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(306) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
RIN 0651-AB13
Request for Continued Examination Practice and
Changes to Provisional Application Practice
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
revising the rules of practice in patent cases to implement certain
provisions of the American Inventors Protection Act of 1999. These
provisions of the American Inventors Protection Act of 1999: provide for
continued examination of an application for a fee; extend the pendency
of a provisional application if the date that is twelve months after the
filing date of the provisional application falls on Saturday, Sunday, or
a Federal holiday within the District of Columbia; eliminate the
copendency requirement for a nonprovisional application to claim the
benefit of a provisional application; provide for the conversion of a
provisional application to a nonprovisional application; and provide a
prior art exclusion for certain commonly assigned patents.
EFFECTIVE DATE: August 16, 2000.
FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Karin L. Tyson, or
Robert A. Clarke by telephone at (703) 308-6906, or by mail addressed
to: Box Comments--Patents, Commissioner for Patents, Washington, DC
20231, or by facsimile to (703) 872-9411, marked to the attention of
Robert W. Bahr.
SUPPLEMENTARY INFORMATION: The American Inventors Protection Act of 1999
(Title IV of the Intellectual Property and Communications Omnibus Reform
Act of 1999 (S. 1948) as introduced in the 106th Congress on November
17, 1999) was incorporated and enacted into law on November 29, 1999, by
1000(a)(9), Division B, of Pub. L. 106-113, 113 Stat. 1501 (1999).
The American Inventors Protection Act of 1999 contains a number of
changes to title 35, United States Code. The United States Patent and
Trademark Office (Office) published an interim rule revising the rules
of practice to implement the provisions of 4403, 4801, and 4807 of
the American Inventors Protection Act of 1999. See Changes to
Application Examination and Provisional Application Practice, Interim
Rule, 65 FR 14865 (Mar. 20, 2000), 1233 Off. Gaz. Pat. Office 47 (Apr.
11, 2000). This notice adopts final changes to the rules of practice to
implement these provisions of the American Inventors Protection Act of
1999.
Section 4403 of the American Inventors Protection Act of 1999 is
effective on the date six months after the date of enactment of the
American Inventors Protection Act of 1999 (May 29, 2000) and applies to
applications (other than for a design patent) filed on or after June 8,
1995. Section 4801 of the American Inventors Protection Act of 1999 is
effective on the date of enactment of the American Inventors Protection
Act of 1999 (November 29, 1999) and applies to all provisional
applications (with limited exception) filed on or after June 8, 1995.
Section 4807 of the American Inventors Protection Act of 1999 is
effective on the date of enactment of the American Inventors Protection
Act of 1999 (November 29, 1999) and applies to all applications filed on
or after November 29, 1999.
Section 4403 (Continued Examination of Patent Applications): Section
4403 of the American Inventors Protection Act of 1999 amends 35 U.S.C.
132 to state that the Office "shall prescribe regulations to provide for
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the continued examination of applications for patent at the request of
the applicant," and that the Office "may establish appropriate fees for
such continued examinations and shall provide a 50 percent reduction in
such fees for small entities that qualify for reduced fees under [35
U.S.C. 41(h)(1)]." Previously, an applicant had to file a continuing
application (a continuing application under 1.53(b) or a continued
prosecution application under 1.53(d)) to obtain continued
examination of an application for a fee (the application filing fee).
Section 4403 of the American Inventors Protection Act of 1999 will
provide statutory authority for the continued examination of an
application for a fee (to which the small entity reduction will be
applicable) without requiring the applicant to file a continuing
application.
Section 4801 (Provisional Applications): Section 4801(a) of the American
Inventors Protection Act of 1999 amends 35 U.S.C. 111(b)(5) to provide
that "[n]otwithstanding the absence of a claim, upon timely request and
as prescribed by the Director, a provisional application may be treated
as an application filed under [35 U.S.C. 111(a)]" but that if "no such
request is made, the provisional application shall be regarded as
abandoned 12 months after the filing date of such application and shall
not be subject to revival . . . ." Thus, 1.53(c) is amended to
provide both for the conversion of a provisional application (35 U.S.C.
111(b) and 1.53(c)) to a nonprovisional application (35 U.S.C. 111(a)
and 1.53(b)), and for the conversion of a nonprovisional application
(35 U.S.C. 111(a) and 1.53(b)) to a provisional application (35
U.S.C. 111(b) and 1.53(c)).
Section 4801 of the American Inventors Protection Act of 1999 contains
no provision for according the resulting nonprovisional application a
filing date other than the original filing date of the provisional
application. Thus, under the patent term provisions of 35 U.S.C. 154,
the term of a nonprovisional application resulting from the conversion
of a provisional application pursuant to 35 U.S.C. 111(b)(5) will be
measured from the original filing date of the provisional application
(which is the filing date accorded the nonprovisional application
resulting from conversion under 4801 of the American Inventors
Protection Act of 1999). Applicants are strongly cautioned to consider
the patent term implications of converting a provisional application
into a nonprovisional application pursuant to 35 U.S.C. 111(b)(5),
rather than simply filing a nonprovisional application within twelve
months of the provisional application's filing date and claiming the
benefit of the provisional application under 35 U.S.C. 119(e).
Section 4801(b) of the American Inventors Protection Act of 1999 also
amends 35 U.S.C. 119(e) to provide that "[i]f the day that is 12 months
after the filing date of a provisional application falls on a Saturday,
Sunday, or Federal holiday within the District of Columbia, the period
of pendency of the provisional application shall be extended to the next
succeeding secular or business day."
Section 4801(c) of the American Inventors Protection Act of 1999 also
amends 35 U.S.C. 119(e) to eliminate the requirement that a provisional
application be pending on the filing date of the nonprovisional
application for the nonprovisional application to claim the benefit of
the provisional application.
Section 4807 (Prior Art Exclusion): 35 U.S.C. 103 was amended in 1984 to
exclude subject matter developed by another person which qualifies as
prior art only under 35 U.S.C. 102(f) or (g) as prior art under 35
U.S.C. 103 against a claimed invention, provided that the subject matter
and the claimed invention were commonly owned by the same person or
organization or subject to an obligation of assignment to the same
person or organization at the time the claimed invention was made. See
Pub. L. 98-622, 103, 98 Stat. 3384 (1984). Section 4807 of the
American Inventors Protection Act of 1999 amends 35 U.S.C. 103(c) to
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exclude subject matter developed by another person which qualifies as
prior art only under one or more of 35 U.S.C. 102(e), (f), or (g) as
prior art under 35 U.S.C. 103 against a claimed invention, provided that
the subject matter and the claimed invention were commonly owned by the
same person or organization or subject to an obligation of assignment to
the same person or organization at the time the claimed invention was
made. The Office has published guidelines concerning the implementation
of this change to 35 U.S.C. 103(c). See Guidelines Concerning the
Implementation of Changes to 35 U.S.C. 102(g) and 103(c) and the
Interpretation of the Term "Original Application" in the American
Inventors Protection Act of 1999, 1233 Off. Gaz. Pat. Office 54 (Apr.
11, 2000).
Discussion of Specific Rules: The Office is adopting the changes set
forth in the Interim Rule to 1.7, 1.17(e) and (i), 1.53(d)(1),
1.78(a)(3), 1.97(b), 1.104(c)(4), 1.113, 1.116, 1.198, 1.312, and
1.313(a), (b), (c)(1), (c)(3), and (d) in this final rule. The Office is
adopting revised 1.53(c)(3), 1.103, 1.114, and 1.313(a) and (c)(2)
in this final rule.
Title 37 of the Code of Federal Regulations, Part 1, is amended as
follows:
Section 1.7 is amended by designating the current text as paragraph (a)
and adding a new paragraph (b) to provide that if the day that is twelve
months after the filing date of a provisional application under 35
U.S.C. 111(b) and 1.53(c) falls on Saturday, Sunday, or a Federal
holiday within the District of Columbia, the period of pendency shall be
extended to the next succeeding secular or business day which is not a
Saturday, Sunday, or a Federal holiday.
Section 1.17(e) sets forth the fee to request continued examination
pursuant to new 1.114, which is set at an amount equal to the basic
filing fee for a utility application.Therefore, the fee for considering
a submission pursuant to 1.114 is currently $690.00 ($345.00 for a
small entity).
Section 1.17(i) is amended to include a reference to the fee to convert
a provisional application filed under 1.53(c) to a nonprovisional
application under 1.53(b), and to eliminate the reference to 1.312.
Section 1.53 is amended by redesignating paragraph (c)(3) as paragraph
(c)(4) and adding a new paragraph (c)(3) to provide for the conversion
of a provisional application to a nonprovisional application. Section
1.53(c)(3) provides that a request to convert a provisional application
filed under 1.53(c) to a nonprovisional application under 1.53(b)
must be accompanied by the fee set forth in 1.17(i) and an amendment
including at least one claim as prescribed by the second paragraph of 35
U.S.C. 112, unless the provisional application otherwise contains at
least one claim. Section 1.53(c)(3) also provides that such a request
must be filed prior to the earliest of:(1) abandonment of the
provisional application; or (2) expiration of twelve months after the
filing date of the provisional application.
Section 1.53(c)(3) also provides that the nonprovisional application
resulting from conversion of a provisional application must also include
the filing fee for a nonprovisional application, an oath or declaration
by the applicant pursuant to 1.63, 1.162, or 1.175, and the
surcharge required by 1.16(e) if either the basic filing fee for a
nonprovisional application or the oath or declaration was not present on
the filing date accorded the resulting nonprovisional application. While
this language was not included in interim 1.53(c)(3), it simply
clarifies that once a provisional application is converted into a
nonprovisional application, the resulting nonprovisional application
must comply with the requirements applicable to nonprovisional
applications (e.g., the requirement for the basic filing fee for a
nonprovisional application and an oath or declaration by the applicant
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pursuant to 1.63, 1.162, or 1.175).
Section 1.53(c)(3) also provides that the conversion of a provisional
application to a nonprovisional application will not result in either
the refund of any fee properly paid in the provisional application or
the application of any such fee to the filing fee, or any other fee, for
the nonprovisional application.
Finally, 1.53(c)(3) contains the admonitions that: (1) conversion of
a provisional application to a nonprovisional application under
1.53(c)(3) will result in the term of any patent to issue from the
application being measured from at least the filing date of the
provisional application for which conversion is requested; and (2)
applicants should consider avoiding this adverse patent term impact by
filing a nonprovisional application claiming the benefit of the
provisional application under 35 U.S.C. 119(e) (rather than converting
the provisional application into a nonprovisional application pursuant
to 1.53(c)(3)).
The conversion of a provisional application to a nonprovisional
application will not result in any savings in filing fees over the
filing of a nonprovisional application claiming the benefit under 35
U.S.C. 119(e) and 1.78 of the earlier provisional application. Thus,
an applicant may simply file a nonprovisional application claiming the
benefit under 35 U.S.C. 119(e) and 1.78 of the earlier provisional
application and avoid the fee set forth in 1.17(i) required to
convert a provisional application to a nonprovisional application (as
well as the adverse patent term effects discussed above).
Section 1.53(d)(1)(i) is amended to provide that continued prosecution
application (CPA) practice under 1.53(d) does not apply to
applications (other than design) if the prior application has a filing
date on or after May 29, 2000. Thus, an application (except for a design
application) must have an actual filing date before May 29, 2000, for
the applicant to be able to file a CPA of that application. While the
Office uses the filing date (and application number) of the prior
application of a CPA for identification purposes, the filing date of a
CPA under 1.53(d) is the date the request for a CPA is filed. See
1.53(d)(2). Thus, if a CPA of an application (other than for a design
patent) is filed on or after May 29, 2000, 1.53(d)(1)(i) does not
permit the filing of a further CPA, regardless of the filing date of the
prior application as to the first CPA (i.e., the filing date used for
identification purposes for the CPA).
In the event that an applicant files a request for a CPA of a utility or
plant application that was filed on or after May 29, 2000 (to which CPA
practice no longer applies), the Office will automatically treat the
improper CPA as a request for continued examination of the prior
application (identified in the request for CPA) under new 1.114
(unless the application has issued as a patent). If an applicant files a
request for a CPA of an application to which CPA practice no longer
applies and does not want the request for a CPA to be treated as a
request for continued examination under 1.114 (e.g., the CPA is a
divisional CPA), the applicant may file a petition under 1.53(e)
requesting that the improper CPA be converted to an application under
1.53(b). The requirements for such a petition under 1.53(e) are
identical to those set forth in section 201.06(b) of the Manual of
Patent Examining Procedure (7th ed.1998) (Rev. 1, Feb. 2000) (MPEP) for
converting an improper file wrapper continuing (FWC) application under
former 1.62 to an application under 1.53(b). The Office will not
grant such a petition unless it is before the appropriate deciding
official before an Office action has been mailed in response to the
request for continued examination under 1.114 (as the improper CPA is
being treated). If an Office action has been mailed in response to the
request for continued examination under 1.114, the applicant should
simply file an application under 1.53(b) within the period for reply
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to such Office action.
If, however, an applicant files a transmittal paper that is ambiguous as
to whether it is a continued prosecution application under 1.53(d) or
a request for continued examination under 1.114 (e.g., contains
references to both an RCE and a CPA), and the application is eligible
for either a continued prosecution application under 1.53(d) or a
request for continued examination under 1.114 (i.e., a plant or
utility application filed on or after June 8, 1995, but before May 29,
2000), that ambiguity will be resolved in favor of treating the
transmittal papers as a request for a CPA under 1.53(d). Other papers
filed with the transmittal paper (e.g., a preliminary amendment or
information disclosure statement) will not be taken into account in
determining whether a transmittal paper is a continued prosecution
application under 1.53(d), or a request for continued examination
under 1.114, or ambiguous as to whether it is a continued prosecution
application under 1.53(d) or a request for continued examination
under 1.114.
Section 1.53(d)(1)(ii)(A) is amended to refer to " 1.313(c)" rather
than " 1.313(b)(5)" for consistency with the change to 1.313.
Section 1.78 is amended to eliminate the requirement that a
nonprovisional application be "copending" with a provisional application
for the nonprovisional application to claim the benefit under 35 U.S.C.
119(e) of a provisional application. Section 1.78 is also amended to
require that, for a nonprovisional application to claim the benefit of a
provisional application, the provisional application must be entitled to
a filing date as set forth in 1.53(c), and have paid the basic filing
fee set forth in 1.16(k) within the time period set forth in
1.53(g), and have any required English language translation filed within
the time period set under 1.52(d).
Section 1.97(b) is amended to indicate that an information disclosure
statement will also be considered if it is filed before the mailing of a
first Office action after the filing of a request for continued
examination under 1.114.
Section 1.103 is amended to provide for a limited suspension of action
after a request for continued examination under 1.114. Section 1.103
is also amended based upon previously proposed changes to that section.
See Changes to Implement the Patent Business Goals, Notice of Proposed
Rulemaking, 64 FR 53772, 53799-00, 53833-34, (Oct. 4, 1999), 1228 Off.
Gaz. Pat. Office 15, 39-40, 72 (Nov. 2, 1999) (Patent Business Goals
Notice of Proposed Rulemaking). These changes are being adopted in this
final rule because of the overlap between the provisions for a limited
suspension of action after a request for continued examination under
1.114 and the previously proposed limited suspension of action in a CPA
under 1.53(d).
The heading of 1.103 is amended to add the phrase "by the Office" to
clarify that 1.103 applies only to suspension of action by the Office
(by applicant request or at the initiative of the Office) and does not
apply to a suspension of action (or reply) by the applicant.
Section 1.103(a) provides for suspension of action for cause.
Specifically, 1.103(a) provides that on request of the applicant, the
Office may grant a suspension of action by the Office under this
paragraph for good and sufficient cause. Section 1.103(a) also provides
that: (1) the Office will not suspend action if reply by applicant to an
Office action is outstanding; and (2) any petition for suspension of
action under 1.103(a) must specify a period of suspension not
exceeding six months. Section 1.103(a) specifically provides that any
petition for suspension of action under 1.103(a) must also include:
(1) a showing of good and sufficient cause for suspension of action; and
(2) the fee set forth in 1.17(h), unless such cause is the fault of
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the Office.
Section 1.103(b) provides for a limited suspension of action in a CPA
filed under 1.53(d). Section 1.103(b) specifically provides that on
request of the applicant, the Office may grant a suspension of action by
the Office under 1.103(b) in a CPA for a period not exceeding three
months. Section 1.103(b) also provides that any request for suspension
of action under 1.103(b) must be filed with the request for a CPA and
include the processing fee set forth in 1.17(i).
Section 1.103(c) provides for a limited suspension of action after a
request for continued examination under 1.114. Section 1.103(c)
specifically provides that on request of the applicant, the Office may
grant a suspension of action by the Office under 1.103(c) after the
filing of a request for continued examination in compliance with
1.114 for a period not exceeding three months. Since 1.103(c)
requires a request for continued examination in "compliance with
1.114," a request for suspension of action under 1.103(c) does not
substitute for the submission (or fee) required by 1.114. The period
of suspension, however, may be used to prepare and file a supplement
(e.g., affidavit or declaration containing test data) to the previously
filed submission. Section 1.103(c) also provides that any request for
suspension of action under 1.103 must be filed with the request for
continued examination under 1.114, specify the period of suspension,
and include the processing fee set forth in 1.17(i). The ability to
submit a request for suspension when a request for continued examination
under 1.114 is filed is particularly useful in that its fee (unlike
the CPA filing fee) must be paid when the request for continued
examination under 1.114 is filed.
Section 1.103(d) provides that the Office will notify applicant if the
Office, on its own initiative, suspends action on an application.
Section 1.103(e) provides for suspension of action for public safety or
defense. Section 1.103(e) specifically provides that the Office may
suspend action by the Office by order of the Commissioner if the
following conditions are met: (1) the application is owned by the United
States; (2) publication of the invention may be detrimental to the
public safety or defense; and (3) the appropriate department or agency
requests such suspension.
Section 1.103(f) provides that the Office will suspend action by the
Office for the entire pendency of an application if the Office has
accepted a request to publish a statutory invention registration in the
application, except for purposes relating to patent interference
proceedings under Subpart E.
Section 1.104(c)(4) is revised to replace "35 U.S.C. 102(f) or (g)" with
"35 U.S.C. 102(e), (f) or (g)" for consistency with 35 U.S.C. 103(c) as
amended by 4807 of the American Inventors Protection Act of 1999.
Section 1.113 is amended to take into account that an applicant's after
final reply options include filing a request for continued examination
under 1.114. Section 1.113 is also amended to locate the last two
sentences of paragraph (a) in a new paragraph (c).
Section 1.114 is added to implement 4403 of the American Inventors
Protection Act of 1999. The Office is providing a procedure under which
an applicant may obtain continued examination of an application in which
prosecution is closed (e.g., the application is under a final rejection
or a notice of allowance) by filing a submission and paying a specified
fee. If a subsequent rejection or action is made final (or if the
application is subsequently allowed), the applicant may again obtain
continued examination of an application (consideration of a submission)
upon the filing of a submission and an additional payment of the
specified fee prior to abandonment of the application.
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Since the relevant portion of 4405(b)(1) of the American Inventors
Protection Act of 1999 (the effective date provision for 35 U.S.C.
132(b)) states that continued examination provisions of 35 U.S.C. 132(b)
apply to "all applications" filed under 35 U.S.C. 111(a) on or after
June 8, 1995, the continued examination provisions of 35 U.S.C. 132(b)
and 1.114 apply to any nonprovisional (35 U.S.C. 111(a)) application
filed on or after June 8, 1995, regardless of whether the application is
a reissue application or a non-reissue (original) application. The
continued examination provisions of 35 U.S.C. 132(b) and 1.114,
however, will not be available for: (1) a provisional application (which
is not examined under 35 U.S.C. chapter 12); (2) an application for a
utility or plant patent (whether reissue or non-reissue) filed under 35
U.S.C. 111(a) before June 8, 1995; (3) an international application
filed under 35 U.S.C. 363 before June 8, 1995; (4) an application for a
design patent; or (5) a patent under reexamination.
Under this procedure, the filing of a request for continued examination
after the filing of a Notice of Appeal to the Board of Patent Appeals
and Interferences, but prior to a decision on the appeal, will be
considered a request to withdraw the appeal and to reopen prosecution of
the application before the examiner. The filing of a request for
continued examination (accompanied by the fee and a submission) after a
decision by the Board of Patent Appeals and Interferences, but before
the filing of a Notice of Appeal to the U.S. Court of Appeals for the
Federal Circuit (Federal Circuit) or the commencement of a civil action,
will also result in the finality of the rejection or action being
withdrawn and the submission being considered.
In addition to the res judicata effect of a Board of Patent Appeals and
Interferences decision in an application (see MPEP 706.03(w)), a Board
of Patent Appeals and Interferences decision in an application is the
"law of the case," and is thus controlling in that application and any
subsequent related application. See MPEP 1214.01 (where a new ground of
rejection is entered by the Board of Patent Appeals and Interferences
pursuant to § 1.196(b), argument without either amendment of the claims
so rejected or the submission of a showing of facts can only result in a
final rejection of the claims, since the examiner is without authority
to allow the claims unless amended or unless the rejection is overcome
by a showing of facts not before the Board of Patent Appeals and
Interferences). As such, a submission containing arguments without
either amendment of the rejected claims or the submission of a showing
of facts will not be effective to remove such rejection.
The procedure set forth in 1.114 will not be available in an
application after the filing of a Notice of Appeal to the Federal
Circuit or the commencement of a civil action, unless the appeal or
civil action is terminated and the application is still pending. Unless
an application contains allowed claims (or the court's mandate clearly
indicates that further action is to be taken in the Office), the
termination of an unsuccessful court appeal or civil action results in
the abandonment of the application. See MPEP 1216.01.
If the application is under final rejection, the fee for a request for
continued examination acts only to withdraw the finality of an Office
action. If reply to an Office action is outstanding, a submission
meeting the reply requirements of 1.111 must be timely received to
continue prosecution of an application. Put simply, the mere payment of
the fee for a request for continued examination will not operate to toll
the running of any time period set in the previous Office action for
reply to avoid abandonment of the application. Likewise, filing a
request for continued examination (with the fee and a submission) in an
allowed application after the issue fee has been paid without a petition
under 1.313 to withdraw the application from issue will not operate
to avoid issuance of the application as a patent. Nevertheless, if a
request for continued examination (with the fee and a submission) is
filed in an allowed application prior to payment of the issue fee, a
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petition under 1.313 to withdraw the application from issue is not
required.
To avoid confusion as to whether an applicant desires to amend the
application prior to receiving continued examination of the application,
an appeal brief under 1.192 or a reply brief under 1.193(b), or
related submissions, are expressly excluded as a submission for the
purposes of 1.114. The submission, however, may consist of the
arguments in a previously filed appeal brief or reply brief submitted as
a reply to the final rejection, or may simply consist of a submission
that incorporates by reference the arguments in a previously filed
appeal brief or reply brief.
35 U.S.C. 132(a) provides that "[n]o amendment shall introduce new
matter into the disclosure of the invention." Any amendment entered
pursuant to 1.114 that is determined to contain new matter will be
treated in the same manner that a reply under 1.111 that is
determined to contain new matter is currently treated. In those
instances in which an applicant seeks to add new matter to the
disclosure of an application, the procedure in 1.114 is not
available, and the applicant must file a continuation-in-part
application under 1.53(b) containing such new matter. In addition, as
35 U.S.C. 132(b) and 1.114 provide continued examination of an
application (and not examination of a continuing application), the
Office will not permit an applicant to obtain continued examination on
the basis of claims that are independent and distinct from the claims
previously claimed and examined (see 1.145).
The request for continued examination procedure in 1.114 should not
be confused with the transitional procedure for the further limited
examination of patent applications set forth in 1.129(a) (see Changes
to Implement 20-Year Patent Term and Provisional Applications, Final
Rule Notice, 60 FR 20195 (April 25, 1995), 1174 Off. Gaz. Pat. Office 15
(May 2, 1995)) or the CPA procedure set forth in 1.53(d) (see Changes
to Patent Practice and Procedure, Final Rule Notice, 62 FR 53131
(October 10, 1997), 1203 Off. Gaz. Pat. Office 63 (October 21, 1997)).
Comparison of the request for continued examination procedure in
1.114 with the transitional procedure for the further limited
examination of patent application set forth in 1.129(a): The
procedure set forth in this notice does not apply to any application
that was filed prior to June 8, 1995. The transitional procedure set
forth in 1.129(a) applies only to applications, other than for a
reissue or design patent, that have been pending for at least two years
as of June 8, 1995, taking into account any references in such
applications to any earlier filed application under 35 U.S.C. 120, 121,
or 365(c), and is not applicable to any application filed after June 8,
1995. Therefore, an application eligible for the transitional procedure
set forth in 1.129(a) (unless filed on June 8, 1995), or any
application filed before June 8, 1995, is not eligible for the procedure
for continued examination set forth in this notice.
In addition, an applicant in an application eligible for the procedure
for continued examination set forth in this notice is not limited in the
number of times the fee for continued examination may be submitted. An
applicant in an application eligible for the transitional procedure set
forth in 1.129(a), however, is limited to two opportunities to pay
the fee for further examination of the application.
Moreover, under the transitional procedure set forth in 1.129(a), a
submission after final rejection or action will be considered if the
submission and the requisite fee are filed prior to abandonment of the
application and prior to the filing of an appeal brief. Under the
request for continued examination procedure set forth in this notice, a
submission will be considered if the submission and the requisite fee is
filed prior to abandonment of the application. That is, under the
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request for continued examination procedure, a submission (and requisite
fee) need not be filed prior to the filing of an appeal brief. In
addition, under the request for continued examination procedure, a
submission will be considered in an allowed application if the
submission and the requisite fee are filed prior to payment of the issue
fee (or later if a petition under 1.313(c) to withdraw the
application from issue is granted).
Comparison of the request for continued examination procedure in
1.114 with the CPA procedure set forth in 1.53(d): Section 1.53(d) is
amended to make CPA practice inapplicable to applications (other than
for a design patent) filed under 35 U.S.C. 111(a) on or after May 29,
2000, or resulting from international applications filed under 35 U.S.C.
363 on or after May 29, 2000. Continued prosecution application (CPA)
practice was adopted to permit applicants to obtain continued
examination of an application (for a fee) via the filing of a continuing
application. 35 U.S.C. 132(b), however, provides statutory authority for
the Office to prescribe regulations to permit applicants to obtain
continued examination of an application (for a fee) without the need for
a continuing application. The Office is not completely abolishing CPA
practice in favor of the request for continued examination practice in
1.114 because the request for continued examination practice in
1.114 is not applicable to applications filed before June 8, 1995 (or
design applications), and the patent term adjustment provisions of Pub.
L. 106-113 do not apply to applications filed before May 29, 2000. The
Office, however, is restricting CPA practice to utility and plant
applications filed before May 29, 2000, and design applications because
maintaining two practices (as to applications eligible for the continued
examination procedure of 1.114) designed for the same purpose
(obtaining continued examination of an application) is unnecessary and
will result in confusion.
Since the request for continued examination practice in 1.114 is
applicable to utility and plant applications filed on or after June 8,
1995, and CPA practice in 1.53(d) is applicable to utility and plant
applications filed before May 29, 2000, and design applications, an
applicant in a utility or plant application filed on or after June 8,
1995, but before May 29, 2000, may obtain further examination either by
filing a request for continued examination under 1.114 or by filing a
CPA under 1.53(d). Since the patent term adjustment provisions of
Pub. L. 106-113 do not apply to applications filed before May 29, 2000,
and a request for continued examination practice under 1.114 (unlike
a CPA under 1.53(d)) is not the filing of a new application, whether
further examination of such an application is sought by a request for
continued examination under 1.114 or a CPA under 1.53(d) has an
impact on whether any resulting patent is entitled to the patent term
adjustment provisions of Pub. L. 106-113. Specifically, if an applicant
in a utility or plant application filed before May 29, 2000, files a CPA
under 1.53(d) after May 29, 2000, the application being prosecuted
(now a CPA) is an application filed on or after May 29, 2000, and is
entitled to the patent term adjustment provisions of Pub. L. 106-113.
If, however, an applicant in a utility or plant application filed before
May 29, 2000 (but on or after June 8, 1995) files a request for
continued examination under 1.114, the application being prosecuted
is not an application filed on or after May 29, 2000, and is not
entitled to the patent term adjustment provisions of Pub. L. 106-113.
In addition, there are a number of additional differences between
request for continued examination procedure set forth in this notice
with the CPA procedure set forth in 1.53(d) resulting from the fact
that a CPA is the filing of a new application, whereas continued
examination under 1.114 merely continues the examination of the same
application: (1) a request for continued examination under 1.114 is
not permitted unless prosecution in the application is closed (cf.
1.53(d)(1)); (2) the fee for continued examination under 1.114 (
1.17(e)) does not have an additional claims fee component (cf.
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1.53(d)(3)(ii)); (3) the fee for continued examination under 1.114
may not be deferred (cf. 1.53(f)); (4) a request for continued
examination under 1.114 is entitled to the benefit of a certificate
of mailing under 1.8 (cf. 1.8(a)(2)(i)(A)); (5) an applicant may not
obtain examination of a different or non-elected invention (e.g., a
divisional) in a request for continued examination under 1.114; and
(6) any change of inventors must be via the procedure set forth in
1.48 (cf. 1.53(d)(4)).
Discussion of the specific provisions of new 1.114: Section 1.114 is
added to provide for continued examination of an application under 35
U.S.C. 132(b).
Section 1.114(a) provides that if prosecution in an application is
closed, an applicant may obtain continued examination of an application
by filing a submission and the fee set forth in 1.17(e) prior to the
earliest of: (1) payment of the issue fee, unless a petition under
1.313 is granted; (2) abandonment of the application; or (3) the filing
of a notice of appeal to the U.S. Court of Appeals for the Federal
Circuit under 35 U.S.C. 141, or the commencement of a civil action under
35 U.S.C. 145 or 146, unless the appeal or civil action is terminated.
The action immediately subsequent to the filing of a submission and fee
under 1.114 may be made final only if the conditions set forth in
MPEP 706.07(b) for making a first action final in a continuing
application are met.
Interim 1.114 did not require that prosecution in an application be
closed for an applicant to obtain continued examination under that
section, but only that the Office had mailed at least one of an Office
action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
There is, however, no benefit (from applicant's perspective) to
requesting continued examination under 1.114 if prosecution in the
application is not closed. Thus, any request for continued examination
under 1.114 in an application in which prosecution is not closed
would probably have been filed in error. In addition, the legislative
history of 35 U.S.C. 132(b) reveals that its continued examination
provisions were designed for applications in which prosecution was
closed. See 145 Cong. Rec. S.14708, S.14718 (daily ed. November 17,
1999) (statement of Sen. Lott); see also H.R. Rep. No. 106-464 at 128
(1999). Therefore, the Office considers it inappropriate to permit (or
encourage) applicants to request and pay the fee for continued
examination under 35 U.S.C. 132(b) and 1.114 unless prosecution in
the application is closed.
Section 1.114(b) provides that prosecution in an application is closed
as used in 1.114 means that the application is under appeal, or that
the last Office action is a final action ( 1.113), a notice of
allowance ( 1.311), or an action that otherwise closes prosecution in
the application (e.g., an Office action under Ex parte Quayle, 1935
Comm'r Dec. 11 (1935)).
Section 1.114(c) provides that a submission as used in 1.114
includes, but is not limited to, an information disclosure statement, an
amendment to the written description, claims, or drawings, new
arguments, or new evidence in support of patentability. This definition
in 1.114 for "submission" is taken from 1.129(a). Section 1.114(c)
also provides that if reply to an Office action under 35 U.S.C. 132 is
outstanding, the submission must meet the reply requirements of
1.111. This provision will permit applicants to file a submission under
1.114 containing only an information disclosure statement ( 1.97
and 1.98) in an application subject to a notice of allowance under 35
U.S.C. 151.
Section 1.114(d) provides that if an applicant timely files the fee set
forth in 1.17(e) and a submission, the Office will withdraw the
finality of any Office action to which a reply is outstanding and the
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submission will be entered and considered. The phrase "withdraw the
finality of any Office action" includes the withdrawal of the finality
of a final rejection, as well as the withdrawal of the closing of
prosecution by an Office action under Ex parte Quayle, 1935 Comm'r Dec.
11 (1935), or notice of allowance under 35 U.S.C. 151 (or notice of
allowability). Section 1.114(d) also provides that if an applicant files
a request for continued examination under 1.114 after appeal, but
prior to a decision on the appeal, it will be treated as a request to
withdraw the appeal and to reopen prosecution of the application before
the examiner. Thus, the filing of a request for continued examination
under 1.114 in an application containing an appeal awaiting decision
after appeal will be treated as a withdrawal of the appeal by the
applicant, regardless of whether the request for continued examination
under 1.114 includes the appropriate fee ( 1.17(e)) or a submission
( 1.114(c)). Applicants should advise the Board of Patent Appeals and
Interferences when a request for continued examination under 1.114 is
filed in an application containing an appeal awaiting
decision.Otherwise, the Board of Patent Appeals and Interferences may
refuse to vacate a decision rendered after the filing (but before
recognition by the Office) of a request for continued examination under
1.114. Section 1.114(d) also provides that an appeal brief or a reply
brief (or related papers) will not be considered a submission under
1.114 (discussed above).
Section 1.114(e) provides that the request for continued examination
provisions of 1.114 do not apply to: (1) a provisional application;
(2) an application for a utility or plant patent filed under 35 U.S.C.
111(a) before June 8, 1995; (3) an international application filed under
35 U.S.C. 363 before June 8, 1995; (4) an application for a design
patent; or (5) a patent under reexamination.
Section 1.116 is amended to add a paragraph (a) that takes into account
that an applicant's after final amendment options include filing a
request for continued examination under 1.114, and to redesignate
existing paragraphs (a), (b), and (c) as paragraphs (b), (c), and (d),
respectively.
Section 1.198 is amended to take into account that an application in
which an appeal has been decided by the Board of Patent Appeals and
Interferences may also be reopened under the request for continued
examination provisions of 1.114.
Section 1.312 is amended by clarifying that an amendment under 1.312
(after allowance) must be filed prior to or with payment of the issue
fee.
Section 1.313(a) is being amended to provide that it is not necessary to
file a petition to withdraw an application from issue if a request for
continued examination under 1.114 is filed prior to payment of the
issue fee. If an applicant files a request for continued examination
under 1.114 (with the fee and a submission) prior to the date the
issue fee is due, the applicant need not pay the issue fee to avoid
abandonment of the application.Applicants are cautioned against filing a
request for continued examination under 1.114 prior to payment of the
issue fee and subsequently paying the issue fee (before the Office acts
on the request for continued examination under 1.114) because doing
so may result in issuance of a patent without consideration of the
request for continued examination under 1.114 (if the request for
continued examination under 1.114 is not matched with the application
before the application is processed into a patent).
Section 1.313(c) is amended to provide that an application may also be
withdrawn from issue after payment of the issue fee on petition by the
applicant for consideration of a request for continued examination in
compliance with 1.114. This language differs from the language of
interim 1.313(c)(2), but the change simply clarifies the requirements
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for an application to be withdrawn from issue under 1.313(c)(2).
The Office cannot ensure that any petition under 1.313(c) will be
acted upon prior to the date of patent grant. See Filing of Continuing
Applications, Amendments, or Petitions after Payment of Issue Fee,
Notice, 1221 Off. Gaz. Pat. Office 14 (April 6, 1999). Since a request
for continued examination under 1.114 (unlike a CPA under 1.53(d))
is not any type of new application filing, the Office cannot grant a
petition to convert an untimely request for continued examination under
1.114 to a continuing application under 1.53(b). Therefore,
applicants are strongly cautioned to file any desired request for
continued examination under 1.114 prior to payment of the issue fee.
In addition, applicants considering filing a request for continued
examination under 1.114 after payment of the issue fee are strongly
cautioned to call the Office of Petitions to determine whether
sufficient time remains before the patent issue date to consider (and
grant) a petition under 1.313(c) and what steps are needed to ensure
that a grantable petition under 1.313(c) is before an appropriate
official in the Office of Petitions in sufficient time to grant the
petition before the patent is issued. Finally, applicants filing a
request for continued examination under 1.114 after allowance but
prior to payment of the issue fee are cautioned against subsequently
paying the issue fee because doing so may result in the prompt issuance
of a patent.
Response to comments: The Office received fifteen written comments (from
Intellectual Property Organizations, Law Firms, Patent Practitioners,
and others) in response to the Interim Rule. Comments generally in
support of a change are not discussed. The comments and the Office's
responses to those comments (as well as the comments on the proposed
change to § 1.103 in the Patent Business Goals Notice of Proposed
Rulemaking) follow:
Comment 1: One comment suggested that simply applying the basic filing
fee as the fee for continued examination under 35 U.S.C. 132(b) and
1.114 was inappropriate, as the Office does not need to conduct any
pre-examination processing when an applicant requests continued
examination under 35 U.S.C. 132(b) and 1.114.
Response: The basic filing fee does not recover the Office's costs of
pre-examination processing and examination of an application; rather,
this cost is recovered in part by the issue fee and maintenance fees.
The actual cost to the Office (in the aggregate) of providing the
examination required by 35 U.S.C. 131 and 132(a) exceeds the basic
filing fee. Thus, the basic filing fee for a utility application is
considered an "appropriate" fee within the meaning of 35 U.S.C. 132(b).
Comment 2: One comment (while acknowledging that the issue was not a
rulemaking issue) requested that the Office clarify the impact of the
changes to 35 U.S.C. 119(e) to: (1) remove the copendency requirement
for a nonprovisional application to claim the benefit of a provisional
application; and (2) extend the period of pendency of a provisional
application if the date that is twelve months after the filing date of a
provisional application falls on Saturday, Sunday, or a Federal holiday
within the District of Columbia.
Response: Prior to enactment of the American Inventors Protection Act of
1999, a nonprovisional application claiming the benefit of a provisional
application under 35 U.S.C. 119(e) must have been: (1) filed not later
than within twelve months after the filing date of the provisional
application; and (2) filed during the pendency of the provisional
application. Section 4801 of the American Inventors Protection Act of
1999 amended 35 U.S.C. 119(e) to eliminate the requirement that a
nonprovisional application claiming the benefit of a provisional
application must have been filed during the pendency of the provisional
application, but did not change the requirement that a nonprovisional
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application claiming the benefit of a provisional application be filed
not later than within twelve months after the filing date of the
provisional application.
The provisions of 35 U.S.C. 21(b) extend the twelve-month period in 35
U.S.C. 119(e)(1) to the next succeeding secular or business day if the
last day of that twelve-month period falls on a Saturday, Sunday, or
Federal holiday. See Dubost v. U.S. Patent and Trademark Office, 777
F.2d 1561, 1562, 227 USPQ 977, 977 (Fed. Cir. 1985), and Ex parte Olah,
131 USPQ 41, 42-43 (Bd. Pat. App. 1961). The reason for the caveat in
former 1.78(a)(3) is that: (1) 35 U.S.C. 119(e)(2) formerly required
that a nonprovisional application claiming the benefit of a provisional
application must have been filed during the pendency of the provisional
application; and (2) 35 U.S.C. 111(b)(5) provides that a provisional
application will become abandoned twelve months after its filing date
regardless of what action is taken or fee is paid in such provisional
application.Thus, the provisions of 35 U.S.C. 21(b) do not appear to
extend the twelve-month period in 35 U.S.C. 111(b)(5) to the next
succeeding secular or business day if the last day of that twelve-month
period falls on a Saturday, Sunday, or Federal holiday. The American
Inventors Protection Act of 1999 amended 35 U.S.C. 119 to: (1) eliminate
the requirement that a nonprovisional application claiming the benefit
of a provisional application must have been filed during the pendency of
the provisional application (35 U.S.C. 119(e)(2)); and (2) extend the
twelve-month period in 35 U.S.C. 111(b)(5) to the next succeeding
secular or business day if the last day of that twelve-month period
falls on a Saturday, Sunday, or Federal holiday (35 U.S.C. 119(e)(3)).
The provision extending the period of pendency of a provisional
application if the date that is twelve months after the filing date of a
provisional application falls on Saturday, Sunday, or a Federal holiday
within the District of Columbia is still relevant (notwithstanding the
elimination of the requirement that a nonprovisional application
claiming the benefit of a provisional application has been filed during
the pendency of the provisional application) as 1.53(c)(3) requires
that any request to convert a provisional application into a
nonprovisional application be filed prior to abandonment of the
provisional application.
Comment 3: One comment suggested that the Office provide (as a default)
that a provisional application is abandoned as of its filing date.
Response: The rules of practice ( 1.138) allow an applicant to file a
letter of express abandonment in any application (including a
provisional application). The applicant is in the best position to
determine whether a provisional application should remain pending until
twelve months from its filing date or whether it should be abandoned
(expressly or otherwise) prior to that date. For example, an applicant
may wish to maintain the pendency of the provisional application so that
it can be converted under 35 U.S.C. 111(b)(5) and 1.53(c)(3) into a
nonprovisional application ( 1.53(c)(3)(i)). Therefore, the Office
considers it inappropriate to provide for abandonment of a provisional
application as of its filing date as a default.
Comment 4: One comment suggested that the Office not require a
translation of a non- English language provisional application. The
comment argued that: (1) the patent statute does not permit the Office
to deny a filing date to a non-English language provisional application
if a translation is not provided; (2) provisional applications do not
need to be in English since they are never examined; (3) requiring a
translation for every non-English language provisional application
requires more paper handling by the Office; (4) requiring a translation
in every non-English language provisional application discriminates
against foreign applicants and discourages foreign applicants from
filing provisional applications in the United States; and (5) requiring
a translation in every non- English language provisional application is
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not necessary for national security screening.Another comment suggested
that the Office not require a translation of a non-English language
provisional application if the provisional application discloses an
invention made outside the United States.
Response: The rules of practice do not require an English language
translation of a non- English language provisional (or nonprovisional)
application as a condition of according a filing date to the
application. The Office has proposed to revise the rules of practice to
require an English language translation of a non-English language
provisional application when the benefit of the filing date of the
provisional application is claimed in a later-filed nonprovisional
application, and then the English language translation of the
provisional application will be required to be filed only in the
nonprovisional application. See Changes to Implement Eighteen-Month
Publication of Patent Applications, Notice of Proposed Rulemaking, 65 FR
17946, 17953, 17965 (Apr. 5, 2000), 1233 Off. Gaz. Pat. Office 121, 127,
137 (Apr. 25, 2000). Since the effective prior art (35 U.S.C. 102(e))
date of a patent takes claims under 35 U.S.C. 119(e) for the benefit of
a provisional application's filing date into account, but does not take
claims under 35 U.S.C. 119(a)-(d) for the benefit of a foreign
application's filing date into account, the Office has a reasonable
basis for having different requirements for provisional application
claims under 35 U.S.C. 119(e) than for foreign application claims under
35 U.S.C. 119(a)-(d). Obviously, if a non-English-language provisional
application is converted under 35 U.S.C. 111(b)(5) and 1.53(c)(3)
into a nonprovisional application, an English language translation will
be required in the resulting nonprovisional application.
Comment 5: One comment suggested that 1.53(c)(3) contain a sentence
that advises applicants that conversion of a provisional application
under 1.53(c)(3) results in a forfeiture of rights under 35 U.S.C.
119, and that the term of any patent which issues from the application
will be measured from the initial filing date of the provisional
application.
Response: Section 1.53(c)(3) as adopted will caution applicants that
conversion of a provisional application to a nonprovisional application
under 1.53(c)(3) will result in the term of any patent to issue from
the application being measured from at least the filing date of the
provisional application for which conversion is requested. Section
1.53(c)(3) will also provide that applicants should consider avoiding
this adverse patent term impact by filing a nonprovisional application
claiming the benefit of the provisional application under 35 U.S.C.
119(e) (rather than converting the provisional application into a
nonprovisional application pursuant to 1.53(c)(3)).
Comment 6: One comment suggested that 1.53(c)(3) provide that upon
conversion of a provisional application to a nonprovisional application,
the nonprovisional application should be accorded a filing date as of
the date on which a request for conversion of provisional application to
a nonprovisional application was filed, but that the original filing
date of the provisional application should be preserved. The comment
also requested clarification on the order in which a nonprovisional
application resulting from conversion of a provisional application will
be taken up for examination.
Response: If an applicant files a provisional application and
subsequently requests that the provisional application be converted into
(or treated as) a nonprovisional application (and that request is
granted), there remains only a single (now nonprovisional) application.
For the Office to accord the resulting nonprovisional application a
filing date as of the date on which a request for conversion of
provisional application to a nonprovisional application was filed, but
somehow preserve the original filing date of the provisional
application, would require the Office to accord two filing dates to a
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single application. There is nothing in the legislative history of
4801 of the American Inventors Protection Act of 1999 indicating that
Congress intended an application filing scheme under which a single
application would be both a provisional application with one filing date
and a nonprovisional application with a different filing date. Rather,
it appears that 4801 of the American Inventors Protection Act of 1999
simply permits an applicant who previously filed a provisional
application to have a "change of heart" and subsequently have the
application treated as (or converted to) a nonprovisional application.
This change also lays to rest the argument that a provisional
application is not a proper priority application under Article 4 of the
Paris Convention for the Protection of Industrial Property because a
provisional application cannot result in a U.S. patent (since a
provisional application can now be converted into a nonprovisional
application, which can result in a U.S. patent). See 1180 Off. Gaz. Pat.
Office 131 (Nov. 28, 1995).
The Office plans to take up a nonprovisional application resulting from
conversion of a provisional application for examination based upon the
filing date of the request for conversion under 1.53(c)(3) (rather
than the filing date of the resulting nonprovisional application). This
will preserve parity among applicants filing a nonprovisional
application claiming the benefit of an earlier provisional application
and applicants requesting conversion of a provisional application into a
nonprovisional application pursuant to 1.53(c)(3).
Comment 7: One comment suggested that 1.53(c)(3) be amended to
provide that if a provisional application does not contain a claim, and
a claim was not filed with a request to convert the application into a
nonprovisional application, the Office will notify the applicant and set
a time period for submitting a claim for examination.
Response: The Office does not consider it appropriate to convert a
provisional application into a nonprovisional application until at least
one claim is present. Thus, 1.53(c)(3) requires the presence of at
least one claim before the Office will grant a request to convert a
provisional application into a nonprovisional application. If a
provisional application does not contain a claim, and a claim is not
filed with a request to convert the application into a nonprovisional
application, the Office will set a time period within which a claim must
be submitted for the Office to grant the request to convert the
provisional application into a nonprovisional application.
Comment 8: Several comments stated that the twelve-month period
specified in 1.53(c)(3)(ii) does not take into account the pendency
extension provided in 1.7(b).
Response: The twelve-month period set forth in 1.53(c)(3)(ii)
concerning when a request to convert a provisional application into a
nonprovisional application must be filed does not relate to the pendency
of the provisional application, but the twelve-month period within which
any nonprovisional application claiming the benefit of that provisional
application must be filed. See 35 U.S.C. 119(e)(1). As discussed above,
if the last day of the twelve-month period set forth in
1.53(c)(3)(ii) falls on a Saturday, Sunday, or Federal holiday, that
period is extended to the next succeeding secular or business day by 35
U.S.C. 21(a) (and 1.7(a)).
Comment 9: One comment indicated that if an applicant fails to timely
reply to a Notice to File Missing Parts of Application in a provisional
application, the Office should permit an applicant to revive the
provisional application to file the filing fee, surcharge, translation,
or whatever else is missing from the provisional application such that a
nonprovisional application may claim the benefit of the provisional
application under 35 U.S.C. 119(e) and 1.78.
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Response: Section 1.78(a)(3) requires, for a nonprovisional application
to claim the benefit of a provisional application, that the provisional
application filing fee be paid within the period specified in
1.53(g), and that any English language translation be filed within the
period specified in 1.52(d). Thus, the grant of a petition to revive
the provisional application will still not result in compliance with
1.78(a)(3). Rather, the applicant would be required to file a petition
under 1.183 showing that circumstances of applicant's failure to pay
the provisional application filing fee within the period specified in
1.53(g), or failure to file any English language translation within the
period specified in 1.52(d), constitutes an "extraordinary situation"
in which "justice requires" a waiver of this requirement of
1.78(a)(3). The Office has proposed revising the rules of practice as to
when an English language translation of a non-English language
provisional is required, as well as the condition under which an
untimely English language translation will be accepted. See Changes to
Implement Eighteen-Month Publication of Patent Applications, 65 FR at
17953, 17965, 1233 Off. Gaz. Pat. Office at 127, 137.
Comment 10: Several comments argued that the Office should retain CPA
practice under 1.53(d) as to divisional applications, since an
applicant is not permitted to switch inventions under the request for
continued examination practice set forth in 1.114.
Response: CPA practice under 1.53(d) was adopted in December of 1997
(during fiscal year 1998). See Changes to Patent Practice and Procedure,
62 FR at 53186-87, 1203 Off. Gaz. Pat. Office at 111-12. The purpose of
CPA practice was to provide a mechanism (via the filing of a continuing
application) for applicants to obtain further examination of an
application for a fee (to which the small entity reduction in 35 U.S.C.
41(h) applies) in the absence of express statutory authority for the
Office to provide further or continued examination of an application for
a fee (to which the small entity reduction applies). See Changes to
Patent Practice and Procedure, 62 FR at 53142, 1203 Off. Gaz. Pat.
Office at 72. 35 U.S.C. 132(b) now provides express statutory authority
for the Office to provide further or continued examination of an
application for a fee (to which the small entity reduction applies).
Therefore, CPA practice may now be considered a "transitional practice"
relative to the request for continued examination practice set forth in
35 U.S.C. 132(b), and the Office is retaining CPA practice only as to
applications filed before the effective date of request for continued
examination practice set forth in 35 U.S.C. 132(b) (May 29, 2000) and
design applications.
Divisional CPAs make up only a small percentage of divisional
applications or CPAs. In fiscal year 1998, the Office received about
12,000 divisional applications and about 18,000 CPAs, about 400 of which
were divisional CPAs. In fiscal year 1999, the Office received about
14,000 divisional applications and about 26,000 CPAs, about 300 of which
were divisional CPAs. Thus, divisional CPAs made up about three percent
of all divisional applications and about two percent of all CPAs filed
in fiscal year 1998, and made up about two percent of all divisional
applications and about one percent of all CPAs filed in fiscal year 1999.
Divisional CPAs, however, have a much higher than average frequency of
filing date petitions (over ten times higher) than other types of
applications. Almost always, the filing error resulting in the need for
a filing date petition is that the applicant has filed a divisional
application as a CPA (usually with a copy of the specification,
drawings, and oath or declaration from the prior application) when the
applicant meant to file a divisional application under 1.53(b). The
petition to convert the divisional CPA into a divisional application
under 1.53(b) usually cannot be granted because it is relatively rare
that the petition is filed (much less brought before an appropriate
deciding official) before the prior application is abandoned as a result
of being processed into a CPA. See Continued Prosecution Application
(CPA) Practice, Notice, 1214 Off. Gaz. Pat. Office 32, 32 (Sept. 8,
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1998). In view of the relatively low number of divisional CPAs and the
frequency of filing errors involving divisional CPAs, the divisional CPA
has proven itself to be the bane of CPA practice. Thus, the elimination
of divisional CPA practice appears to be a benefit (rather than a
drawback) to eliminating CPA practice for applications (other than
designs) filed on or after May 29, 2000.
In any event, retaining CPA practice as to "divisional" CPAs and
eliminating it as to "continuation" CPAs is not practical. The
expressions "continuation," "divisional," and "continuation-in-part" are
merely terms used for administrative convenience. See Transco Products,
Inc. v. Performance Contracting, Inc., 38 F.3d 551, 556, 32 USPQ2d 1077
(Fed. Cir. 1994). Thus, providing that a CPA must be a "divisional" CPA
rather than a "continuation" CPA would be meaningless, as it would only
require that an applicant filing a CPA label the CPA as a "divisional"
CPA.
Section 1.53(d)(1) restricts CPA practice to "continuation" and
"divisional" CPAs (i.e., does not permit continuation-in-part CPAs)
through the requirement that a CPA disclose and claim only subject
matter disclosed in the prior application. See 1.53(d)(2)(ii). While
1.53(d) could be amended to further restrict CPA practice to
"divisional" applications that claim only subject matter disclosed but
not elected for examination in the prior application, such a provision
would require a restriction-type analysis to determine whether a CPA is
proper under this revised CPA practice. Retaining CPA practice for the
few divisional CPAs filed each year does not justify the complexity that
such a provision would introduce into application filing procedures.
Finally, any utility or plant CPA filed on or after November 29, 2000,
is subject to the eighteen-month publication provisions of the American
Inventors Protection Act of 1999.The Office's planning approach to
eighteen-month publication involves obtaining application papers (a
specification), drawings, an oath or declaration, and any sequence
listing (if required) necessary for the eighteen-month publication
process during the pre- examination processing of the application in the
Office of Initial Patent Examination (OIPE). See Changes to Implement
Eighteen-Month Publication of Patent Applications, Notice of Proposed
Rulemaking, 65 FR 17046, 17948-49 (Apr. 5, 2000), 1233 Off. Gaz. Pat.
Office 121, 122-23 (Apr. 25, 2000). Since the Office does not conduct
any pre- examination processing of a CPA in OIPE, the Office's Patent
Application Capture and Review (PACR) database will probably not have
the application papers (a specification), drawings, an oath or
declaration, and any sequence listing (if required) necessary for the
eighteen-month publication process.Restricting CPA practice to the
situation in which the prior utility or plant application was filed
before May 29, 2000, will limit the number of utility or plant CPAs
filed on or after November 29, 2000, each of which will require special
handling to obtain the application papers (a specification), drawings,
an oath or declaration, and any sequence listing (if required) necessary
for the eighteen-month publication process.
Comment 11: One comment suggested that 1.97(b) be revised to provide
that an information disclosure statement will be considered if it is
filed within three months after the date of a request for continued
examination under 1.114.
Response: Since a request for continued examination is a reply under 35
U.S.C. 132, the applicant may be entitled to patent term adjustment if
the Office does not act on an application containing a request for
continued examination under 1.114 within four months. See 35 U.S.C.
154(b)(1)(A)(ii). Thus, the Office cannot delay the acting on all
applications in which a request for continued examination under 1.114
is filed for three months to determine whether an information disclosure
statement will be filed. The Office, however, is adopting provisions
(under 1.103(c)) for a limited suspension of action after the filing
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of a request for continued examination under 1.114, under which an
applicant may obtain additional time (prior to the issuance of the next
Office action) to provide an information disclosure statement (or
amendments, or an affidavit or declaration) after the filing of the
request for continued examination.
Comment 12: One comment suggested that the Office clarify its statement
that 1.103 does not apply to requests for suspension of action by the
applicant in an application.
Response: The Office is distinguishing a request from applicant for the
Office to suspend action by the Office from a request from applicant to
suspend action by applicant to an outstanding Office requirement.
Section 1.103 applies only to a request by applicant for the Office to
suspend action by the Office in an application. Section 1.103 does not
apply to a request by applicant to suspend action (reply) by the
applicant in an application.
Comment 13: One comment suggested that the three-month suspension period
for CPAs should be available simply upon request without any associated
fee, or a lower CPA filing fee is justified as an offset. The comment
argued that there is no rational basis for payment of an additional fee
simply to have the CPA obtain the same benefit of filing a preliminary
amendment or information disclosure statement (IDS) as an application
under 1.53(b) (non-CPA), since the filing fees for both are the same.
Response: The comment is not adopted. Section 1.53(d) (CPA practice) was
established to provide applicants with a means for promptly receiving
continued examination of an application under final rejection via the
filing of a continuing application. The normal expectation for a CPA is
that a first Office action will issue before any preliminary amendment
or IDS can be submitted if the preliminary amendment or IDS is not
already prepared when the CPA is filed. In these situations, applicants
have relied upon not paying the filing fee for the CPA and thereby
requiring the Office to mail a Notice to File Missing Parts of
Application (requiring a payment of a surcharge). Section 1.103(b) now
permits applicants to avoid the practice of not paying the filing fee,
and to alert the Office that submission of a preliminary amendment or
IDS is being contemplated ( 1.103(b) does not require a statement of
reason for the suspension request or actual submission of anything). The
processing fee required for a request for suspension of action under
1.103(b) is to recover the costs for: (1) treating the application and
the preliminary amendment or IDS separately rather than being able to
treat them together when the application is filed; and (2) for
redocketing of the application so that a first Office action is delayed.
Comment 14: One comment questioned the applicability of the exclusion in
35 U.S.C. 103(c) if the subject matter and claimed invention were
jointly owned by two or more companies and subject to assignment to both
(i.e., whether "person" and "organization" are interpreted as including
joint ownership by multiple persons or organizations).
Response: The terms "person" and "organization" in 35 U.S.C. 103(c) and
1.104(a)(5) include the situation in which ownership resides in more
than one person or organization, provided that the applications are
owned jointly by the same owners. See MPEP 706.02(I)(2).
Comment 15: One comment asked whether the amendment to 1.104(c)(4)
applied to applications filed on or after November 29, 1999.
Response: The amendment to 35 U.S.C. 103(c) in 4807 of the American
Inventors Protection Act of 1999 applies to any application for patent
filed on or after November 29, 1999. Therefore, the corresponding
amendment to 1.104(c)(4) applies to any application for patent filed
on or after November 29, 1999.
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Comment 16: One comment asked whether a CPA under 1.53(d) filed on or
after November 29, 1999, is an application for patent filed on or after
November 29, 1999, such that the amendment to 35 U.S.C. 103(c) in
4807 of the American Inventors Protection Act of 1999 applies to the CPA.
Response: A CPA under 1.53(d) filed on or after November 29, 1999, is
an application for patent filed on or after November 29, 1999
(regardless of the filing date of the prior application), such that the
amendment to 35 U.S.C. 103(c) in 4807 of the American Inventors
Protection Act of 1999 applies to the CPA.
Comment 17: One comment suggested that design applications not be
excluded from the request for continued examination practice set forth
in 1.114, which would permit continued prosecution application
practice (under 1.53(d)) to be completely phased out within a few
years.
Response: Section 4405(b)(2) of the American Inventors Protection Act of
1999 excludes design applications from the request for continued
examination practice set forth in 35 U.S.C. 132(b) and 1.114.
Comment 18: Several comments suggested that 1.114 should indicate
that the first action after filing a request for continued examination
may not be a final rejection.
Response: The first action after the filing of a request for continued
examination under 1.114 may be made final, but only if the conditions
set forth in MPEP 706.07(b) for making a first action final in a
continuing application are met. This practice (first action final
practice) denies an applicant the delay inherent in an additional Office
action in a continuation application, thus compelling the applicant to
draft claims in a continuation application in view of the prosecution
history of the parent application (i.e., the rejections and prior art of
record in the parent application), and thus make a bona fide effort to
define the issues for appeal or allowance. In re Bogese, 22 USPQ2d 1821,
1824-25 Comm'r Pat. 1992). The Office's need for applicants to make a
bona fide effort to define the issues for appeal or allowance when
filing a request for continued examination under 1.114 remains,
notwithstanding the changes to the patent term provisions of 35 U.S.C.
154 contained in the Uruguay Round Agreements Act (URAA), Pub. L.
103-465, 108 Stat. 4809 (1994).
Comment 19: One comment stated that under 35 U.S.C. 132(a) an applicant
is entitled to persist in his or her claim to a patent, with or without
amendment, and that an applicant is likewise entitled to request
continued examination under 35 U.S.C. 132(b) "with or without
amendment." The comment argues that 1.113 is inconsistent with 35
U.S.C. 132 in that it requires an applicant to appeal or amend to obtain
further consideration of the application.
Response: The second examination (or "reexamination") provision of 35
U.S.C. 132(a) is implemented in 1.112, which does not require the
applicant to amend the application.The continued examination provision
of 35 U.S.C. 132(b) is implemented in 1.114, which again does not
require the applicant to amend the application to obtain continued
examination (a submission "includes, but is not limited to, an
information disclosure statement, an amendment to the written
description, claims, or drawings, new arguments, or new evidence in
support of patentability").
Section 1.113 applies to applications under a final rejection or action,
which occurs after the Office has satisfied its obligation to examine
(35 U.S.C. 131) and reexamine (35 U.S.C. 132(a)) the application.Former
and current 1.113 limits the applicant's after final options to
appeal from or cancellation of the rejected claims. Since the Office is
not required by 35 U.S.C. 132 to provide continued examination of an
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application under final rejection or action (regardless of whether the
applicant amends) unless the applicant requests (and pays the fee for)
continued examination under 35 U.S.C. 132(b) and 1.114, the Office is
not required by 35 U.S.C. 132 to give applicants after final options
other than appeal, cancellation of the rejected claims, or continued
examination under 1.114.
Comment 20: Several comments suggested that 1.114 provide that if a
request for continued examination under 1.114 is accompanied by the
fee but not a submission, the Office will notify the applicant and set a
time period within which the deficiency must be corrected. One comment
also suggested that 1.114 provide that if a request for continued
examination under 1.114 is filed after an application is allowed, and
is accompanied by the fee but not a submission, the Office will notify
the applicant and set a time period within which the deficiency must be
corrected.
Response: The Office will not suspend action in an application when a
reply by the applicant is outstanding. 35 U.S.C. 133 requires an
applicant to "prosecute the application" within six months of an Office
action (or a shorter period as set in the Office action) to avoid
abandonment of the application. If an applicant files a request for
continued examination but does not also provide any submission (in reply
to the prior Office action) within the period for reply to the prior
Office action, the application is abandoned by operation of law (35
U.S.C. 133). Providing a different practice for the relatively few
applications in which a request for continued examination under 1.114
is filed after a notice of allowance has been issued would be a trap for
the unwary if relied upon in an application subject to an Office action
under 35 U.S.C. 132.
The Office will treat a request for continued examination under 1.114
containing a bona fide submission that is not fully responsive to the
prior Office action under the practice set forth in 1.135(c). In
addition, under the limited suspension of action provisions of
1.103(c), an applicant must still file a request for continued
examination practice in compliance with 1.114, but may obtain
additional time (prior to the issuance of the next Office action) to
provide an information disclosure statement, amendments, or an affidavit
or declaration after the filing of the request for continued examination.
Comment 21: Several comments suggest that the Office permit applicants
to submit an amendment canceling previously examined claims and
presenting claims to a previously non-elected invention (i.e., "switch
inventions") when filing a request for continued examination under
1.114.
Response: The Office does not consider it appropriate to permit an
applicant to accumulate patent term adjustment under 35 U.S.C. 154(b) on
the basis of the examination of a first elected invention and to apply
that patent term adjustment to a patent on a subsequently elected
(previously non-elected) invention. If the Office permits applicants to
submit an amendment canceling previously examined claims and presenting
claims to a previously non-elected invention when filing a request for
continued examination under 1.114, the applicant will be able to
accumulate patent term adjustment under 35 U.S.C. 154(b) on the basis of
the examination of a first elected invention and to apply that patent
term adjustment to a patent on a subsequently elected (previously
non-elected) invention. Thus, an applicant may not obtain examination of
a different or non-elected invention (e.g., a divisional) in a request
for continued examination under 1.114.
Comment 22: Several comments suggested that 1.116 should continue to
permit entry of an amendment after final rejection upon a showing of
good and sufficient reasons why the amendment is necessary and was not
presented earlier.
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Response: Section 1.116(c) permits entry of an amendment after final
rejection upon a showing of good and sufficient reasons why the
amendment is necessary and was not presented earlier.
Comment 23: One comment noted that 1.85(c) permitted applicants to
file corrected drawings after payment of the issue fee, and questioned
how minor amendments to the specification (for consistency with the
corrected drawings) may be filed after payment of the issue fee in view
of the changes to 1.312 and 1.313.
Response: Section 1.85 will be amended to provide that the three-month
period set in notice of allowability for submission of any outstanding
corrected or formal drawings is not extendable under 1.136(a) or (b).
Thus, any corrected or formal drawings (and conforming amendments to the
specification) should be submitted on or before the date the issue fee
is paid.
Comment 24: One comment suggested that the Office must allow for
amendments after payment of the issue fee because the Office often does
not rule on an amendment under 1.312 submitted prior to payment of
the issue fee until after the period for payment of the issue fee has
expired.
Response: Section 1.312 is not intended to be used for continued
examination of an application. See MPEP 714.16. Any amendments
considered necessary by the applicant should be completed before a
notice of allowance is issued in the application. Applicants should not
be submitting a series of amendments after issuance of a notice of
allowance to determine what changes the examiner will permit under
1.312.
Comment 25: One comment suggested that 1.313(a) be amended to state
that an application may be withdrawn from issue prior to payment of the
issue fee for consideration of a request for continued examination under
1.114. The comment argued that an applicant should not be forced to
pay the issue fee while waiting to see whether an application will be
withdrawn from issue to consider a request for continued examination
under 1.114.
Response: Section 1.313(a) is being amended to provide that it is not
necessary to file a petition to withdraw an application from issue if a
request for continued examination under 1.114 is filed prior to
payment of the issue fee.
Comment 26: One comment suggested that a grantable petition under
1.313(c) to withdraw an application from issue be considered effective
on the filing date of the petition, rather than on the date an Office
official acts on the petition.
Response: The withdrawal of an application from issue after payment of
the issue fee is not considered a ministerial act; rather, the Office
will withdraw an application from issue only when the Office determines
that the conditions specified in 1.313(b) or 1.313(c) are
satisfied. See Harley v. Lehman, 981 F. Supp. 9, 44 USPQ2d 1699 (D.D.C.
1997). Therefore, the Office does not consider it appropriate to
consider a petition to withdraw an application from issue after payment
of the issue fee to be effective on the filing date of the petition.
Classification
Administrative Procedure Act: The changes in this final rule concern
only the manner by which an applicant obtains continued examination of a
nonprovisional application, requests conversion of a provisional
application into a nonprovisional application, or claims the benefit of
a provisional application, as provided for in 4403 and 4801 of the
American Inventors Protection Act of 1999 (Title IV of S. 1948,
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incorporated into Pub. L. 106-113). Therefore, prior notice and an
opportunity for public comment are not required pursuant to 5 U.S.C.
553(b)(A) (or any other law), and thirty-day advance publication is not
required pursuant to 5 U.S.C. 553(d) (or any other law).
Regulatory Flexibility Act: As prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553 (or any other
law), the analytical requirements of the Regulatory Flexibility Act (5
U.S.C. 601 et seq.) are inapplicable.
Executive Order 13132: This final rule does not contain policies with
federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (August 4, 1999).
Executive Order 12866: This final rule has been determined to be not
significant for purposes of Executive Order 12866 (September 30, 1993).
Paperwork Reduction Act: This final rule involves information collection
requirements which are subject to review by the Office of Management and
Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501
et seq.). The collections of information involved in this final rule
have been reviewed and previously approved by OMB under the following
control numbers: 0651-0031, 0651-0032, and 0651-0033. The United States
Patent and Trademark Office is not resubmitting information collection
packages to OMB for its review and approval because the changes in this
final rule do not affect the information collection requirements
associated with the information collections under these OMB control
numbers.
The title, description, and respondent description of each of the
information collections are shown below with an estimate of each of the
annual reporting burdens. Included in each estimate is the time for
reviewing instructions, gathering and maintaining the data needed, and
completing and reviewing the collection of information. The principal
impact of the changes in this final rule is to implement the changes to
Office practice necessitated by 4403, 4801, and 4807 of the
American Inventors Protection Act of 1999.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers:
PTO/SB/08/21-27/30/31/42/43/61/62/63/64/67/68/91/92/96/97.
Type of Review: Approved through October of 2002.
Affected Public: Individuals or Households, Business or Other
For-Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 2,231,365.
Estimated Time Per Response: 0.46 hours.
Estimated Total Annual Burden Hours: 1,018,736 hours.
Needs and Uses: During the processing of an application for a patent,
the applicant/agent may be required or desire to submit additional
information to the United States Patent and Trademark Office concerning
the examination of a specific application.The specific information
required or which may be submitted includes: Information Disclosure
Statements; Terminal Disclaimers; Petitions to Revive; Express
Abandonments; Appeal Notices; Petitions for Access; Powers to Inspect;
Certificates of Mailing or Transmission; Statements under § 3.73(b);
Amendments, Petitions and their Transmittal Letters; and Deposit Account
Order Forms.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07/13PCT/17-19/29/101-110.
Type of Review: Approved through October of 2002.
Affected Public: Individuals or Households, Business or Other
For-Profit, Not-for-Profit Institutions and Federal Government.
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Estimated Number of Respondents: 334,100.
Estimated Time Per Response: 8.95 hours.
Estimated Total Annual Burden Hours: 2,990,260 hours.
Needs and Uses: The purpose of this information collection is to
permit the United States Patent and Trademark Office to determine
whether an application meets the criteria set forth in the patent
statute and regulations. The standard Fee Transmittal form, New Utility
Patent Application Transmittal form, New Design Patent Application
Transmittal form, New Plant Patent Application Transmittal form,
Declaration, and Plant Patent Application Declaration will assist
applicants in complying with the requirements of the patent statute and
regulations, and will further assist the United States Patent and
Trademark Office in processing and examination of the application.
OMB Number: 0651-0033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
Type of Review: Approved through September of 2000.
Affected Public: Individuals or Households, Business or Other
For-Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 135,250.
Estimated Time Per Response: 0.325 hour.
Estimated Total Annual Burden Hours: 43,893 hours.
Needs and Uses: This collection of information is required to
administer the patent laws pursuant to title 35, U.S.C., concerning the
issuance of patents and related actions including correcting errors in
printed patents, refiling of patent applications, requesting
reexamination of a patent, and requesting a reissue patent to correct an
error in a patent. The affected public includes any individual or
institution whose application for a patent has been allowed or who takes
action as covered by the applicable rules.
Comments are invited on: (1) whether the collection of information is
necessary for proper performance of the functions of the agency; (2) the
accuracy of the agency's estimate of the burden; (3) ways to enhance the
quality, utility, and clarity of the information to be collected; and
(4) ways to minimize the burden of the collection of information to
respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this burden,
to Robert J. Spar, Director, Office of Patent Legal Administration,
United States Patent and Trademark Office, Washington, D.C. 20231, or to
the Office of Information and Regulatory Affairs, OMB, 725 17th Street,
N.W., Washington, D.C. 20503, (Attn: Desk Officer for the United States
Patent and Trademark Office).
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of Information,
Inventions and patents, Reporting and record keeping requirements, Small
Businesses.
For the reasons set forth in the preamble, the interim rule amending 37
CFR Part 1 which was published at 65 FR 14865-14873 on March 20, 2000,
is adopted as final with the following changes:
PART 1 - RULES OF PRACTICE IN PATENT CASES
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1. The authority citation for 37 CFR Part 1 continues to read as follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.53 is amended by revising paragraph (c)(3) to read as
follows:
1.53 Application number, filing date, and completion of application.
* * * * *
(c) * * *
(3) A provisional application filed under paragraph (c) of this
section may be converted to a nonprovisional application filed under
paragraph (b) of this section and accorded the original filing date of
the provisional application. The conversion of a provisional application
to a nonprovisional application will not result in either the refund of
any fee properly paid in the provisional application or the application
of any such fee to the filing fee, or any other fee, for the
nonprovisional application. Conversion of a provisional application to a
nonprovisional application under this paragraph will result in the term
of any patent to issue from the application being measured from at least
the filing date of the provisional application for which conversion is
requested. Thus, applicants should consider avoiding this adverse patent
term impact by filing a nonprovisional application claiming the benefit
of the provisional application under 35 U.S.C. 119(e) (rather than
converting the provisional application into a nonprovisional application
pursuant to this paragraph). A request to convert a provisional
application to a nonprovisional application must be accompanied by the
fee set forth in 1.17(i) and an amendment including at least one
claim as prescribed by the second paragraph of 35 U.S.C. 112, unless the
provisional application under paragraph (c) of this section otherwise
contains at least one claim as prescribed by the second paragraph of 35
U.S.C. 112. The nonprovisional application resulting from conversion of
a provisional application must also include the filing fee for a
nonprovisional application, an oath or declaration by the applicant
pursuant to 1.63, 1.162, or 1.175, and the surcharge required by
1.16(e) if either the basic filing fee for a nonprovisional application
or the oath or declaration was not present on the filing date accorded
the resulting nonprovisional application (i.e., the filing date of the
original provisional application). A request to convert a provisional
application to a nonprovisional application must also be filed prior to
the earliest of:
(i) Abandonment of the provisional application filed under paragraph
(c) of this section; or
(ii) Expiration of twelve months after the filing date of the
provisional application filed under paragraph (c) of this section.
* * * * *
3. Section 1.103 is revised to read as follows:
1.103 Suspension of action by the Office.
(a) Suspension for cause. On request of the applicant, the Office may
grant a suspension of action by the Office under this paragraph for good
and sufficient cause.The Office will not suspend action if a reply by
applicant to an Office action is outstanding. Any petition for
suspension of action under this paragraph must specify a period of
suspension not exceeding six months. Any petition for suspension of
action under this paragraph must also include:
(1) A showing of good and sufficient cause for suspension of action;
and
(2) The fee set forth in 1.17(h), unless such cause is the fault
of the Office.
(b) Limited suspension of action in a continued prosecution
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application (CPA) filed under 1.53(d). On request of the applicant,
the Office may grant a suspension of action by the Office under this
paragraph in a continued prosecution application filed under 1.53(d)
for a period not exceeding three months. Any request for suspension of
action under this paragraph must be filed with the request for an
application filed under 1.53(d), specify the period of suspension,
and include the processing fee set forth in 1.17(i).
(c) Limited suspension of action after a request for continued
examination (RCE) under 1.114. On request of the applicant, the
Office may grant a suspension of action by the Office under this
paragraph after the filing of a request for continued examination in
compliance with 1.114 for a period not exceeding three months. Any
request for suspension of action under this paragraph must be filed with
the request for continued examination under 1.114, specify the period
of suspension, and include the processing fee set forth in 1.17(i).
(d) Notice of suspension on initiative of the Office. The Office will
notify applicant if the Office suspends action by the Office on an
application on its own initiative.
(e) Suspension of action for public safety or defense. The Office may
suspend action by the Office by order of the Commissioner if the
following conditions are met:
(1) The application is owned by the United States;
(2) Publication of the invention may be detrimental to the public
safety or defense; and
(3) The appropriate department or agency requests such suspension.
(f) Statutory invention registration. The Office will suspend action
by the Office for the entire pendency of an application if the Office
has accepted a request to publish a statutory invention registration in
the application, except for purposes relating to patent interference
proceedings under Subpart E of this part.
4. Section 1.114 is revised to read as follows:
1.114 Request for continued examination.
(a) If prosecution in an application is closed, an applicant may
request continued examination of the application by filing a submission
and the fee set forth in 1.17(e) prior to the earliest of:
(1) Payment of the issue fee, unless a petition under 1.313 is
granted;
(2) Abandonment of the application; or
(3) The filing of a notice of appeal to the U.S. Court of Appeals for
the Federal Circuit under 35 U.S.C. 141, or the commencement of a civil
action under 35 U.S.C. 145 or 146, unless the appeal or civil action is
terminated.
(b) Prosecution in an application is closed as used in this section
means that the application is under appeal, or that the last Office
action is a final action ( 1.113), a notice of allowance ( 1.311),
or an action that otherwise closes prosecution in the application.
(c) A submission as used in this section includes, but is not limited
to, an information disclosure statement, an amendment to the written
description, claims, or drawings, new arguments, or new evidence in
support of patentability. If reply to an Office action under 35 U.S.C.
132 is outstanding, the submission must meet the reply requirements of
1.111.
(d) If an applicant timely files a submission and fee set forth in
1.17(e), the Office will withdraw the finality of any Office action and
the submission will be entered and considered. If an applicant files a
request for continued examination under this section after appeal, but
prior to a decision on the appeal, it will be treated as a request to
withdraw the appeal and to reopen prosecution of the application before
the examiner.An appeal brief under 1.192 or a reply brief under
1.193(b), or related papers, will not be considered a submission under
this section.
(e) The provisions of this section do not apply to:
(1) A provisional application;
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1457 CNOG 1964 |
(2) An application for a utility or plant patent filed under 35
U.S.C. 111(a) before June 8, 1995;
(3) An international application filed under 35 U.S.C. 363 before
June 8, 1995;
(4) An application for a design patent; or
(5) A patent under reexamination.
5. Section 1.313 is amended by revising paragraphs (a) and (c)(2) to
read as follows:
1.313 Withdrawal from issue.
(a) Applications may be withdrawn from issue for further action at
the initiative of the Office or upon petition by the applicant. To
request that the Office withdraw an application from issue, applicant
must file a petition under this section including the fee set forth in
1.17(h) and a showing of good and sufficient reasons why withdrawal of
the application from issue is necessary. A petition under this section
is not required if a request for continued examination under 1.114 is
filed prior to payment of the issue fee.If the Office withdraws the
application from issue, the Office will issue a new notice of allowance
if the Office again allows the application.
* * * * *
(c) * * *
(2) Consideration of a request for continued examination in
compliance with 1.114; or
* * * * *
August 9, 2000 Q. Todd Dickinson
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1238 OG 13]