
invention. See 125 Stat. at 285-86. The publication of an international
application designating the United States by the World Intellectual
Property Organization (WIPO) is deemed a publication under 35 U.S.C.
122(b) (except as provided in 35 U.S.C. 154(d)). See 35 U.S.C. 374.
35 U.S.C. 102(b) as amended by section 3 of the AIA provides for
exceptions to the provisions of 35 U.S.C. 102(a). The exceptions in 35
U.S.C. 102(b)(1) provide that a disclosure made one year or less before
the effective filing date of a claimed invention shall not be prior art
to the claimed invention under 35 U.S.C. 102(a)(1) if: (1) The
disclosure was made by the inventor or joint inventor or by another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor; or (2) the subject matter disclosed had,
before such disclosure, been publicly disclosed by the inventor or a
joint inventor or another who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor. See 125
Stat. at 286. The exceptions in 35 U.S.C. 102(b)(2) provide that a
disclosure shall not be prior art to a claimed invention under 35
U.S.C. 102(a)(2) if: (1) The subject matter disclosed was obtained
directly or indirectly from the inventor or a joint inventor; (2) the
subject matter disclosed had, before such subject matter was
effectively filed under 35 U.S.C. 102(a)(2), been publicly disclosed by
the inventor or a joint inventor or another who obtained the subject
matter disclosed directly or indirectly from the inventor or a joint
inventor; or (3) the subject matter disclosed and the claimed
invention, not later than the effective filing date of the claimed
invention, were owned by the same person or subject to an obligation of
assignment to the same person. See id.
35 U.S.C. 102(c) as amended by section 3 of the AIA provides for
common ownership under joint research agreements. 35 U.S.C. 102(c)
specifically provides that subject matter disclosed and a claimed
invention shall be deemed to have been owned by the same person or
subject to an obligation of assignment to the same person in applying
the provisions of 35 U.S.C. 102(b)(2)(C) if: (1) The subject matter
disclosed was developed and the claimed invention was made by, or on
behalf of, one or more parties to a joint research agreement that was in
effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken
within the scope of the joint research agreement; and (3) the application
for patent for the claimed invention discloses or is amended to disclose
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the names of the parties to the joint research agreement. See id. The AIA
also provides that the enactment of 35 U.S.C. 102(c) is done with the same
intent to promote joint research activities that was expressed, including
in the legislative history, through the enactment of the Cooperative
Research and Technology Enhancement Act of 2004 (the "CREATE Act"; Pub. L.
108-453, 118 Stat. 3596 (2004)), and that the Office shall administer
35 U.S.C. 102(c) in a manner consistent with the legislative history of
the CREATE Act that was relevant to its administration. See 125 Stat.
at 287.
35 U.S.C. 102(d) as amended by section 3 of the AIA provides a
definition for "effectively filed" for purposes of determining
whether a patent or application for patent is prior art to a claimed
invention. 35 U.S.C. 102(d) provides that for purposes of determining
whether a patent or application for patent is prior art to a claimed
invention under 35 U.S.C. 102(a)(2), such patent or application shall
be considered to have been effectively filed, with respect to any
subject matter described in the patent or application on the earliest
of: (1) The actual filing date of the patent or the application for
patent; or (2) if the patent or application for patent is entitled to
claim a right of priority or the benefit of an earlier filing date
under 35 U.S.C. 119, 120, 121, or 365 based upon one or more prior
filed applications for patent, the filing date of the earliest such
application that describes the subject matter. See 125 Stat. at 286-87.
The AIA provides a number of definitions for terms used in title 35
of the United States Code. See 125 Stat. at 285. The term "inventor"
means the individual or, if a joint invention, the individuals
collectively who invented or discovered the subject matter of the
invention, and the terms "joint inventor" and "coinventor" mean any
one of the individuals who invented or discovered the subject matter of
a joint invention. 35 U.S.C. 100(f) and (g). The term "joint research
agreement" means a written contract, grant, or cooperative agreement
entered into by two or more persons or entities for the performance of
experimental, developmental, or research work in the field of the
claimed invention. 35 U.S.C. 100(h). The term "effective filing date"
for a claimed invention in a patent or application for patent (other
than a reissue application or a reissued patent) means the earliest of:
(1) The actual filing date of the patent or the application for the
patent containing a claim to the invention; or (2) the filing date of
the earliest application for which the patent or application is
entitled, as to such invention, to a right of priority or the benefit
of an earlier filing date under 35 U.S.C. 119, 120, 121, or 365. 35
U.S.C. 100(i)(1). The "effective filing date" for a claimed invention
in a reissued patent or an application for reissue shall be determined
by deeming the claim to the invention to have been contained in the
patent for which reissue was sought. 35 U.S.C. 100(i)(2). The term
"claimed invention" means the subject matter defined by a claim in a
patent or an application for a patent. 35 U.S.C. 100(j).
The AIA amends 35 U.S.C. 103 to provide that a patent for a claimed
invention may not be obtained, notwithstanding that the claimed
invention is not identically disclosed as set forth in 35 U.S.C. 102,
if the differences between the claimed invention and the prior art are
such that the claimed invention as a whole would have been obvious
before the effective filing date of the claimed invention to a person
having ordinary skill in the art to which the claimed invention
pertains. See 125 Stat. at 287. 35 U.S.C. 103 also provides that
patentability shall not be negated by the manner in which the invention
was made. See id.
The AIA eliminates the provisions in 35 U.S.C. 135 for patent
interference proceedings and replaces them with patent derivation
proceedings. See 125 Stat. at 289-90. The Office is implementing the
patent derivation proceedings provided for in the AIA in a separate
rulemaking (RIN 0651-AC74). The AIA also replaces the interference
provisions of 35 U.S.C. 291 with derivation provisions. See 125 Stat.
at 288-89.
The AIA repeals the provisions of 35 U.S.C. 104 (special provisions
for inventions made abroad) and 157 (statutory invention
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registrations). See 125 Stat. at 287. The AIA also makes conforming
changes to 35 U.S.C. 111, 119, 120, 134, 145, 146, 154, 172, 202(c),
282, 287, 305, 363, 374, and 375(a). See 125 Stat. at 287-88, and 90-
91.
The AIA provides that the changes (other than the repeal of 35
U.S.C. 157) in section 3 which are being implemented in this rulemaking
take effect on March 16, 2013, and apply to any application for patent,
and to any patent issuing thereon, that contains, or contained at any
time: (1) A claim to a claimed invention that has an effective filing
date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013;
or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any
patent or application that contains, or contained at any time, such a
claim. See 125 Stat. at 293.
The AIA also provides that the provisions of 35 U.S.C. 102(g), 135,
and 291 in effect on March 15, 2013, shall apply to each claim of an
application for patent, and any patent issued thereon, for which the
amendments made by this section also apply, if such application or
patent contains, or contained at any time: (1) A claim to an invention
having an effective filing date as defined in 35 U.S.C. 100(i) that
occurs before March 16, 2013; or (2) a specific reference under 35
U.S.C. 120, 121, or 365(c) to any patent or application that contains,
or contained at any time, such a claim. See id.
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 proposed in this notice of proposed rulemaking.
Section 1.9: Section 1.9 is proposed to be amended to add the
definition of the terms used throughout the rules.
Section 1.9(d)(1) as proposed provides that the term "inventor"
or "inventorship" as used in this chapter means the individual or, if
a joint invention, the individuals collectively who invented or
discovered the subject matter of the invention. See 35 U.S.C. 100(f).
While the term "inventorship" is not used in 35 U.S.C. 100(f), the
term "inventorship" is currently used throughout the rules of
practice to mean the individual or, if a joint invention, the
individuals collectively who invented or discovered the subject matter
of the invention. Section 1.9(d)(2) provides that the term "joint
inventor" or "coinventor" as used in this chapter means any one of
the individuals who invented or discovered the subject matter of a
joint invention. See 35 U.S.C. 100(g).
Section 1.9(e) as proposed provides that the term "joint research
agreement" as used in this chapter means a written contract, grant, or
cooperative agreement entered into by two or more persons or entities
for the performance of experimental, developmental, or research work in
the field of the claimed invention. See 35 U.S.C. 100(h).
Section 1.9(f) as proposed provides that the term "claimed
invention" as used in this chapter means the subject matter defined by
a claim in a patent or an application for a patent. See 35 U.S.C. 100(j).
Section 1.53: Section 1.53(j) is proposed to be amended to delete
the phrase "except as provided in 35 U.S.C. 102(e)" to be consistent
with the changes to 35 U.S.C. 102 in the AIA.
Section 1.55: Section 1.55(a)(1) is proposed to be amended to
include the requirement in 35 U.S.C. 119(a) that the nonprovisional
application must be filed not later than twelve months after the date
on which the foreign application was filed, and that this twelve-month
period is subject to 35 U.S.C. 21(b) and § 1.7(a). 35 U.S.C. 21(b)
and § 1.7(a) provide that when the day, or the last day, for taking
any action (e.g., filing a nonprovisional application within twelve
months of the date on which the foreign priority application was filed)
or paying any fee in the Office falls on Saturday, Sunday, or a Federal
holiday within the District of Columbia, the action may be taken, or
fee paid, on the next succeeding secular or business day.
Section 1.55(a)(2) is proposed to be amended to include provisions
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in current § 1.55(a)(1)(i) and to require that the claim for
priority and a certified copy of the foreign application be filed in an
application under 35 U.S.C. 111(a) (other than a design application)
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. Section 1.55(a)(2) as proposed also requires the claim for
priority to be presented in an application data sheet. See Changes To
Implement the Inventor's Oath or Declaration Provisions of the Leahy-
Smith America Invents Act, 77 FR 982, 989-90 (Jan. 6, 2012).
Section 1.55(a)(3) is proposed to be amended to include provisions
in current § 1.55(a)(1)(ii) and to require that the claim for
priority be made and a certified copy of the foreign application filed
within the time limit set forth in the Patent Cooperation Treaty (PCT)
and the Regulations under the PCT in an application that entered the
national stage from an international application after compliance with
35 U.S.C. 371. Since patent application publications will have a prior
art effect as of the earliest priority date (for subject matter
disclosed in the priority application) with respect to applications
subject to 35 U.S.C. 102, as amended by the AIA, the Office needs to
ensure that it has a copy of the priority application by the time of
publication. The proposed time period of four months from the actual
filing date of the application or sixteen months from the filing date
of the prior foreign application is consistent with the international
norm for when the certified copy of the foreign application needs to be
filed in an application. See PCT Rule 17.1(a).
Section 1.55(a)(4) is proposed to be amended to require that if a
nonprovisional application filed on or after March 16, 2013, claims the
benefit of the filing date of a foreign application filed prior to
March 16, 2013, and also contains, or contained at any time, a claim to
a claimed invention that has an effective filing date on or after March
16, 2013, the applicant must provide a statement to that effect within
the later of four months from the actual filing date of the
application, four months from the date of entry into the national stage
as set forth in § 1.491 in an international application, sixteen
months from the filing date of the prior foreign application, or the
date that a first claim to a claimed invention that has an effective
filing date on or after March 16, 2013, is presented in the
application. Section 1.55(a)(4) is also proposed to be amended to
require that if a nonprovisional application filed on or after March
16, 2013, claims the benefit of the filing date of a foreign
application filed prior to March 16, 2013, does not contain a claim to
a claimed invention that has an effective filing date on or after March
16, 2013, but discloses subject matter not also disclosed in the
foreign application, the applicant must provide a statement to that
effect within the later of four months from the actual filing date of
the later-filed application, four months from the date of entry into
the national stage as set forth in § 1.491 in an international
application, or sixteen months from the filing date of the prior
foreign application.
Proposed § 1.55(a)(4) would not require that the applicant
identify how many or which claims in the nonprovisional application
have an effective filing date on or after March 16, 2013, or that the
applicant identify the subject matter in the nonprovisional application
not also disclosed in the foreign application. Proposed § 1.55(a)(4)
would require only that the applicant state that there is a
claim in the nonprovisional application that has an effective filing
date on or after March 16, 2013 (e.g., "upon reasonable belief, this
application contains at least one claim that has an effective filing
date on or after March 16, 2013"), or the applicant state that there
is subject matter in the nonprovisional application not also disclosed
in the foreign application (e.g., "upon reasonable belief, this
application contains subject matter not also disclosed in the foreign
application).
If an applicant fails to timely provide such a statement and then
later indicates that the nonprovisional application contains a claim
having an effective filing date on or after March 16, 2013, or subject
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matter not also disclosed in the foreign application, the Office may
issue a requirement for information under § 1.105 requiring the
applicant to identify where (by page and line or paragraph number)
there is written description support under AIA 35 U.S.C. 112(a) in the
foreign application for the remaining claims in the nonprovisional
application. Likewise, if the applicant later seeks to retract a
previous statement that the nonprovisional application contains a claim
having an effective filing date on or after March 16, 2013, or subject
matter not also disclosed in the foreign application, the Office may
issue a requirement for information under § 1.105 requiring the
applicant to identify where (by page and line or paragraph number)
there is written description support under AIA 35 U.S.C. 112(a) in the
foreign application for each claim in the nonprovisional application.
This information is needed to assist the Office in determining
whether the application is subject to 35 U.S.C. 102 and 103 as amended
by the AIA or 35 U.S.C. 102 and 103 in effect on March 15, 2013. If the
Office must determine on its own the effective filing date of every
claim ever presented in an application filed on or after March 16,
2013, that claims priority to or the benefit of a foreign application
filed prior to March 16, 2013, examination costs will significantly
increase. This proposed provision is tailored to the transition to 35
U.S.C. 102 and 103 under the AIA. Thus, for a nonprovisional
application filed on or after March 16, 2013, that claims the benefit
of the filing date of a foreign application, the applicant would not be
required to provide any statement if: (1) The nonprovisional
application discloses only subject matter also disclosed in a foreign
application filed prior to March 16, 2013; or (2) the nonprovisional
application claims only the benefit of the filing date of a foreign
application filed on or after March 16, 2013.
Section 1.55(c) as proposed contains the provisions regarding
waiver of claims for priority and acceptance of unintentionally delayed
claims. Section 1.55(c) is proposed to be amended to reference claims
for priority under 35 U.S.C. 119(a) through (d) or (f), or 365(a) or
365(b). Section 1.55(c) is proposed to be amended to require a petition
to accept a delayed claim to be accompanied by a certified copy of the
foreign application, unless previously submitted. In view of the time
period for submitting a certified copy in proposed § 1.55(a), a petition
to accept a delayed claim after this time period needs to be accompanied
by a certified copy (unless previously submitted).
Section 1.55(d) as proposed contains provisions for the priority
document exchange program. See Changes to Implement Priority Document
Exchange Between Intellectual Property Offices, 72 FR 1664 (Jan. 16,
2007). Sections 1.55(d)(1)(i) and (d)(1)(ii) contain the provisions of
current §§ 1.55(d)(1)(i) and (d)(1)(ii), except to also require
the claim for priority to be presented in an application data sheet and
that the copy of the foreign application is received by the Office
within the period set forth in § 1.55(a) or by such later time as
may be set by the Office. Section 1.55(d)(1)(iii) is proposed to be
amended to remove the sentence that the request should be made within
the later of four months from the filing date of the application or
sixteen months from the filing date of the foreign application. This
sentence is no longer needed since proposed § 1.55(a) requires the
certified copy to be filed 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.
Section 1.55(e) as proposed contains the provisions of current
§ 1.55(a)(2)-(4). In view of the time period in proposed § 1.55(a),
the provisions in current § 1.55(a)(2) and (a)(3) are less
relevant, but these provisions are still needed to cover situations
where the Office is examining an application within four months from
the filing date of the application such as an application examined
under the Office's Track I prioritized examination program. See Changes
to Implement the Prioritized Examination Track (Track I) of the
Enhanced Examination Timing Control Procedures Under the Leahy-Smith
America Invents Act, 76 FR 59050 (Sept. 23, 2011), and Changes to
Implement the Prioritized Examination for Requests for Continued
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Examination, 76 FR 78566 (Dec. 19, 2011). Furthermore, even if a
petition to accept a delayed claim for priority is filed under § 1.55(c),
the claim for priority and the certified copy of the foreign
application must still be filed within the pendency of the application
and before the patent is granted. Thus, § 1.55(e)(1) as proposed
contains the provisions of current § 1.55(a)(2). In addition,
§ 1.55(e)(2) as proposed continues to permit the Office to require the
claim for priority and the certified copy to be submitted earlier than
the time period provided in § 1.55(a).
Furthermore, § 1.55(e)(3) as proposed continues to permit the
Office to require an English language translation of a non-English
language foreign application. Finally, § 1.55(e)(2)(i) and
(e)(3)(i) as proposed also reference a derivation proceeding (in
addition to an interference) as a situation in which the Office may
require the claim for priority and the certified copy, as well as an
English language translation, of the foreign application to be
submitted earlier.
Section 1.55(f) is proposed to be added to provide that the time
periods set forth in § 1.55 are not extendable. The time periods
set forth in § 1.55 are currently not extendable. This provision
simply avoids the need to separate that the time period is not
extendable with respect to each time period set in in § 1.55.
Section 1.71: Section 1.71(g)(1) is proposed to be amended to
change 35 U.S.C. 103(c)(2)(C) to 35 U.S.C. 102(c)(3) to be consistent
with the changes to 35 U.S.C. 102 and 103 in the AIA, which are
described previously in the summary of major changes.
Section 1.77: Section 1.77(b) is proposed to be amended to provide
for any statement regarding prior disclosures by the inventor or a
joint inventor. Section 1.77(a) sets out a preferred arrangement for a
patent application, and § 1.77(b) sets out the preferred
arrangement of the specification of a patent application. If the
information provided by the applicant in this section of the
specification is sufficient to comply with what is required in a § 1.130
affidavit or declaration regarding a prior disclosure (discussed
below), then applicant would not need to provide anything further. If,
however, the information provided by the applicant in this section of
the specification is not sufficient to comply with what is required in
such a § 1.130 affidavit or declaration, then the applicant would
need to submit the required information in an affidavit or declaration
under § 1.130. An applicant is not required to use the format
specified in § 1.77 or identify any prior disclosures by the
inventor or a joint inventor (unless necessary to overcome a
rejection), but identifying any prior disclosures by the inventor or a
joint inventor may save applicants (and the Office) the costs related
to an Office action and reply and expedite examination of the
application.
Section 1.78: Section 1.78 is proposed to be reorganized as
follows: (1) § 1.78(a) as proposed contains provisions relating to
claims under 35 U.S.C. 119(e) for the benefit of a prior-filed
provisional application; (2) § 1.78(b) as proposed contains
provisions relating to delayed claims under 35 U.S.C. 119(e) for the
benefit of a prior-filed provisional application; (3) § 1.78(c) as
proposed contains provisions relating to claims under 35 U.S.C. 120,
121, or 365(c) for the benefit of a prior-filed nonprovisional or
international application; (4) § 1.78(d) as proposed contains
provisions relating to delayed claims under 35 U.S.C. 120, 121, or
365(c) for the benefit of a prior-filed nonprovisional or international
application; (5) § 1.78(e) as proposed contains provisions relating
to applications containing conflicting claims; (6) § 1.78(f) as
proposed contains provisions relating to applications or patents under
reexamination naming different inventors and containing patentably
indistinct claims; and (7) § 1.78(g) as proposed provides that the
time periods set forth in § 1.78 are not extendable.
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Section 1.78(a) as proposed addresses claims under 35 U.S.C. 119(e)
for the benefit of a prior-filed provisional application. Under 35
U.S.C. 119(e)(1), a provisional application must disclose the invention
claimed in at least one claim of the later-filed application in the
manner provided by 35 U.S.C. 112(a) (except for the requirement to
disclose the best mode) for the later-filed application to receive the
benefit of the filing date of the provisional application. See New
Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed.
Cir. 2002) (for a nonprovisional application to actually receive the
benefit of the filing date of the provisional application, "the
specification of the provisional [application] must `contain a written
description of the invention and the manner and process of making and
using it, in such full, clear, concise, and exact terms,' 35 U.S.C. 112
¶ 1, to enable an ordinarily skilled artisan to practice the invention
claimed in the nonprovisional application"). Section 1.78(a), however,
as proposed does not also state (as does current § 1.78(a)(4)) that
the provisional application must disclose the invention claimed in at
least one claim of the later-filed application in the manner provided
by 35 U.S.C. 112(a) (except for the requirement to disclose the best
mode) because § 1.78 pertains to claims to the benefit of a prior-
filed application and the AIA draws a distinction between being
entitled to the benefit of a prior-filed application and being entitled
to claim the benefit of a prior-filed application. See 157 Cong. Rec.
S1370 (2011) (explaining the distinction between being entitled to
actual priority or benefit for purposes of 35 U.S.C. 100(i) and being
entitled only to claim priority or benefit for purposes of 35 U.S.C.
102(d)). Nevertheless, the prior-filed application must disclose an
invention in the manner provided by 35 U.S.C. 112(a) (except for the
requirement to disclose the best mode) for the later-filed application
to receive the benefit of the filing date of the prior-filed
application under 35 U.S.C. 119(e) (or 35 U.S.C. 120) as to such
invention, and the prior-filed application must describe the subject
matter for the later-filed application to be considered effectively
filed under 35 U.S.C. 102(d) on the filing date of the prior-filed
application with respect to that subject matter.
Section 1.78(a)(1) as proposed provides that the nonprovisional
application or international application designating the United States
of America must be filed not later than twelve months after the date on
which the provisional application was filed, and that this twelve-month
period is subject to 35 U.S.C. 21(b) and 1.7(a). As discussed
previously, 35 U.S.C. 21(b) and 1.7(a) provide that when the day, or
the last day, for taking any action (e.g., filing a nonprovisional
application within twelve months of the date on which the provisional
application was filed) or paying any fee in the Office falls on
Saturday, Sunday, or a Federal holiday within the District of Columbia,
the action may be taken, or fee paid, on the next succeeding secular or
business day.
Section 1.78(a)(3) is proposed to be amended to require that if a
nonprovisional application filed on or after March 16, 2013, claims the
benefit of the filing date of a provisional application filed prior to
March 16, 2013, and also contains, or contained at any time, a claim to
a claimed invention that has an effective filing date on or after March
16, 2013, the applicant must provide a statement to that effect within
the later of four months from the actual filing date of the later-filed
application, four months from the date of entry into the national stage
as set forth in § 1.491 in an international application, sixteen
months from the filing date of the prior-filed provisional application,
or the date that a first claim to a claimed invention that has an
effective filing date on or after March 16, 2013, is presented in the
application. Section 1.78(a)(3) is also proposed to be amended to
require that if a nonprovisional application filed on or after March
16, 2013, claims the benefit of the filing date of a provisional
application filed prior to March 16, 2013, does not contain a claim to
a claimed invention that has an effective filing date on or after March
16, 2013, but discloses subject matter not also disclosed in the
provisional application, the applicant must provide a statement to that
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effect within the later of four months from the actual filing date of
the later-filed application, four months from the date of entry into
the national stage as set forth in § 1.491 in an international
application, or sixteen months from the filing date of the prior-filed
provisional application.
Proposed § 1.78(a)(3) would not require that the applicant
identify how many or which claims in the nonprovisional application
have an effective filing date on or after March 16, 2013, or that the
applicant identify the subject matter in the nonprovisional application
not also disclosed in the provisional application. Proposed § 1.78(a)(3)
would require only that the applicant state that there is a
claim in the nonprovisional application that has an effective filing
date on or after March 16, 2013 (e.g., "upon reasonable belief, this
application contains at least one claim that has an effective filing
date on or after March 16, 2013"), or the applicant state that there
is subject matter in the nonprovisional application not also disclosed
in the provisional application (e.g., "upon reasonable belief, this
application contains subject matter not also disclosed in provisional
application No. XX/XXX,XXX").
If an applicant fails to timely provide such a statement and then
later indicates that the nonprovisional application contains a claim
having an effective filing date on or after March 16, 2013, or subject
matter not also disclosed in the provisional application, the Office
may issue a requirement for information under § 1.105 requiring the
applicant to identify where (by page and line or paragraph number)
there is written description support under AIA 35 U.S.C. 112(a) in the
provisional application for the remaining claims in the nonprovisional
application. Likewise, if the applicant later seeks to retract a
previous statement that the nonprovisional application contains a claim
having an effective filing date on or after March 16, 2013, or subject
matter not also disclosed in the provisional application, the Office
may issue a requirement for information under § 1.105 requiring the
applicant to identify where (by page and line or paragraph number)
there is written description support under AIA 35 U.S.C. 112(a) in the
provisional application for each claim in the nonprovisional application.
This information is needed to assist the Office in determining
whether the application is subject to 35 U.S.C. 102 and 103 as amended
by the AIA or 35 U.S.C. 102 and 103 in effect on March 15, 2013. As
discussed previously, if the Office must determine on its own the
effective filing date of every claim ever presented in an application
filed on or after March 16, 2013, that claims priority to or the
benefit of a provisional application filed prior to March 16, 2013,
examination costs will significantly increase. This proposed provision
is tailored to the transition to 35 U.S.C. 102 and 103 under the AIA.
Thus, for a nonprovisional application filed on or after March 16,
2013, that claims the benefit of the filing date of a provisional
application, the applicant would not be required to provide any
statement if: (1) The nonprovisional application discloses only subject
matter also disclosed in a provisional application filed prior to March
16, 2013; or (2) the nonprovisional application claims only the benefit
of the filing date of a provisional application filed on or after March
16, 2013.
Sections 1.78(a) and (c) as proposed require the reference to each
prior-filed application to be included in an application data sheet.
See Changes To Implement the Inventor's Oath or Declaration Provisions
of the Leahy-Smith America Invents Act, 77 FR 982, 993 (Jan. 6, 2012).
Section 1.78(a) as proposed otherwise contains the provisions of
current § 1.78(a)(4) and (a)(5).
Section 1.78(b) as proposed contains provisions relating to delayed
claims under 35 U.S.C. 119(e) for the benefit of prior-filed
provisional applications. Section 1.78(b) contains the provisions of
current § 1.78(a)(6).
Section 1.78(c) as proposed contains provisions relating to claims
under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed
nonprovisional or international application. Section 1.78(c)(1) as
proposed provides that each prior-filed application must name as the
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inventor or a joint inventor an inventor named in the later-filed
application. In addition, each prior-filed application must either be:
(1) An international application entitled to a filing date in
accordance with PCT Article 11 and designating the United States of
America; or (2) a nonprovisional application under 35 U.S.C. 111(a)
that is entitled to a filing date as set forth in § 1.53(b) or
§ 1.53(d) for which the basic filing fee set forth in § 1.16 has been
paid within the pendency of the application (provisions from current
§ 1.78(a)(1)).
Section 1.78(c) as proposed does not contain a provision that the
prior-filed application disclose the invention claimed in at least one
claim of the later-filed application in the manner provided by 35
U.S.C. 112(a). For a later-filed application to receive the benefit of
the filing date of a prior-filed application, 35 U.S.C. 120 requires
that the prior-filed application disclose the invention claimed in at
least one claim of the later-filed application in the manner provided
by 35 U.S.C. 112(a) (except for the requirement to disclose the best
mode). As discussed previously, § 1.78 as proposed pertains to
claims to the benefit of a prior-filed application and the AIA draws a
distinction between being entitled to the benefit of a prior-filed
application and being entitled to claim the benefit of a prior-filed
application.
Section 1.78(c)(2) is proposed to be amended to clarify that
identifying the relationship of the applications means identifying
whether the later-filed application is a continuation, divisional, or
continuation-in-part of the prior-filed nonprovisional application or
international application. See MPEP § 201.11.
Section 1.78(c)(2) is also proposed to be amended to require that
if a nonprovisional application filed on or after March 16, 2013,
claims the benefit of the filing date of a nonprovisional application
filed prior to March 16, 2013, and also contains, or contained at any
time, a claim to a claimed invention that has an effective filing date
on or after March 16, 2013, the applicant must provide a statement to
that effect within the later of four months from the actual filing date
of the later-filed application, four months from the date of entry into
the national stage as set forth in § 1.491 in an international
application, sixteen months from the filing date of the prior-filed
nonprovisional application, or the date that a first claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
is presented in the application. Section 1.78(c)(2) is also proposed to
be amended to require that if a nonprovisional application filed on or
after March 16, 2013, claims the benefit of the filing date of a
nonprovisional application filed prior to March 16, 2013, does not
contain a claim to a claimed invention that has an effective filing
date on or after March 16, 2013, but discloses subject matter not also
disclosed in the prior-filed nonprovisional application, the applicant
must provide a statement to that effect within the later of four months
from the actual filing date of the later-filed application, four months
from the date of entry into the national stage as set forth in § 1.491
in an international application, or sixteen months from the filing date
of the prior-filed nonprovisional application.
Proposed § 1.78(c)(2) would not require that the applicant
identify how many or which claims in the later-filed nonprovisional
application have an effective filing date on or after March 16, 2013,
or that the applicant identify the subject matter in the later-filed
nonprovisional application not also disclosed in the prior-filed
nonprovisional application. Proposed § 1.78(c)(2) would require
only that the applicant state that there is a claim in the later-filed
nonprovisional application that has an effective filing date on or
after March 16, 2013 (e.g., "upon reasonable belief, this application
contains at least one claim that has an effective filing date on or
after March 16, 2013"), or the applicant state that there is subject
matter in the later-filed nonprovisional application not also disclosed
in the prior-filed nonprovisional application (e.g., "upon reasonable
belief, this application contains subject matter not also disclosed in
application No. XX/XXX,XXX").
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If an applicant fails to timely provide such a statement and then
later indicates that the later-filed nonprovisional application
contains a claim having an effective filing date on or after March 16,
2013, or subject matter not also disclosed in the prior-filed
nonprovisional application, the Office may issue a requirement for
information under § 1.105 requiring the applicant to identify where
(by page and line or paragraph number) there is written description
support under AIA 35 U.S.C. 112(a) in the prior-filed nonprovisional
application for the remaining claims in the later-filed nonprovisional
application. Likewise, if the applicant later seeks to retract a
previous statement that the later-filed nonprovisional application
contains a claim having an effective filing date on or after March 16,
2013, or subject matter not also disclosed in the prior-filed
nonprovisional application, the Office may issue a requirement for
information under § 1.105 requiring the applicant to identify where
(by page and line or paragraph number) there is written description
support under AIA 35 U.S.C. 112(a) in the prior-filed nonprovisional
application for each claim in the later-filed nonprovisional
application.
This information is needed to assist the Office in determining
whether the application is subject to 35 U.S.C. 102 and 103 as amended
by the AIA or 35 U.S.C. 102 and 103 in effect on March 15, 2013. As
discussed previously, if the Office must determine on its own the
effective filing date of every claim ever presented in an application
filed on or after March 16, 2013, that claims priority to or the
benefit of a nonprovisional application filed prior to March 16, 2013,
examination costs will significantly increase. This proposed provision
is tailored to the transition to 35 U.S.C. 102 and 103 under the AIA.
Thus, for a nonprovisional application filed on or after March 16,
2013, that claims the benefit of the filing date of a nonprovisional
application, the applicant would not be required to provide any
statement if: (1) The nonprovisional application discloses only subject
matter also disclosed in a prior-filed nonprovisional application filed
prior to March 16, 2013; or (2) the nonprovisional application claims
only the benefit of the filing date of a nonprovisional application
filed on or after March 16, 2013.
Sections 1.78(c)(3) through (c)(5) as proposed contain the
provisions of current § 1.78(a)(2). Section 1.78(c)(5) as proposed
also provides that cross-references to applications for which a benefit
is not claimed must not be included in an application data sheet
(§ 1.76(b)(5)). Including cross-references to applications for which a
benefit is not claimed in the application data sheet may lead the
Office to inadvertently schedule the application for publication under
35 U.S.C. 122(b) and § 1.211 et seq. on the basis of the cross-
referenced applications having the earliest filing date.
Section 1.78(d) as proposed contains provisions relating to delayed
claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of prior-
filed nonprovisional or international applications. Section 1.78(d) as
proposed contains the provisions of current § 1.78(a)(3).
Section 1.78(e) as proposed contains the provisions of current
§ 1.78(b) pertaining to applications containing conflicting claims.
Section 1.78(f) as proposed addresses applications or patents under
reexamination that name different inventors and contain patentably
indistinct claims. The provisions are similar to the provisions of
current § 1.78(c), but the language has been amended to refer to
"the effective filing date of the later claimed invention" in place
of "at the time the later invention was made" in view of the change
to a first inventor to file system.
Section 1.78(g) as proposed provides that the time periods set
forth in § 1.78 are not extendable.
Sections 1.53 and 1.76 would be amended for consistency with the
reorganization of § 1.78.
Section 1.104: Section 1.104(c)(4) is proposed to be amended to
include the provisions that pertain to commonly owned or joint research
agreement subject matter for applications subject to 35 U.S.C. 102 and
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103 as amended by the AIA. Specifically, 1.104(c)(4) as proposed
implements the provisions of 35 U.S.C. 102(b)(2)(C) and 35 U.S.C.
102(c) in the AIA. Thus, § 1.104(c)(4) as proposed is applicable to
applications that are subject to 35 U.S.C. 102 and 103 as amended by
the AIA.
Section 1.104(c)(4)(i) as proposed provides that subject matter
that qualifies as prior art under 35 U.S.C. 102(a)(2) and a claimed
invention will be treated as commonly owned for purposes of 35 U.S.C.
102(b)(2)(C) if the applicant provides a statement that the prior art
and the claimed invention, not later than the effective filing date of
the claimed invention, were owned by the same person or subject to an
obligation of assignment to the same person.
Section 1.104(c)(4)(ii) as proposed addresses joint research
agreements and provides that subject matter that qualifies as prior art
under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as
commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a
joint research agreement under 35 U.S.C. 102(c) if: (1) The applicant
provides a statement that the prior art was developed and the claimed
invention was made by or on behalf of one or more parties to a joint
research agreement, within the meaning of 35 U.S.C. 100(h) and
§ 1.9(e), that was in effect on or before the effective filing date of
the claimed invention, and the claimed invention was made as a result
of activities undertaken within the scope of the joint research
agreement; and (2) the application for patent for the claimed invention
discloses or is amended to disclose the names of the parties to the
joint research agreement.
Section 1.104(c)(5) is proposed to be amended to include the
provisions that pertain to commonly owned or joint research agreement
subject matter for applications subject to 35 U.S.C. 102 and 103 in
effect prior to the effective date of section 3 of the AIA. Thus,
§ 1.104(c)(5) as proposed is applicable to applications that are subject
to 35 U.S.C. 102 and 103 in effect prior to March 16, 2013.
Section 1.104(c)(5)(i) as proposed provides that subject matter
which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in
effect prior to March 16, 2013, and a claimed invention in an
application or a patent granted on or after December 10, 2004, will be
treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect
prior to March 16, 2013, if the applicant provides a statement to the
effect that the prior art and the claimed invention, at the time the
claimed invention was made, were owned by the same person or subject to
an obligation of assignment to the same person.
Section 1.104(c)(5)(ii) as proposed addresses joint research
agreements and provides that subject matter which qualifies as prior
art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16,
2013, and a claimed invention in an application or a patent granted on
or after December 10, 2004, will be treated as commonly owned for
purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, on the
basis of a joint research agreement under 35 U.S.C. 103(c)(2) in effect
prior to March 16, 2013 if: (1) the applicant provides a statement to
the effect that the prior art and the claimed invention were made by or
on behalf of the parties to a joint research agreement, within the
meaning of 35 U.S.C. 100(h) and § 1.9(e), that was in effect on or
before the date the claimed invention was made, and that the claimed
invention was made as a result of activities undertaken within the
scope of the joint research agreement; and (2) the application for
patent for the claimed invention discloses or is amended to disclose
the names of the parties to the joint research agreement. Section
1.104(c)(5)(ii) as proposed makes reference to the definition of joint
research agreement contained in 35 U.S.C. 100(h) and § 1.9(e). The
AIA did not change the definition of a joint research agreement, but
merely moved the definition from 35 U.S.C. 103(c)(3) to 35 U.S.C.
100(h). Thus, the Office proposes to reference the definition of joint
research agreement in 35 U.S.C. 100(h) in § 1.104(c)(5)(ii) for
simplicity.
Section 1.104(c)(6) is proposed to be added to clarify that patents
issued prior to December 10, 2004, from applications filed prior to
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November 29, 1999, are subject to 35 U.S.C. 103(c) in effect on
November 28, 1999. See MPEP § 706.02(l).
The provisions of current § 1.104(c)(5) pertain to statutory
invention registrations and are thus proposed to be removed. See
discussion of the provisions of §§ 1.293 through 1.297.
Section 1.109: Section 1.109 is proposed to be added to specify the
effective filing date of a claimed invention. Section 1.109(a) as
proposed provides that the effective filing date of a claimed invention
in a patent or an application for patent, other than in a reissue
application or reissued patent, is the earliest of: (1) The actual
filing date of the patent or the application for the patent containing
a claim to the invention; or (2) the filing date of the earliest
application for which the patent or application is entitled, as to such
invention, to priority to or the benefit of an earlier filing date
under 35 U.S.C. 119, 120, 121, or 365. See 35 U.S.C. 100(i)(1). Section
1.109(b) as proposed provides that the effective filing date for a
claimed invention in a reissue application or a reissued patent is
determined by deeming the claim to the invention to have been contained
in the patent for which reissue was sought. See 35 U.S.C. 100(i)(2).
Section 1.110: Section 1.110 as proposed provides that the Office
may require information concerning the inventorship and ownership of
the subject matter of each claim when necessary for an Office
proceeding. Section 1.110 is proposed to be amended to: (1) Change the
ownership inquiry to ownership on the effective filing date rather than
ownership on the date of invention; and (2) eliminate the provision
concerning inquiring into the date of invention of the subject matter
of the claims. Section 1.110 as proposed to be amended provides that
when more than one inventor is named in an application or patent, the
Office may require an applicant or patentee to identify the inventor,
and ownership on the effective filing date, of each claimed invention
in the application or patent, when necessary for purposes of an Office
proceeding.
Section 1.130: Section 1.130 is proposed to be amended to replace
its existing provisions (which are proposed to be moved to § 1.131)
with provisions for showing attribution of a disclosure to an inventor
or joint inventor, prior disclosure, or derivation under 35 U.S.C.
102(b) as amended by the AIA. Thus, § 1.130 as proposed would apply
to applications for patent (and patents issuing thereon) that are
subject to 35 U.S.C. 102 as amended by the AIA, and § 1.131 would
apply to applications for patent (and patents issuing thereon) that are
subject to 35 U.S.C. 102 in effect on March 15, 2013 (prior to the
effective date of section 3 of the AIA).
Section 1.130(a) as proposed provides a mechanism for filing an
affidavit or declaration to establish that a disclosure is not prior
art in accordance with 35 U.S.C. 102(b) as amended by the AIA. Proposed
§ 1.130, like §§ 1.131 and 1.132, provides a mechanism for
the submission of evidence to disqualify a disclosure as prior art or
otherwise traverse a rejection. An applicant's or patent owner's compliance
with § 1.130 means that the applicant or patent owner is entitled to
have the evidence considered in determining the patentability of the
claim(s) at issue. It does not mean that the applicant or patent owner
is entitled as a matter of right to have the rejection of or objection
to the claim(s) withdrawn. See Changes to Implement the Patent Business
Goals, 65 FR 54603, 54640 (Sept. 8, 2000) (discussing procedural nature
of §§ 1.131 and 1.132).
Section 1.130(a)(1) as proposed provides for the situation in
which: (1) The disclosure on which the rejection is based was by the
inventor or joint inventor; or (2) there was a public disclosure of the
subject matter on which the rejection is based by the inventor or a
joint inventor prior to the disclosure of the subject matter on which
the rejection is based or the date the patent or application on which
the rejection is based was effectively filed.
Section 1.130(a)(2) as proposed provides for the situation in
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which: (1) The disclosure on which the rejection is based was by a
party who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor; or (2) the subject matter
disclosed had been publicly disclosed by a party who obtained the
subject matter disclosed directly or indirectly from the inventor prior
to the disclosure of the subject matter on which the rejection is based
or the date the patent or application on which the rejection is based
was effectively filed.
Section 1.130(b) as proposed pertains to affidavits or declarations
under § 1.130(a)(1) in the situation in which the disclosure on
which the rejection is based was by the inventor or joint inventor.
Section 1.130(b) as proposed provides that if the disclosure on which
the rejection is based is by the inventor or a joint inventor, the
affidavit or declaration under § 1.130(a)(1) must provide a
satisfactory showing that the inventor or a joint inventor is in fact
the inventor of the subject matter of the disclosure. The applicant or
patent owner must provide a satisfactory showing that the inventor or a
joint inventor is the actual inventor of the subject matter of the
disclosure. See In re Katz, 687 F.2d 450, 455 (CCPA 1982). Where the
authorship of the reference disclosure includes the inventor or a joint
inventor named in the application, an "unequivocal" statement from
the inventor or a joint inventor that he/she (or some specific
combination of named inventors) invented the subject matter of the
disclosure, accompanied by a reasonable explanation of the presence of
additional authors, may be acceptable in the absence of evidence to the
contrary. See In re DeBaun, 687 F.2d 459, 463 (CCPA 1982). However, a
mere statement from the inventor or a joint inventor may not be
sufficient where there is evidence to the contrary. See Ex parte
Kroger, 218 USPQ 370 (Bd. App. 1982) (rejection affirmed
notwithstanding declarations by the alleged actual inventors as to
their inventorship in view of a nonapplicant author submitting a letter
declaring the nonapplicant author's inventorship). This is similar to
the current process for disqualifying a publication as not being by
"others" discussed in MPEP § 2132.01, except that 35 U.S.C.
102(b)(1) requires only that the disclosure be by the inventor or a
joint inventor.
Section 1.130(c) as proposed pertains to affidavits or declarations
under § 1.130(a)(1) in the situation in which the disclosure on
which the rejection is based is not by the inventor or a joint
inventor, and thus the applicant or patent owner is attempting to
overcome the rejection by showing an earlier public disclosure of the
subject matter on which the rejection is based by the inventor or a
joint inventor. Section 1.130(c) as proposed provides that in this
situation the affidavit or declaration must identify and provide the
date of the earlier disclosure of the subject matter by the inventor or
a joint inventor and provide a satisfactory showing that the inventor
or a joint inventor is the inventor of the subject matter of the
earlier disclosure. Section 1.130(c) as proposed also provides that if
the earlier disclosure was a printed publication, the affidavit or
declaration must be accompanied by a copy of the printed publication.
Section 1.130(c) as proposed further provides that if the earlier
disclosure was not a printed publication, the affidavit or declaration
must describe the disclosure with sufficient detail and particularity
to determine that the disclosure is a public disclosure of the subject
matter on which the rejection is based. The Office needs these details
to determine not only whether the inventor is entitled to disqualify
the disclosure under 35 U.S.C. 102(b), but also because if the
rejection is based upon a U.S. patent application publication or WIPO
published application of another application and such other application
is also pending before the Office, this prior disclosure may be prior
art under 35 U.S.C. 102(a) to the other application and the Office may
need this information to avoid granting two patents on the same
invention.
Section 1.130(d) as proposed pertains to affidavits or declarations
under § 1.130(a)(2) in the situation in which the disclosure on
which the rejection is based was by a party who obtained the subject
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matter disclosed directly or indirectly from the inventor or a joint
inventor. Section 1.130(d) as proposed provides that if the disclosure
on which the rejection is based is by a party who obtained the subject
matter disclosed directly or indirectly from the inventor, an affidavit
or declaration under § 1.130(a)(2) (alleging derivation) must
provide a satisfactory showing that the inventor or a joint inventor is
the inventor of the subject matter of the disclosure and directly or
indirectly communicated the subject matter of the disclosure to the
party. Specifically, the applicant or patent owner must show that a
named inventor actually invented the subject matter of the disclosure.
See In re Facius, 408 F.2d 1396, 1407 (CCPA 1969). The applicant or
patent owner must also show a direct or indirect communication of the
subject matter of the disclosure to the party sufficient to enable one
of ordinary skill in the art to make the subject matter of the claimed
invention. See Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d
1573, 1577 (Fed. Cir. 1997). This is similar to the current process for
disqualifying a publication as being derived from the inventor
discussed in MPEP § 2137.
Section 1.130(e) as proposed pertains to affidavits or declarations
under § 1.130(a)(2) in the situation in which the disclosure on
which the rejection is based is not by a party who obtained the subject
matter disclosed directly or indirectly from the inventor or a joint
inventor, and thus the applicant or patent owner is attempting to
overcome the rejection by showing an earlier public disclosure of the
subject matter on which the rejection is based by a party who obtained
the subject matter disclosed directly or indirectly from the inventor
or a joint inventor. Section 1.130(e) as proposed provides that in this
situation an affidavit or declaration under § 1.130(a)(2) must
identify and provide the date of the earlier disclosure of the subject
matter by the party who obtained the subject matter disclosed directly
or indirectly from the inventor or a joint inventor and must also
provide a satisfactory showing that the inventor or a joint inventor is
the inventor of the subject matter of the earlier disclosure and
directly or indirectly communicated the subject matter of the
disclosure to the party. Section 1.130(e) as proposed also provides
that if the earlier disclosure was a printed publication, the affidavit
or declaration must be accompanied by a copy of the printed
publication. Section 1.130(c) as proposed further provides that if the
earlier disclosure was not a printed publication, the affidavit or
declaration must describe the disclosure with sufficient detail and
particularity to determine that the disclosure is a public disclosure
of the subject matter on which the rejection is based. This is the same
requirement as in § 1.130(c).
Section 1.130 as proposed does not contain a provision that
"[o]riginal exhibits of drawings or records, or photocopies thereof,
must accompany and form part of the affidavit or declaration or their
absence must be satisfactorily explained" (cf. § 1.131(b)),
because in some situations an affidavit or declaration under § 1.130
does not necessarily need to be accompanied by such exhibits
(e.g., a statement by the inventor may be sufficient). However, in
situations where evidence is required, such exhibits must accompany an
affidavit or declaration under § 1.130. In addition, an affidavit
or declaration under § 1.130 must be accompanied by any exhibits
that the applicant or patent owner wishes to rely upon.
Section 1.130(f) as proposed provides that the provisions of
§ 1.130 are not available if the rejection is based upon a disclosure
made more than one year before the effective filing date of the claimed
invention. This provision is because a disclosure made more than one
year before the effective filing date of the claimed invention is prior
art under 35 U.S.C. 102(a)(1), and may not be disqualified under 35
U.S.C. 102(b)(1). Note that the provisions of § 1.130 are available
to establish that a rejection under 35 U.S.C. 102(a)(2) is based on an
application or patent that was effectively filed more than one year
before the effective filing date of the application under examination,
but not publicly disclosed more than one year before such effective
filing date, where the subject matter disclosed was obtained directly
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or indirectly from the inventor or a joint inventor. As stated
previously, if the application or patent was published more than one
year before the effective filing date of the application under
examination, the applicant would not be able to remove the reference as
prior art under 35 U.S.C. 102(a)(1).
Section 1.130(f) as proposed also provides that the Office may
require the applicant to file a petition for a derivation proceeding
pursuant to § 42.401 et seq. of this title if the rejection is
based upon a U.S. patent or U.S. patent application publication of a
patented or pending application naming another inventor and the patent
or pending application claims an invention that is the same or
substantially the same as the applicant's claimed invention. Thus, the
Office would not require the applicant to file a petition for a
derivation proceeding if the rejection is based upon a disclosure other
than a U.S. patent or U.S. patent application publication (such as
nonpatent literature or a foreign patent document), and would not
require the applicant to file a petition for a derivation proceeding if
the rejection is based upon a U.S. patent or U.S. patent application
and the patent or pending application did not claim an invention that
is the same or substantially the same as the applicant's claimed
invention.
Section 1.130(g) as proposed provides that the provisions of
§ 1.130 apply to applications for patent, and to any patent issuing
thereon, that is subject to 35 U.S.C. 102 as amended by the AIA.
Section 1.131: The title of § 1.131 is proposed to be amended
to also cover the provisions of current § 1.130.
Section 1.131(a) is proposed to be amended to refer to 35 U.S.C.
102(e) as 35 U.S.C. 102(e) in effect on March 15, 2013.
Section 1.131(b) is proposed to be amended to provide that the
showing of facts provided for in § 1.131(b) is applicable to an
oath or declaration under § 1.131(a).
Section 1.131(c) is proposed to be added to include the current
provisions of § 1.130, but revised to refer to 35 U.S.C. 102(b) as
35 U.S.C. 102(b) in effect on March 15, 2013, and to refer to 35 U.S.C.
104 as 35 U.S.C. 104 in effect on March 15, 2013.
Section 1.131(d) is proposed to be added to provide that the
provisions of § 1.131 apply to applications for patent, and to any
patent issuing thereon, that contains, or contained at any time: (1) A
claim to a claimed invention that has an effective filing date as
defined in 35 U.S.C. 100(i) that is before March 16, 2013; or (2) a
specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or
application that contains, or contained at any time, a claim to a
claimed invention that has an effective filing date as defined in 35
U.S.C. 100(i) that is before March 16, 2013.
Section 1.131(e) is proposed to be added to provide that, in an
application for patent to which the provisions of § 1.130 apply,
and to any patent issuing thereon, the provisions of § 1.131 are
applicable only with respect to a rejection under 35 U.S.C. 102(g) in
effect on March 15, 2013. Section 1.130(g) as proposed provides that
the provisions of § 1.130 apply to applications for patent, and to
any patent issuing thereon, that is subject to 35 U.S.C. 102 as amended
by the AIA. The date of invention is not relevant under the 35 U.S.C.
102 as amended by the AIA. Thus, in an application for patent to which
the provisions of § 1.130 apply, and to any patent issuing thereon,
a prior art disclosure under 35 U.S.C. 102 as amended by the AIA could
not be disqualified or antedated under the provisions of § 1.131 by
showing that the inventor previously invented the claimed subject
matter.
Sections 1.293 through 1.297: The AIA repeals the provisions of 35
U.S.C. 157 pertaining to statutory invention registrations. Thus, the
statutory invention registration provisions of §§ 1.293 through
1.297 are proposed to be removed. The Office would also amend the rules
of practice (e.g., §§ 1.17, 1.53, 1.84, 1.103, and 1.104) to
delete any reference to a statutory invention registration.
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Section 1.321: Section 1.321(d) is proposed to be amended to change
35 U.S.C. 103(c) to 35 U.S.C. 102(c) to be consistent with the changes
to 35 U.S.C. 102 and 103 as amended by the AIA.
Rulemaking Considerations
A. Administrative Procedure Act: The changes being proposed in this
notice do not change the substantive criteria of patentability. These
proposed changes involve rules of agency practice and procedure and/or
interpretive rules. See Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690
(DC 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, is publishing these proposed changes as it seeks the benefit
of the public's views on the Office's proposed implementation of these
provisions 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.
Nevertheless, 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 proposed in this notice will not
have a significant economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b). As discussed previously, the Office is
proposing the following changes to address the examination issues
raised by the changes in section 3 of the AIA.
The Office is providing for the submission of affidavits or
declarations showing that: (1) A disclosure upon which a claim
rejection is based was by the inventor or joint inventor or by a party
who obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor; or (2) there was a prior public
disclosure by the inventor or a joint inventor or another who obtained
the subject matter disclosed directly or indirectly from the inventor
or a joint inventor of an application. The requirements of these
proposed provisions are comparable to the current requirements for
affidavits and declarations under 37 CFR 1.131 and 1.132 for an
applicant to show that a prior art disclosure is the applicant's own
work (see case law cited in MPEP § 2132.01) or that a disclosure
was derived from the applicant (see case law cited in MPEP § 2137).
In addition, the changes proposed in this notice would not result in
additional small entities being subject to the need to submit such an
affidavit or declaration.
The Office is also proposing to require that the certified copy of
the foreign application be filed 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. An applicant is currently
required to file the certified copy of the foreign application when
deemed necessary by the examiner, but no later than the date the patent
is granted (37 CFR 1.55(a)). The proposed time period of four months
from the actual filing date of the application or sixteen months from
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the filing date of the prior foreign application should not have a
significant economic impact as sixteen months from the filing date of
the prior foreign application is the international norm for when the
certified copy of the foreign application needs to be filed in an
application (PCT Rule 17). Based upon the data in the Office's Patent
Application Locating and Monitoring (PALM) system, 354,248 (98,902
small entity) nonprovisional applications were filed in FY 2011. Of
these, 69,733 (7,943 small entity) nonprovisional applications claimed
the benefit of a foreign priority application, and 65,900 (15,031 small
entity) nonprovisional applications resulted from the entry of an
international application into the national stage.
The Office is also proposing the following requirements for
nonprovisional applications filed on or after March 16, 2013, that
claim the benefit of the filing date of a foreign, provisional, or
nonprovisional application filed prior to March 16, 2013: (1) If such a
nonprovisional application contains at any time a claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
the applicant must provide a statement to that effect within the later
of four months from the actual filing date of the later-filed
application, four months from the date of entry into the national stage
in an international application, sixteen months from the filing date of
the prior-filed application, or the date that a first claim to a
claimed invention that has an effective filing date on or after March
16, 2013, is presented in the application; and (2) if such a
nonprovisional application does not contain a claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
but discloses subject matter not also disclosed in the foreign,
provisional, or nonprovisional application, the applicant must provide
a statement to that effect within the later of four months from the
actual filing date of the later-filed application, four months from the
date of entry into the national stage in an international application,
or sixteen months from the filing date of the prior-filed application.
Based upon the data in the Office's PALM system, of the 354,248
(98,902 small entity) nonprovisional applications filed in FY 2011,
11,557 (6,833 small entity) nonprovisional applications were identified
as continuation-in-part applications, 47,380 (12,444 small entity)
nonprovisional applications were identified as continuation
applications, 21,943 (4,934 small entity) nonprovisional applications
were identified as divisional applications, and 55,492 (27,367 small
entity) nonprovisional applications claimed the benefit of provisional
application. As discussed above, 69,733 (7,943 small entity)
nonprovisional applications claimed the benefit of a foreign priority
application, and 65,900 (15,031 small entity) nonprovisional
applications resulted from the entry of an international application
into the national stage. The Office's experience is that the majority
of nonprovisional applications that claim the benefit of the filing
date of a foreign, provisional, or nonprovisional application do not
disclose or claim subject matter not also disclosed in the foreign,
provisional, or nonprovisional application, but the Office generally
makes such determinations only when necessary to the examination of the
nonprovisional application. See, e.g., MPEP § 201.08 ("Unless the
filing date of the earlier nonprovisional application is actually
needed, for example, in the case of an interference or to overcome a
reference, there is no need for the Office to make a determination as
to whether the requirement of 35 U.S.C. 120, that the earlier
nonprovisional application discloses the invention of the second
application in the manner provided by the first paragraph of 35 U.S.C.
112, is met and whether a substantial portion of all of the earlier
nonprovisional application is repeated in the second application in a
continuation-in-part situation"). In any event, Office staff with
experience and expertise in a wide range of patent prosecution matters
as patent practitioners estimate that this will require, on average, an
additional two hours for a practitioner who drafted the later-filed
application (including the claims) and is familiar with the prior
foreign, provisional, or nonprovisional application.
Accordingly, the changes proposed in this notice will not have a
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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 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).
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.), 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 United
States Senate, the United States 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
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1385 CNOG 1397 |
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).
L. Unfunded Mandates Reform Act of 1995: The changes set forth 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.
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: 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 Office consider the impact of
paperwork and other information collection burdens imposed on the
public. 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. 3501-3549).
The collection of information involved in this notice has been
submitted to OMB under OMB control number 0651-00xx. The collection of
information submitted to OMB under OMB control number 0651-00xx also
includes information collections (e.g., affidavits and declarations
under 37 CFR 1.130, 1.131, and 1.132) previously approved and currently
being reviewed under OMB control number 0651-0031. The proposed
collection will be available at OMB's Information Collection Review Web
site (www.reginfo.gov/public/do/PRAMain).
Title of Collection: Matters Related to First Inventor to File.
OMB Control Number: 0651-00xx.
Needs and Uses: This information collection is necessary so that
patent applicants and/or patentees may: (1) Provide a statement if a
nonprovisional application filed on or after March 16, 2013, claims the
benefit of the filing date of a foreign, provisional, or nonprovisional
application filed prior to March 16, 2013, and also contains, or
contained at any time, a claim to a claimed invention that has an
effective filing date on or after March 16, 2013; (2) provide a
statement if a nonprovisional application filed on or after March 16,
2013, claims the benefit of the filing date of a foreign, provisional,
or nonprovisional application filed prior to March 16, 2013, does not
contain a claim to a claimed invention that has an effective filing
date on or after March 16, 2013, but discloses subject matter not also
disclosed in the foreign, provisional, or nonprovisional application;
(3) identify the inventor, and ownership on the effective filing date,
of each claimed invention in an application or patent with more than
one named inventor, when necessary for purposes of an Office
proceeding; and (4) show that a disclosure was by the inventor or joint
inventor, or was by a party who obtained the subject matter from the
inventor or a joint inventor, or that there was a prior public
disclosure by the inventor or a joint inventor, or by a party who
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obtained the subject matter from the inventor or a joint inventor.
The Office will use the statement that a nonprovisional application
filed on or after March 16, 2013, that claims the benefit of the filing
date of a foreign, provisional, or nonprovisional application filed
prior to March 16, 2013, contains, or contained at any time, a claim to
a claimed invention that has an effective filing date on or after March
16, 2013, to readily determine whether the nonprovisional application
is subject to the changes to 35 U.S.C. 102 and 103 in the AIA. The
Office will also use the statement that a nonprovisional application
filed on or after March 16, 2013, that claims the benefit of the filing
date of a foreign, provisional, or nonprovisional application filed
prior to March 16, 2013, does not contain a claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
but discloses subject matter not also disclosed in the foreign, provisional,
or nonprovisional application (or lack of such a statement) to readily
determine whether the nonprovisional application is subject to the changes
to 35 U.S.C. 102 and 103 in the AIA. The Office will use the identification
of the inventor, and ownership on the effective filing date, when it is
necessary to determine whether a U.S. patent or U.S. patent application
publication resulting from another nonprovisional application qualifies
as prior art under 35 U.S.C. 102(a)(2). The Office will use information
concerning whether a disclosure was by the inventor or joint inventor,
or was by a party who obtained the subject matter from the inventor or
a joint inventor, or that there was a prior public disclosure by the
inventor or a joint inventor, or by a party who obtained the subject
matter from the inventor or a joint inventor, to determine whether the
disclosure qualifies as prior art under 35 U.S.C. 102(a)(1) or (a)(2).
Method of Collection: By mail, facsimile, hand delivery, or
electronically to the Office.
Affected Public: Individuals or households; businesses or other
for-profits; and not-for-profit institutions.
Estimated Number of Respondents: 189,150 responses per year.
Estimated Time per Response: The Office estimates that the
responses in this collection will take the public from 1 to 10 hours.
Specifically, the Office estimates that: (1) Preparing an affidavit or
declaration under 37 CFR 1.130, 1.131, or 1.132 will require, on
average, 10 hours; (2) identifying under 37 CFR 1.55(a)(4), 1.78(a)(3),
or 1.78(c)(2) whether there is any claim or subject matter not
disclosed in the prior foreign, provisional, or nonprovisional
application will require, on average, 2 hours; and (3) identifying
under 37 CFR 1.110 inventorship and ownership of the subject matter of
claims will require, on average, 2 hours.
Estimated Total Annual Respondent Burden Hours: 778,300 hours per
year.
Estimated Total Annual Respondent Cost Burden: $288,749,300 per
year.
The Office is soliciting comments to: (1) Evaluate whether the
proposed information requirement is necessary for the proper
performance of the functions of the Office, including whether the
information will have practical utility; (2) evaluate the accuracy of
the Office's estimate of the burden; (3) enhance the quality, utility,
and clarity of the information to be collected; and (4) minimize the
burden of collecting the information on those who are to respond,
including by using appropriate automated, electronic, mechanical, or
other technological collection techniques or other forms of information
technology.
Please send comments on or before September 24, 2012 to Mail Stop
Comments - Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA, 22313-1450, marked to the attention of Raul Tamayo, Legal Advisor,
Office of Patent Legal Administration, Office of the Deputy
Commissioner for Patent Examination Policy. Comments should also be
submitted to the Office of Information and Regulatory Affairs, Office
of Management and Budget, New Executive Office Building, Room 10202,
725 17th Street NW., Washington, DC 20503, Attention: Desk Officer for
the Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required
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to respond to, nor shall a person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act, unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of information,
Inventions and patents, Reporting and recordkeeping requirements, Small
businesses.
For the reasons stated in the preamble, the USPTO proposes to amend
1 CFR part 37 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 1.9 is amended by adding paragraphs (d), (e) and (f) to
read as follows:
§ 1.9 Definitions.
* * * * *
(d)(1) The term inventor or inventorship as used in this chapter
means the individual or, if a joint invention, the individuals
collectively who invented or discovered the subject matter of the
invention.
(2) The term joint inventor or coinventor as used in this chapter
means any one of the individuals who invented or discovered the subject
matter of a joint invention.
(e) The term joint research agreement as used in this chapter means
a written contract, grant, or cooperative agreement entered into by two
or more persons or entities for the performance of experimental,
developmental, or research work in the field of the claimed invention.
(f) The term claimed invention as used in this chapter means the
subject matter defined by a claim in a patent or an application for a
patent.
* * * * *
3. Section 1.53 is amended by revising paragraph (j) to read as
follows:
§ 1.53 Application number, filing date, and completion of
application.
* * * * *
(j) Filing date of international application. The filing date of an
international application designating the United States of America is
treated as the filing date in the United States of America under PCT
Article 11(3).
4. Section 1.55 is amended by revising paragraphs (a), (c), and
(d), and by adding paragraphs (e) and (f) to read as follows:
§ 1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the
benefit of the filing date of one or more prior foreign applications
under the conditions specified in 35 U.S.C. 119(a) through (d) and (f),
172, and 365(a) and (b).
(1) The nonprovisional application must be filed not later than
twelve months after the date on which the foreign application was
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filed. This twelve-month period is subject to 35 U.S.C. 21(b) and
§ 1.7(a).
(2) In an original application filed under 35 U.S.C. 111(a), the
claim for priority as well as a certified copy of the foreign
application must both be filed 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. The claim for priority must be
presented in an application data sheet (§ 1.76(b)(6)). The claim
must identify the foreign application for which priority is claimed, as
well as any foreign application for the same subject matter 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:
(i) A design application; or
(ii) An application filed before November 29, 2000.
(3) In an application that entered the national stage from an
international application after compliance with 35 U.S.C. 371, the
claim for priority must be made and a certified copy of the foreign
application filed within the time limit set forth in the PCT and the
Regulations under the PCT.
(4) If a nonprovisional application filed on or after March 16,
2013, claims the benefit of the filing date of a foreign application
filed prior to March 16, 2013, and also contains, or contained at any
time, a claim to a claimed invention that has an effective filing date
on or after March 16, 2013, the applicant must provide a statement to
that effect within the later of four months from the actual filing date
of the application, four months from the date of entry into the
national stage as set forth in § 1.491 in an international
application, sixteen months from the filing date of the prior foreign
application, or the date that a first claim to a claimed invention that
has an effective filing date on or after March 16, 2013, is presented
in the application. In addition, if a nonprovisional application filed
on or after March 16, 2013, claims the benefit of the filing date of a
foreign application filed prior to March 16, 2013, does not contain a
claim to a claimed invention that has an effective filing date on or
after March 16, 2013, but discloses subject matter not also disclosed
in the foreign application, the applicant must provide a statement to
that effect within the later of four months from the actual filing date
of the later-filed application, four months from the date of entry into
the national stage as set forth in 1.491 in an international
application, or sixteen months from the filing date of the prior
foreign application.
* * * * *
(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)
through (d) or (f), or 365(a) or (b), not presented in an application
data sheet (§ 1.76(b)(6)) within the time period provided by
paragraph (a)(2) of this section is considered to have been waived. If
a claim for priority under 35 U.S.C. 119(a) through (d) or (f), or
365(a) or (b) is presented after the time period provided by paragraph
(a)(2) 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) through
(d) or (f), or 365(a) or (b), must be accompanied by:
(1) The claim under 35 U.S.C. 119(a) through (d) or (f), or 365(a)
or (b), and this section to the prior foreign application, unless
previously submitted;
(2) A certified copy of the foreign application, unless previously
submitted;
(3) The surcharge set forth in § 1.17(t); and
(4) A statement that the entire delay between the date the claim
was due under paragraph (a) of this section and the date the claim was
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filed was unintentional. The Director may require additional information
where there is a question whether the delay was unintentional.
(d)(1) The requirement in this section for the certified copy of
the foreign application will be considered satisfied if:
(i) The applicant files a request, in a separate document, that the
Office obtain a copy of the foreign application from a foreign
intellectual property office participating with the Office in a
bilateral or multilateral priority document exchange agreement
(participating foreign intellectual property office (see § 1.14 (h)(1));
(ii) The foreign application is identified in an application data
sheet (§ 1.76(a)(6)); and
(iii) The copy of the foreign application is received by the Office
within the period set forth in paragraph (a) of this section or by such
later time as may be set by the Office.
(2) If the foreign application was filed at a foreign intellectual
property office that is not participating with the Office in a priority
document exchange agreement, but a copy of the foreign application was
filed in an application subsequently filed in a participating foreign
intellectual property office, the request under paragraph (d)(1)(i) of
this section must identify the participating foreign intellectual
property office and the application number of the subsequent
application in which a copy of the foreign application was filed.
(e)(1) The claim for priority and the certified copy of the foreign
application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any
event, be filed within the pendency of the application and before the
patent is granted. If the claim for priority or the certified copy of
the foreign application is filed after the date the issue fee is paid,
it must be accompanied by the processing fee set forth in § 1.17(i), but
the patent will not include the priority claim unless corrected by a
certificate of correction under 35 U.S.C. 255 and § 1.323.
(2) The Office may require that the claim for priority and the
certified copy of the foreign application be filed earlier than
provided in paragraph (a) or (e)(1) of this section:
(i) When the application is involved in an interference (see § 41.202
of this title) or derivation (see part 42 of this title) proceeding;
(ii) When necessary to overcome the date of a reference relied upon
by the examiner; or
(iii) When deemed necessary by the examiner.
(3) An English language translation of a non-English language
foreign application is not required except:
(i) When the application is involved in an interference (see § 41.202
of this title) or derivation (see part 42 of this title) proceeding;
(ii) When necessary to overcome the date of a reference relied upon
by the examiner; or
(iii) When specifically required by the examiner.
(4) If an English language translation of a non-English language
foreign application is required, it must be filed together with a
statement that the translation of the certified copy is accurate.
(f) The time periods set forth in this section are not extendable.
5. Section 1.71 is amended by revising paragraph (g)(1) to read as
follows:
1.71 Detailed description and specification of the invention.
* * * * *
(g)(1) The specification may disclose or be amended to disclose the
names of the parties to a joint research agreement (35 U.S.C. 102(c)(3)).
* * * * *
6. Section 1.77 is amended by redesignating paragraphs (b)(6)
through (b)(12) as paragraphs (b)(7) through (b)(13) and adding a new
paragraph (b)(6) to read as follows:
§ 1.77 Arrangement of application elements.
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* * * * *
(b) * * *
(6) Statement regarding prior disclosures by the inventor or a
joint inventor.
* * * * *
7. Section 1.78 is revised to read as follows:
§ 1.78 Claiming benefit of earlier filing date and cross-references to
other applications.
(a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed
provisional application. A nonprovisional application, other than for a
design patent, or an international application designating the United
States of America may claim the benefit of one or more prior-filed
provisional applications under the conditions set forth in 35 U.S.C.
119(e) and paragraph (a) of this section.
(1) The nonprovisional application or international application
designating the United States of America must be filed not later than
twelve months after the date on which the provisional application was
filed. This twelve-month period is subject to 35 U.S.C. 21(b) and § 1.7(a).
(2) Each prior-filed provisional application must name as the
inventor or a joint inventor an inventor named in the later-filed
application. In addition, each prior-filed provisional application must
be entitled to a filing date as set forth in § 1.53(c) and the
basic filing fee set forth in § 1.16(d) must have been paid for
such provisional application within the time period set forth in § 1.53(g).
(3) Any nonprovisional application or international application
designating the United States of America that claims the benefit of one
or more prior-filed provisional applications must contain, or be
amended to contain, a reference to each such prior-filed provisional
application, identifying it by the provisional application number
(consisting of series code and serial number). 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)). If a nonprovisional application filed on or after March
16, 2013, claims the benefit of the filing date of a provisional
application filed prior to March 16, 2013, and also contains, or
contained at any time, a claim to a claimed invention that has an
effective filing date on or after March 16, 2013, the applicant must
provide a statement to that effect within the later of four months from
the actual filing date of the later-filed application, four months from
the date of entry into the national stage as set forth in § 1.491
in an international application, sixteen months from the filing date of
the prior-filed provisional application, or the date that a first claim
to a claimed invention that has an effective filing date on or after
March 16, 2013, is presented in the application. In addition, if a
nonprovisional application filed on or after March 16, 2013, claims the
benefit of the filing date of a provisional application filed prior to
March 16, 2013, does not contain a claim to a claimed invention that
has an effective filing date on or after March 16, 2013, but discloses
subject matter not also disclosed in the provisional application, the
applicant must provide a statement to that effect within the later of
four months from the actual filing date of the later-filed application,
four months from the date of entry into the national stage as set forth
in § 1.491 in an international application, or sixteen months from
the filing date of the prior-filed provisional application.
(4) The reference required by paragraph (a)(3) of this section must
be submitted during the pendency of the later-filed application. If the
later-filed application is an application filed under 35 U.S.C. 111(a),
this reference must also be submitted within the later of four months
from the actual filing date of the later-filed application or sixteen
months from the filing date of the prior-filed provisional application.
If the later-filed application is a nonprovisional application entering
the national stage from an international application under 35 U.S.C.
371, this reference must also be submitted within the later of four
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months from the date on which the national stage commenced under 35
U.S.C. 371(b) or (f) in the later-filed international application or
sixteen months from the filing date of the prior-filed provisional
application. Except as provided in paragraph (b) of this section,
failure to timely submit the reference is considered a waiver of any
benefit under 35 U.S.C. 119(e) of the prior-filed provisional
application. The time periods in this paragraph do not apply if the
later-filed application is:
(i) An application filed under 35 U.S.C. 111(a) before November 29,
2000; or
(ii) An international application filed under 35 U.S.C. 363 before
November 29, 2000.
(5) If the prior-filed provisional application was filed in a
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 the translation and the statement in the
prior-filed provisional application. If the notice is mailed in a
pending nonprovisional application, a timely reply to such a notice
must include either a confirmation that the translation and statement
were filed in the provisional application or an application data sheet
withdrawing the benefit claim to avoid abandonment of the
nonprovisional application. The translation and statement may be filed
in the provisional application, even if the provisional application has
become abandoned.
(b) Delayed claims under 35 U.S.C. 119(e) for the benefit of a
prior-filed provisional application. If the reference required by 35
U.S.C. 119(e) and paragraph (a)(3) of this section is presented in a
nonprovisional application after the time period provided by paragraph
(a)(4) of this section, the claim under 35 U.S.C. 119(e) for the
benefit of a prior-filed provisional application may be accepted if
submitted during the pendency of the later-filed application and if the
reference identifying the prior-filed application by provisional
application number was unintentionally delayed. A petition to accept an
unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of
a prior-filed provisional application must be accompanied by:
(1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3)
of this section to the prior-filed provisional application, unless
previously submitted;
(2) The surcharge set forth in § 1.17(t); and
(3) A statement that the entire delay between the date the claim
was due under paragraph (a)(4) of this section and the date the claim
was filed was unintentional. The Director may require additional
information where there is a question whether the delay was
unintentional.
(c) Claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a
prior-filed nonprovisional or international application. A
nonprovisional application (including an international application
entering the national stage under 35 U.S.C. 371) may claim the benefit
of one or more prior-filed copending nonprovisional applications or
international applications designating the United States of America
under the conditions set forth in 35 U.S.C. 120 and paragraph (c) of
this section.
(1) Each prior-filed application must name as the inventor or a
joint inventor an inventor named in the later-filed application. In
addition, each prior-filed application must either be:
(i) An international application entitled to a filing date in
accordance with PCT Article 11 and designating the United States of
America; or
(ii) A nonprovisional application under 35 U.S.C. 111(a) that is
entitled to a filing date as set forth in § 1.53(b) or § 1.53(d)
for which the basic filing fee set forth in § 1.16 has been paid within
the pendency of the application.
(2) Except for a continued prosecution application filed under
§ 1.53(d), any nonprovisional application, or international
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application designating the United States of America, that claims the
benefit of one or more prior-filed nonprovisional applications or
international applications designating the United States of America
must contain or be amended to contain a reference to each such prior-
filed application, identifying it by application number (consisting of
the series code and serial number) or international application number
and international filing date. 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)). The
reference must also identify the relationship of the applications,
namely, whether the later-filed application is a continuation,
divisional, or continuation-in-part of the prior-filed nonprovisional
application or international application. If a nonprovisional
application filed on or after March 16, 2013, claims the benefit of the
filing date of a nonprovisional application filed prior to March 16,
2013, and also contains, or contained at any time, a claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
the applicant must provide a statement to that effect within the later
of four months from the actual filing date of the later-filed
application, four months from the date of entry into the national stage
as set forth in § 1.491 in an international application, sixteen
months from the filing date of the prior-filed nonprovisional
application, or the date that a first claim to a claimed invention that
has an effective filing date on or after March 16, 2013, is presented
in the application. In addition, if a nonprovisional application filed
on or after March 16, 2013, claims the benefit of the filing date of a
nonprovisional application filed prior to March 16, 2013, does not
contain a claim to a claimed invention that has an effective filing
date on or after March 16, 2013, but discloses subject matter not also
disclosed in the prior-filed nonprovisional application, the applicant
must provide a statement to that effect within the later of four months
from the actual filing date of the later-filed application, four months
from the date of entry into the national stage as set forth in
§ 1.491 in an international application, or sixteen months from the
filing date of the prior-filed nonprovisional application.
(3) The reference required by 35 U.S.C. 120 and paragraph (c)(2) of
this section must be submitted during the pendency of the later-filed
application. If the later-filed application is an application filed
under 35 U.S.C. 111(a), this reference must also be submitted within
the later of four months from the actual filing date of the later-filed
application or sixteen months from the filing date of the prior-filed
application. If the later-filed application is a nonprovisional
application entering the national stage from an international
application under 35 U.S.C. 371, this reference must also be submitted
within the later of four months from the date on which the national
stage commenced under 35 U.S.C. 371(b) or (f) in the later-filed
international application or sixteen months from the filing date of the
prior-filed application. Except as provided in paragraph (d) of this
section, failure to timely submit the reference required by 35 U.S.C.
120 and paragraph (c)(2) of this section is considered a waiver of any
benefit under 35 U.S.C. 120, 121, or 365(c) to the prior-filed
application. The time periods in this paragraph do not apply if the
later-filed application is:
(i) An application for a design patent;
(ii) An application filed under 35 U.S.C. 111(a) before November
29, 2000; or
(iii) An international application filed under 35 U.S.C. 363 before
November 29, 2000.
(4) The request for a continued prosecution application under
§ 1.53(d) is the specific reference required by 35 U.S.C. 120 to the
prior-filed application. The identification of an application by
application number under this section is the identification of every
application assigned that application number necessary for a specific
reference required by 35 U.S.C. 120 to every such application assigned
that application number.
(5) Cross-references to other related applications may be made when
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appropriate (see § 1.14), but cross-references to applications for
which a benefit is not claimed under title 35, United States Code, must
not be included in an application data sheet (§ 1.76(b)(5)).
(d) Delayed claims under 35 U.S.C. 120, 121, or 365(c) for the
benefit of a prior-filed nonprovisional application or international
application. If the reference required by 35 U.S.C. 120 and paragraph
(c)(2) of this section is presented after the time period provided by
paragraph (c)(3) of this section, the claim under 35 U.S.C. 120, 121,
or 365(c) for the benefit of a prior-filed copending nonprovisional
application or international application designating the United States
of America may be accepted if the reference identifying the prior-filed
application by application number or international application number
and international filing date was unintentionally delayed. A petition
to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or
365(c) for the benefit of a prior-filed application must be accompanied
by:
(1) The reference required by 35 U.S.C. 120 and paragraph (c)(2) of
this section to the prior-filed application, unless previously
submitted;
(2) The surcharge set forth in § 1.17(t); and
(3) A statement that the entire delay between the date the claim
was due under paragraph (c)(3) of this section and the date the claim
was filed was unintentional. The Director may require additional
information where there is a question whether the delay was
unintentional.
(e) Applications containing conflicting claims. Where two or more
applications filed by the same applicant contain conflicting claims,
elimination of such claims from all but one application may be required
in the absence of good and sufficient reason for their retention during
pendency in more than one application.
(f) Applications or patents under reexamination naming different
inventors and containing patentably indistinct claims. 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 on the effective
filing date of the later claimed invention, the Office may require the
assignee to state whether the claimed inventions were commonly owned or
subject to an obligation of assignment to the same person on the
effective filing date of the later claimed invention. Even if the
claimed inventions were commonly owned, or subject to an obligation of
assignment to the same person, on the effective filing date of the
later claimed invention, 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.
(g) Time periods not extendable. The time periods set forth in this
section are not extendable.
8. Section 1.104 is amended by revising paragraphs (c)(4) and
(c)(5) and adding a new paragraph (c)(6) to read as follows:
§ 1.104 Nature of examination.
(c) * * *
(4)(i) Subject matter that qualifies as prior art under 35 U.S.C.
102(a)(2) and a claimed invention will be treated as commonly owned for
purposes of 35 U.S.C. 102(b)(2)(C) if the applicant provides a
statement that the prior art and the claimed invention, not later than
the effective filing date of the claimed invention, were owned by the
same person or subject to an obligation of assignment to the same
person.
(ii) Subject matter that qualifies as prior art under 35 U.S.C.
102(a)(2) and a claimed invention will be treated as commonly owned for
purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research
agreement under 35 U.S.C. 102(c) if:
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(A) The applicant provides a statement that the prior art was
developed and the claimed invention was made by or on behalf of one or
more parties to a joint research agreement, within the meaning of 35
U.S.C. 100(h) and § 1.9(e), that was in effect on or before the
effective filing date of the claimed invention, and the claimed
invention was made as a result of activities undertaken within the
scope of the joint research agreement; and
(B) The application for patent for the claimed invention discloses
or is amended to disclose the names of the parties to the joint
research agreement.
(5)(i) Subject matter which qualifies as prior art under 35 U.S.C.
102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed
invention in an application or a patent granted on or after December
10, 2004, will be treated as commonly owned for purposes of 35 U.S.C.
103(c) in effect prior to March 16, 2013, if the applicant provides a
statement that the prior art and the claimed invention, at the time the
claimed invention was made, were owned by the same person or subject to
an obligation of assignment to the same person.
(ii) Subject matter which qualifies as prior art under 35 U.S.C.
102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed
invention in an application or a patent granted on or after December
10, 2004, will be treated as commonly owned for purposes of 35 U.S.C.
103(c) in effect prior to March 16, 2013, on the basis of a joint
research agreement under 35 U.S.C. 103(c)(2) in effect prior to March
16, 2013 if:
(A) The applicant provides a statement to the effect that the prior
art and the claimed invention were made by or on behalf of the parties
to a joint research agreement, within the meaning of 35 U.S.C. 100(h)
and § 1.9(e), which was in effect on or before the date the claimed
invention was made, and that the claimed invention was made as a result
of activities undertaken within the scope of the joint research
agreement; and
(B) The application for patent for the claimed invention discloses
or is amended to disclose the names of the parties to the joint
research agreement.
(6) Patents issued prior to December 10, 2004, from applications
filed prior to November 29, 1999, are subject to 35 U.S.C. 103(c) in
effect on November 28, 1999.
* * * * *
9. Section 1.109 is added to read as follows:
§ 1.109 Effective filing date of a claimed invention.
(a) The effective filing date for a claimed invention in a patent
or application for patent, other than in a reissue application or
reissued patent, is the earliest of:
(1) The actual filing date of the patent or the application for the
patent containing a claim to the invention; or
(2) The filing date of the earliest application for which the
patent or application is entitled, as to such invention, to priority to
or the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121,
or 365.
(b) The effective filing date for a claimed invention in a reissue
application or a reissued patent is determined by deeming the claim to
the invention to have been contained in the patent for which reissue
was sought.
10. Section 1.110 is revised to read as follows:
§ 1.110 Inventorship and ownership of the subject matter of individual
claims.
When more than one inventor is named in an application or patent,
the Office may require an applicant or patentee to identify the
inventor, and ownership on the effective filing date, of each claimed
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invention in the application or patent, when necessary for purposes of
an Office proceeding.
11. Section 1.130 is revised to read as follows:
§ 1.130 Affidavit or declaration of attribution, prior disclosure,
or derivation under the Leahy-Smith America Invents Act.
(a) When any claim of an application or a patent under
reexamination is rejected, the applicant or patent owner may submit an
appropriate affidavit or declaration to establish that:
(1) The disclosure on which the rejection is based was by the
inventor or joint inventor, the subject matter disclosed had been
publicly disclosed by the inventor or a joint inventor before the
disclosure of the subject matter on which the rejection is based, or
the subject matter disclosed had been publicly disclosed by the
inventor or a joint inventor before the date the subject matter in the
patent or application on which the rejection is based was effectively
filed; or
(2) The disclosure on which the rejection is based was by a party
who obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor, the subject matter disclosed had been
publicly disclosed by a party who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor before the
disclosure of the subject matter on which the rejection is based, or
the subject matter disclosed had been publicly disclosed by a party who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor before the date the subject matter in the
patent or application on which the rejection is based was effectively
filed.
(b) If the disclosure on which the rejection is based is by the
inventor or a joint inventor, the affidavit or declaration under
paragraph (a)(1) of this section must provide a satisfactory showing
that the inventor or a joint inventor is in fact the inventor of the
subject matter of the disclosure.
(c) If the disclosure on which the rejection is based is not by the
inventor or a joint inventor, the affidavit or declaration under
paragraph (a)(1) of this section must identify and provide the date of
the earlier disclosure of the subject matter by the inventor or a joint
inventor and provide a satisfactory showing that the inventor or a
joint inventor is the inventor of the subject matter of the earlier
disclosure. If the earlier disclosure was a printed publication, the
affidavit or declaration must be accompanied by a copy of the printed
publication. If the earlier disclosure was not a printed publication,
the affidavit or declaration must describe the disclosure with
sufficient detail and particularity to determine that the disclosure is
a public disclosure of the subject matter on which the rejection is
based.
(d) If the disclosure on which the rejection is based is by a party
who obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor, an affidavit or declaration under
paragraph (a)(2) of this section must provide a satisfactory showing
that the inventor or a joint inventor is the inventor of the subject
matter of the disclosure and directly or indirectly communicated the
subject matter of the disclosure to the party.
(e) If the disclosure on which the rejection is based is not by a
party who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor, an affidavit or declaration
under paragraph (a)(2) of this section must identify and provide the
date of the earlier disclosure of the subject matter by the party who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor and also provide a satisfactory showing
that the inventor or a joint inventor is the inventor of the subject
matter of the earlier disclosure and directly or indirectly communicated
the subject matter of the disclosure to the party. If the earlier
disclosure was a printed publication, the affidavit or declaration must
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US PATENT AND TRADEMARK OFFICE |
1385 CNOG 1408 |
be accompanied by a copy of the printed publication. If the earlier
disclosure was not a printed publication, the affidavit or declaration
must describe the disclosure with sufficient detail and particularity
to determine that the disclosure is a public disclosure of the subject
matter on which the rejection is based.
(f) The provisions of this section are not available if the
rejection is based upon a disclosure made more than one year before the
effective filing date of the claimed invention. The Office may require
the applicant to file a petition for a derivation proceeding pursuant
to § 42.401 et seq. of this title if the rejection is based upon a
U.S. patent or U.S. patent application publication of a patented or
pending application naming another inventor and the patent or pending
application claims an invention that is the same or substantially the
same as the applicant's claimed invention.
(g) The provisions of this section apply to applications for
patent, and to any patent issuing thereon, that contain, or contained
at any time:
(1) A claim to a claimed invention that has an effective filing
date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013;
or
(2) A specific reference under 35 U.S.C. 120, 121, or 365(c) to any
patent or application that contains, or contained at any time, a claim
to a claimed invention that has an effective filing date as defined in
35 U.S.C. 100(i) that is on or after March 16, 2013.
12. Section 1.131 is revised to read as follows:
§ 1.131 Affidavit or declaration of prior invention or to disqualify
commonly owned patent or published application as prior art.
(a) When any claim of an application or a patent under
reexamination is rejected, the inventor of the subject matter of the
rejected claim, the owner of the patent under reexamination, or the
party qualified under §§ 1.42 or 1.47, 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 the date that it is effective as a
reference under 35 U.S.C. 102(e) in effect on March 15, 2013. Prior
invention may not be 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:
(1) The rejection is based upon a U.S. patent or U.S. patent
application publication of a pending or patented application to another
or others which claims the same patentable invention as defined in
§ 41.203(a) of this title, in which case an applicant may suggest
an interference pursuant to § 41.202(a) of this title; or
(2) The rejection is based upon a statutory bar.
(b) The showing of facts for an oath or declaration under paragraph
(a) of this section shall be such, in character and weight, as to
establish reduction to practice prior to the effective date of the
reference, or conception of the invention prior to the effective date
of the reference coupled with due diligence from prior to said date to
a subsequent reduction to practice or to the filing of the application.
Original exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their
absence must be satisfactorily explained.
(c) When any claim of an application or a patent under
reexamination is rejected under 35 U.S.C. 103 on a U.S. patent or U.S.
patent application publication which is not prior art under 35 U.S.C.
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1385 CNOG 1409 |
102(b) in effect on March 15, 2013, and the inventions defined by the
claims in the application or patent under reexamination and by the
claims in the patent or published application are not identical but are
not patentably distinct, and the inventions are owned by the same
party, the applicant or owner of the patent under reexamination may
disqualify the patent or patent application publication as prior art.
The patent or patent application publication can be disqualified as
prior art by submission of:
(1) A terminal disclaimer in accordance with § 1.321(c); and
(2) An oath or declaration stating that the application or patent
under reexamination and patent or published application are currently
owned by the same party, and that the inventor named in the application
or patent under reexamination is the prior inventor under 35 U.S.C. 104
in effect on March 15, 2013.
(d) The provisions of this section apply to applications for
patent, and to any patent issuing thereon, that contains, or contained
at any time:
(1) A claim to a claimed invention that has an effective filing
date as defined in 35 U.S.C. 100(i) that is before March 16, 2013; or
(2) A specific reference under 35 U.S.C. 120, 121, or 365(c) to any
patent or application that contains, or contained at any time, a claim
to a claimed invention that has an effective filing date as defined in
35 U.S.C. 100(i) that is before March 16, 2013.
(e) In an application for patent to which the provisions of § 1.130
apply, and to any patent issuing thereon, the provisions of this
section are applicable only with respect to a rejection under 35 U.S.C.
102(g) in effect on March 15, 2013.
§§ 1.293 through 1.297 [Removed]
13. Sections 1.293 through 1.297 are removed.
14. Section 1.321 is amended by revising the introductory text of
paragraph (d) to read as follows:
§ 1.321 Statutory disclaimers, including terminal disclaimers.
* * * * *
(d) A terminal disclaimer, when filed in a patent application or in
a reexamination proceeding to obviate double patenting based upon a
patent or application that is not commonly owned but resulted from
activities undertaken within the scope of a joint research agreement
under 35 U.S.C. 102(c), must:
* * * * *
July 17, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1382 OG 408]