| Allowance, Patent Term Adjustment or Extension |
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(297) Department of Commerce
Patent and Trademark Office
37 CFR Part 1
[Docket No: 950620162-6014-02]
RIN 0651-AA75
Miscellaneous Changes in Patent Practice
Agency: Patent and Trademark Office, Commerce.
Action: Final Rule.
Summary: The Patent and Trademark Office (Office) is amending the rules
of practice in patent cases to implement a number of miscellaneous
changes proposed in the rulemaking entitled "Changes to Implement
18-Month Publication of Patent Applications" (Notice of Proposed
Rulemaking), published in the Federal Register at 60 FR 42352 (August
15, 1995), and in the Patent and Trademark Office Official Gazette 1177
Off. Gaz. Pat. Office 61 (August 15, 1995), that are not directly
related to the 18-month publication of patent applications. While the
proposed rule changes in the Notice of Proposed Rulemaking were designed
primarily to implement the changes in practice related to the
publication of patent applications provided for in H.R. 1733, these
miscellaneous proposed changes clarify current rules of practice,
without regard to the publication of patent applications.
Effective Date: September 23, 1996.
Sections 1.52(a) and (b), 1.58, 1.72(b), 1.75(g), (h) and (i), 1.77,
1.84(c), (f), (g) and (x), 1.96, 1.154, and 1.163 of 37 CFR apply to
applications filed on or after September 23, 1996.
For Further Information Contact: Stephen G. Kunin by telephone at (703)
305-8850, by facsimile at (703) 305-8825, by electronic mail at
rbahr@uspto.gov, or Jeffrey V. Nase by telephone at (703) 305-9285, or
by mail marked to the attention of Stephen G. Kunin, addressed to the
Assistant Commissioner for Patents, Washington, D.C. 20231. For copies
of the forms discussed in this final rule package, contact the Customer
Service Center of the Office of Initial Patent Examination at (703)
308-1214.
Supplementary Information
This final rule package is designed to implement the miscellaneous
changes set forth in the proposed rulemaking entitled "Changes to
Implement 18-Month Publication of Patent Applications" (Notice of
Proposed Rulemaking) that are not directly related to 18-month
publication of patent applications and that are considered desirable
even in the absence of an 18-month publication system.
The Notice of Proposed Rulemaking indicated that, in addition to
implementing the 18-month publication of patent applications, the Office
also proposed to: (1) clarify which applications claiming the benefit of
prior applications, or which prior applications for which a benefit is
claimed in a later application, will be preserved in confidence; (2)
amend the rules pertaining to the format and standards for application
papers and drawings to improve the standardization of patent
applications; (3) provide for those instances in which inventions of a
pending application or patent under reexamination and inventions of a
patent held by a single party are not identical, but not patentably
distinct; (4) clarify the practice for the delivery or mailing of
patents; (5) expedite the entry of international applications into the
national stage; and (6) amend a number of rules for consistency and
clarity. The Notice of Proposed Rulemaking stated that these proposed
rule changes may be adopted as final rules even in the absence of an
18-month publication system, and advised interested persons to comment
on any proposed rule change, regardless of whether H.R. 1733 is enacted.
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To avoid delays in the implementation of rule changes considered
desirable even in the absence of an 18-month publication system, this
final rule package provides for changes to 37 CFR §§ 1.12(c), 1.14,
1.52(a) and (b), 1.54, 1.58, 1.62(e) and (f), 1.72(b), 1.75(g), 1.77,
1.78(a) and (c), 1.84(c), (f), (g) and (x), 1.96, 1.97, 1.107, 1.110,
1.131, 1.132, 1.154, 1.163, 1.291, 1.292, 1.315, 1.321 and 1.497, and
adds new §§ 1.5(f), 1.75(h) and (i), and 1.130, all of which are based
upon the changes proposed in the Notice of Proposed Rulemaking.
Implementation of 18-month publication held in abeyance pending
Congressional action on H.R. 1733
The Notice of Proposed Rulemaking also proposed changes to 37 CFR
1.4, 1.5(a), 1.9, 1.11, 1.12(a) and (b), 1.13, 1.16, 1.17, 1.18, 1.19,
1.20, 1.24, 1.51, 1.52(d), 1.53, 1.55, 1.60, 1.78(a), 1.84(j), 1.85,
1.98, 1.108, 1.136, 1.138, 1.492, 1.494, 1.495, 1.701, 1.808, 3.31, 5.1,
new §§ 1.5(g), 1.306 through 1.308 and 5.9, and further changes to
§§ 1.14, 1.54, 1.62, 1.107, 1.131, 1.132, 1.291 and 1.292 to implement the
18-month publication of patent applications as contained in H.R. 1733
and provide procedures for the treatment of national security classified
applications. The adoption of changes to these rules is held in abeyance
pending Congressional action on H.R. 1733.
The proposed rule changes in the Notice of Proposed Rulemaking to
provide new procedures for the treatment of national security classified
applications are also being held in abeyance. These proposed rule
changes are separable from the implementation of 18-month publication;
however, they are sufficiently related to the implementation of 18-month
publication that they are also being held in abeyance pending
Congressional action on H.R. 1733.
In the event that H.R. 1733 is enacted, a final rule package to
implement this legislation will be published. Final rules to implement
18-month publication of patent applications based upon the Notice of
Proposed Rulemaking and the comments received in response to the Notice
of Proposed Rulemaking may be adopted without either an additional
public hearing or an additional proposal being published for comment.
Implementation of the miscellaneous changes proposed in the Notice of
Proposed Rulemaking
The following paragraphs of this section include: (1) a discussion of
the rules being added or amended in this final rule package, (2) the
reasons for those additions and amendments, and (3) an analysis of the
comments received in response to the Notice of Proposed Rulemaking.
Changes to proposed rules: These final rules contain a number of changes
to the text of the rules as proposed for comment. The significant
changes are discussed below. Familiarity with the Notice of Proposed
Rulemaking is assumed.
Sections 1.14(a) and (b) have been re-written for clarity. Section
1.14(a)(1) provides that patent applications are generally preserved in
confidence. Section 1.14(a)(2) sets forth the circumstances under which
status information concerning an application may be supplied, and
1.14(a)(3) sets forth the circumstances under which access to, or copies
of, an application may be provided. Section 1.14(b) provides that
abandoned applications may be destroyed after 20 years from their filing
date. The reference to paragraph (b) in § 1.14(e) has been deleted for
consistency with the changes to paragraphs (a) and (b) of § 1.14.
Section 1.52(a) is being changed to provide that all papers which are
to become a part of the permanent records of the Patent and Trademark
Office must be legibly "written either by a typewriter or mechanical
printer in permanent dark ink or its equivalent," rather than "typed in
permanent dark ink." This change will permit the filing of papers
printed by any computer operated printer, such as a laser printer which
uses toner rather than ink, and will avoid a conflict between § 1.52(a)
and Patent Cooperation Treaty (PCT) Rule 11.9. The phrase "when required
by the Office" was also added to § 1.52(a).
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Section 1.52(b) is being changed to provide that: (1) the application
papers must be plainly written with each page printed on only one side
of a sheet of paper, with the claim or claims commencing on a separate
sheet and the abstract commencing on a separate sheet; (2) the lines of
the specification, and any amendments to the specification, must be 1
1/2 or double spaced; and (3) the pages of the specification including
claims and abstract must be numbered consecutively, starting with 1, the
numbers being centrally located above or preferably, below, the text.
This change will clarify: (1) the separate sheet requirement for both
the claims and abstract, (2) that the lines of the papers not comprising
the specification and amendments thereto need not be 1 1/2 or double
spaced, and (3) that the specification, and not the transmittal sheets
or other forms, must be numbered.
Section 1.58 is being changed to provide that chemical and
mathematical formulae and tables must be presented in compliance with
1.52(a) and (b), except that chemical and mathematical formulae or
tables may be placed in a landscape orientation if they cannot be
presented satisfactorily in a portrait orientation. This replaces the
requirement that "[t]o facilitate camera copying when printing, the
width of formulas and tables as presented should be limited normally to
12.7 cm. (5 inches) so that it may appear as a single column in the
printed patent." However, chemical and mathematical formulae and tables
must still otherwise comply with §§ 1.52(a) and (b). This change will
avoid a conflict between § 1.58 and PCT Rule 11.10(d). Section 1.58 is
also being changed to require "0.21 cm." rather than "2.1 mm." to ensure
consistency.
Section 1.72 is being changed to provide that the abstract must
commence on a separate sheet, preferably following the claims. This
change will avoid renumbering pages of a specification submitted in the
arrangement set forth in § 1.77 when filing the application as an
international application.
Section 1.75(h) is being changed to provide that the claim or claims
must commence on a separate sheet. This change will clarify that § 1.75
requires that the claim or claims commence or begin on a separate sheet,
rather than requiring that all of the claims must be on a single
separate sheet or that each claim must be on a separate sheet.
Section 1.77 is being changed to position the abstract as element
"(12)" following the claims, rather than element "(3)" prior to the
first page of the specification to conform to § 1.72.
Section 1.78(a)(2) is being changed to replace the reference to
1.14(b) with a reference to § 1.14(a).
Section 1.78(c) is being changed to replace the phrase "[w]here an
application or a patent under reexamination and an application or a
patent" with the phrase "[w]here an application or a patent under
reexamination and at least one other application," since conflicting
claims between an application or a patent under reexamination and a
patent will be provided for in new 1.130. Section 1.78(c) is also
being changed to delete the sentence "[i]n addition to making said
statement, the assignee may also explain why an interference should or
should not be declared," since the Office will not, unless good cause is
shown, declare or continue an interference when the application(s) and
patent are owned by a single party.
Section 1.78(d) is removed. The provisions of § 1.78(d), as
proposed, are in new § 1.130(b), since § 1.130 provides for
conflicting claims between an application or a patent under
reexamination and a patent.
Section 1.84(x) is being changed from "[n]o holes should be provided
in the drawings sheets" to "[n]o holes should be made by the applicant
in the drawing sheets" to clarify that the application papers, including
drawings, should be submitted by the applicant without holes provided
therein, but that the Office will drill holes through the application
papers during the pre-examination processing of the application.
Section 1.96(b) is being changed to provide that a listing submitted
as part of the specification "must be direct printouts (i.e., not
copies) from the computer's printer" for clarity.
Section 1.96(c) is being changed to substitute a reference to 36 CFR
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Part 1230 (Micrographics) for the enumerated American National Standards
Institute (ANSI) and National Micrographics Association (NMA) standards.
As 36 CFR Part 1230 sets forth the micrographic requirements for
government records, it is appropriate to reference this provision,
rather than promulgate separate standards for micrographics employed in
patent applications.
Section 1.97 is being changed to delete any reference to a
reexamination proceeding or a patent owner. The submission of an
information disclosure statement during a reexamination proceeding is
governed by § 1.555(a).
Section 1.97(a) is being changed from "[i]n order for an applicant
for patent or for reissue of a patent to have information considered by
the Office during the pendency of a patent application, an information
disclosure statement in compliance with § 1.98 should be filed in
accordance with this section" to "[i]n order for an applicant for a
patent or for a reissue of a patent to have an information disclosure
statement in compliance with § 1.98 considered by the Office during the
pendency of the application, it must satisfy paragraph (b), (c), or (d)
of this section" for clarity. Sections 1.97(c) and (d) are also being
changed to clarify the conditions in § 1.97(c) under which a
certification as specified in § 1.97(e) or the fee set forth in
1.17(p) is required, and the conditions in § 1.97(d) under which a
certification as specified in § 1.97(e), a petition, and the petition
fee set forth in § 1.17(i) are required.
Section 1.110 is amended to change the reference to § 1.78(d) to a
reference to § 1.130 for consistency.
The proposed addition of a new § 1.131(a)(3) is being withdrawn in
this final rule package. This proposed change, as well as the provisions
of former § 1.78(d), has been re-written as a new § 1.130. New
1.130(a) will provide a procedure for the disqualification of a commonly
owned patent claiming a patentably indistinct but not identical
invention. New § 1.130(b) will include the provisions of former
1.78(d).
Section 1.131(a) is being changed to replace the phrase "U.S. patent
to another" with "U.S. patent to another or others." Section 1.154(a)(7)
is being changed to add "[f]eature" prior to "[d]escription," and
1.154(a)(8) is being changed to add "a single" prior to "claim."
Section 1.163 is being changed to position the abstract as element
"(11)" following the claims, rather than element "(3)" prior to the
first page of the specification. This change will parallel the change to
§ 1.77. In addition, § 1.163(c)(10) is being changed to add "a single"
prior to "claim."
Section 1.497(b)(2) is being changed to provide that "[i]f the person
making the oath or declaration is not the inventor, the oath or
declaration shall state the relationship of the person to the inventor,
the facts required by §§ 1.42, 1.43 or 1.47, and, upon information and
belief, the facts which the inventor would have been required to state"
to better set forth the requirements of an oath or declaration by a
person who is not the inventor. Section 1.497(c) is being changed to
delete the initial phrase "[t]he oath or declaration must comply with
the requirements of § 1.63; however," since it is unnecessary.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1 is amended as
follows:
Section 1.5(f) is added to provide that a paper concerning a
provisional application must identify the application as such and by the
application number.
Section 1.12 is amended to revise paragraph (c) to read "preserved in
confidence under § 1.14" for consistency with § 1.14.
Section 1.14 is amended to revise the title and paragraphs (a) and
(e) to read "preserved in confidence" for consistency with the language
in 35 U.S.C. 122.
Section 1.14(a) is amended to add a paragraph (a)(1) to provide that
patent applications are generally preserved in confidence pursuant to 35
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U.S.C. 122, and that no information will be given concerning the filing,
pendency, or subject matter of any application for patent, and no access
will be given to, or copies furnished of, any application or papers
relating thereto, except as set forth in § 1.14.
Section 1.14(a) is also amended to add a paragraph (a)(2) to provide
that status may be supplied: (1) concerning an application or any
application claiming the benefit of the filing date of the application,
if the application has been identified by application number or serial
number and filing date in a published patent document; (2) concerning
the national stage application or any application claiming the benefit
of the filing date of a published international application, if the
United States of America has been indicated as a Designated State in the
international application; or (3) when it has been determined by the
Commissioner to be necessary for the proper conduct of business before
the Office. Status information includes information such as whether the
application is pending, abandoned, or patented, as well as the
application number and filing date. The inclusion of applications
claiming the benefit of the filing date of applications so identified is
to avoid misleading the public in instances in which the application
identified as set forth in § 1.14(a)(2) is abandoned, but an
application claiming the benefit of the filing date of the identified
application (e.g., a continuing application) is pending.
Section 1.14(a) is also amended to add a new paragraph (a)(3) to
provide that access to, or copies of, an application may be provided:
(1) when the application is open to the public as provided in
1.11(b); (2) when written authority in that application from the
applicant, the assignee of the application, or the attorney or agent of
record has been granted; (3) when it has been determined by the
Commissioner to be necessary for the proper conduct of business before
the Office, or (4) to any person on written request, without notice to
the applicant, when the application is abandoned and available and is:
(a) referred to in a U.S. patent, (b) referred to in an application open
to public inspection, (c) an application which claims the benefit of the
filing date of an application open to public inspection, or (d) an
application in which the applicant has filed an authorization to lay
open the complete application to the public.
Section 1.14(b) is amended to provide that complete applications
(§ 1.51(a)) which are abandoned may be destroyed and hence may not be
available for access or copies as permitted by paragraph (a)(3)(iv) of
this section after 20 years from their filing date, except those to
which particular attention has been called and which have been marked
for preservation. The sentence in § 1.14(b) concerning the non-return
of abandoned applications is deleted as duplicative of the provision in
§ 1.59, which provides that papers in an application which has received
a filing date will not be returned, and is unrelated to the preservation
of applications in confidence under § 1.14.
Section 1.52(a) is amended to provide that all papers which are to
become a part of the permanent records of the Office must be legibly
written by a typewriter or mechanical printer in permanent dark ink or
its equivalent in portrait orientation on flexible, strong, smooth,
non-shiny, durable and white paper. Section 1.52(a) is further amended
to provide that the application papers must be presented in a form
having sufficient clarity and contrast between the paper and the writing
thereon to permit electronic reproduction by use of digital imaging and
optical character recognition, as well as the direct photocopy
reproduction currently provided for. Section 1.52(a) is further amended
to provide that substitute typewritten or mechanically printed papers
"will" be required if the original application papers are not of the
required quality. As any substitute typewritten or mechanically printed
papers containing the subject matter of the originally filed application
papers would constitute a substitute specification, the provisions of
1.125 governing the entry of a substitute specification would be
applicable, and § 1.52(a) is amended to include a specific reference to
§ 1.125.
Section 1.52(b) is amended to provide that the claim or claims must
commence on a separate sheet and the abstract must commence on a
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separate sheet. Section 1.72(b) provides that the abstract must commence
on a separate sheet, and § 1.75(h) provides that the claim or claims
must commence on a separate sheet. Section 1.52(b) is amended to provide
that the sheets of paper must all be the same size and either 21.0 cm.
by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches),
with a top margin of at least 2.0 cm. (3/4 inch), a left side margin of
at least 2.5 cm. (1 inch), a right side margin of at least 2.0 cm. (3/4
inch), and a bottom margin of at least 2.0 cm. (3/4 inch), and that no
holes should be made in the submitted paper sheets. Section 1.52(b) is
further amended to provide that the lines of the specification, and any
amendments to the specification, "must" be 1 1/2 or double spaced, and
that the pages of the specification "must" be numbered consecutively,
starting with page one, with the numbers being centrally located above
or below the text. Finally, § 1.52(b) is amended to specifically
reference drawings to clarify that drawings are part of the application
papers, but that the standards for drawings are set forth in 1.84.
The proposed changes to §§ 1.52(a) and (b), 1.58, 1.72(b), 1.75(g),
(h), and (i), 1.77, 1.84(c), (f), (g), and (x), 1.96, 1.154, and 1.163
pertaining to the format and standards for application papers and
drawings in the Notice of Proposed Rulemaking are considered desirable,
regardless of whether H.R. 1733 is enacted.
While the vast majority of applications currently comply with
§§ 1.52(a) and (b), 1.58, 1.72(b), 1.75(h), 1.84(c), (f), (g), and (x),
and 1.96 as adopted in this final rule, those applications which do not
comply with §§ 1.52(a) and (b), 1.58, 1.84(c), (f), (g), and (x), and
1.96 as adopted in this final rule (e.g., applications containing
hand-written papers) create an inordinate administrative burden on the
Office during the initial processing, examination, and publishing of the
application as a patent. In addition, the Office plans to replace or
augment the current microfilming process with electronic data capture of
at least the technical content (i.e., the specification, abstract,
claims and drawings) of the application-as-filed for internal Office
use, regardless of whether H.R. 1733 is enacted. Therefore, the Office
will no longer permit these relatively few applicants to submit
application papers and drawings that do not meet the standards set forth
in §§ 1.52(a) and (b), 1.58, 1.84(c), (f), (g), and (x), and 1.96 as
adopted in this final rule.
The application format set forth in §§ 1.75(g) and (i), 1.77,
1.154, and 1.163 as adopted in this final rule merely expresses the
Office's preferences for format of utility, design and plant
applications. They do not set forth mandatory requirements for
application papers and drawings.
Section 1.54(b) is amended to change "application serial number" to
"application number" for consistency with 1.5(a).
Section 1.58(b) is removed and is reserved as unnecessary in view of
the amendments to §§ 1.52(a) and (b).
Section 1.58(c) is amended to provide that chemical and mathematical
formulae and tables must be presented in compliance with §§ 1.52(a)
and (b), except that chemical and mathematical formulae or tables may be
placed in a landscape orientation if they cannot be presented
satisfactorily in a portrait orientation. Section 1.58(c) is further
amended to delete the following sentences to conform to the writing and
paper size and orientation limitations in §§ 1.52(a) and (b): (1)
"[t]o facilitate camera copying when printing, the width of formulas and
tables as presented should be limited normally to 12.7 cm. (5 inches) so
that it may appear as a single column in the printed patent"; (2) "[i]f
it is not possible to limit the width of a formula or table to 5 inches
(12.7 cm.), it is permissible to present the formula or table with a
maximum width of 10 3/4 inches (27.3 cm.) and to place it sideways on
the sheet"; and (3) "[h]and lettering must be neat, clean, and have a
minimum character height of 0.08 inch (2.1 mm.)." Section 1.58(c) is
further amended to insert "chosen" between "must be" and "from a block
(nonscript) type font." Section 1.58(c) is further amended to provide
metric dimensions with English equivalents in parentheticals, rather
than vice versa.
Section 1.62(e) is amended to change "application serial number" to
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"application number" for consistency with 1.5(a).
Section 1.62(f) is amended to change "secrecy" to "confidence" as is
found in 35 U.S.C. 122 and § 1.14, and change "37 CFR 1.14" to "1.14"
for consistency.
Section 1.72(b) is amended to provide that the abstract must
"commence," rather than "be set forth," on a separate sheet. This change
will conform the "separate sheet" requirement for the abstract with that
for the claims.
Section 1.75 is amended to include an amendment to paragraph (g), and
would add two new paragraphs. Section 1.75(g) is amended to add the
phrase "[t]he least restrictive claim should be presented as claim
number 1" to the beginning of the paragraph. Section 1.75(h) is added to
provide that the claim or claims must commence on a separate sheet.
Section 1.75(i) is added to provide that where a claim sets forth a
plurality of elements or steps, each element or step of the claim should
be separated by a line indentation.
Section 1.77 is amended to provide that the elements of the
application, if applicable, should appear in the following order: (1)
Utility Application Transmittal Form; (2) Fee Transmittal Form; (3)
title of the invention; or an introductory portion stating the name,
citizenship, and residence of the applicant, and the title of the
invention; (4) cross-reference to related applications; (5) statement
regarding federally sponsored research or development; (6) reference to
a "Microfiche appendix; (7) background of the invention; (8), brief
summary of the invention; (9) brief description of the several views of
the drawing; (10) detailed description of the invention; (11) claim or
claims; (12) abstract of the disclosure; (13) drawings; (14) executed
oath or declaration; and (15) sequence listing. The phrase "if
applicable" is inserted in the heading, rather than associated with any
particular listed element, to clarify that § 1.77 does not per se
require that an application include all of the listed elements, but
merely provides that any listed element included in the application
should appear in the order set forth in § 1.77. Section 1.77 is further
amended to provide that the (1) title of the invention; (2)
cross-reference to related applications; (3) statement regarding
federally sponsored research or development; (4) background of the
invention; (5) brief summary of the invention; (6) brief description of
the several views of the drawing; (7) detailed description of the
invention; (8) claim or claims; (9) abstract of the disclosure; and (10)
sequence listing, should appear in upper case, without underlining or
bold type, as section headings, and if no text follows the section
heading, the phrase "Not Applicable" should follow the section heading.
Finally, § 1.77 is amended to change the reference to § 1.96(b) in
1.77(a)(6) to § 1.96(c) for consistency with § 1.96.
Section 1.78(a)(2) is amended to replace the reference to § 1.14(b)
with a reference to § 1.14(a) for consistency with §§ 1.14(a) and (b)
as amended.
Section 1.78(c) is amended to change "two or more applications, or an
application and a patent" to "an application or a patent under
reexamination and at least one other application" such that the
provisions of § 1.78(c) will also be applicable to a patent under
reexamination. Section 1.78(c) is also amended to correct "inventors and
owned by the same party contain conflicting claims" to read "inventors
are owned by the same party and contain conflicting claims." Section
1.78(c) is also amended to delete the sentence "[i]n addition to making
said statement, the assignee may also explain why an interference should
or should not be declared."
Section 1.78(d) is removed. The provisions of former § 1.78(d), as
proposed, are in new § 1.130(b).
Section 1.84(c) is amended to provide that a reference to the
application number, or, if an application number has not been assigned,
the inventor's name, may be included in the left-hand corner of the
drawing sheet, provided that reference appears within 1.5 cm. (9/16
inch) from the top of the sheet.
Section 1.84(f) is amended to provide that the size of all drawing
sheets in an application must be either 21.0 cm. by 29.7 cm. (DIN size
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A4) or 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches) to conform to the
requirement in § 1.52(b) concerning papers in an application.
Section 1.84(g) is amended to delete the margin requirements for the
sheet sizes that are no longer acceptable in view of the changes to
1.84(f). Section 1.84(g) is further amended to provide that the sheets
should have scan targets (cross-hairs) on two catercorner margin
corners. Finally, § 1.84(g) is amended to increase the bottom and side
margins such that each sheet must include a top margin of at least 2.5
cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right
side margin of at least 1.5 cm. (9/16 inch), and a bottom margin of at
least 1.0 cm. (3/8 inch), thereby leaving a sight no greater than 17.0
cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets,
and a sight no greater than 17.6 cm. by 24.4 cm. (6 15/16 by 9 5/8
inches) on 21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets.
Section 1.84(x) is amended to delete the provisions indicating the
proper location for holes in a drawing sheet, and provide that no holes
should be provided in the drawing sheets.
Section 1.96 is amended to designate the text preceding current
paragraph (a) as paragraph (a) "General," and would redesignate current
paragraphs (a) and (b) as paragraphs (b) and (c), respectively. New
1.96(a) is further amended to insert a period between "specification"
and "[a] computer," to change "these rules" to "this section," and to
change "may be submitted in patent applications in the following forms"
to "may be submitted in patent applications as set forth in paragraphs
(b) and (c) of this section."
New § 1.96(b) is further amended to: (1) change the sentences "[t]he
listing may be submitted as part of the specification in the form of
computer printout sheets (commonly 14 by 11 inches in size) for use as
'camera ready copy' when a patent is subsequently printed" and "[s]uch
computer printout sheets must be original copies from the computer with
dark solid black letters not less than 0.21 cm. high, on white, unshaded
and unlined paper, the printing on each sheet must be limited to an area
9 inches high by 13 inches wide, and the sheets should be submitted in a
protective cover" to "[a]ny listing submitted as part of the
specification must be direct printouts (i.e., not copies) from the
computer's printer with dark solid black letters not less than 0.21 cm.
high, on white, unshaded and unlined paper, and the sheets should be
submitted in a protective cover"; (2) delete the sentence "[w]hen
printed in patents, such computer printout sheets will appear at the end
of the description but before the claims and will usually be reduced
about 1/2 in size with two printout sheets being printed as one patent
specification page"; and (3) delete the phrase "if the copy is to be
used for camera ready copy." New § 1.96(b)(1) provides that the
requirements of § 1.84 apply to computer program listings submitted as
sheets of drawings, and new § 1.96(b)(2) provides that the requirements
of § 1.52 apply to computer program listings submitted as part of the
specification.
New 1.96(c) is amended to: (1) change the references to
§ 1.77(c)(2) in § 1.96(c) to § 1.77(a)(6) for consistency with § 1.77;
(2) change "may" and "should" to "must"; (3) delete the sentence "[a]ll
computer program listings submitted on paper will be printed as part of
the patent"; (4) relocate the phrase "except as modified or clarified
below" in subsection (c)(2); (5) change the phrase "computer-generated
information submitted as an appendix to an application for patent shall
be in the form of microfiche in accordance with the standards" to
"computer-generated information submitted as a `microfiche appendix' to
an application shall be in accordance with the standards" for clarity;
(6) change the references to the specific American National Standards
Institute (ANSI) or National Micrographics Association (NMA) standards
with 36 CFR Part 1230; (7) change "serial number" to "application
number"; and (8) provide metric dimensions with English equivalents in
parentheticals, rather than vice versa.
Section 1.97(a) is amended to include the phrase "for an applicant
for patent or for reissue of a patent." Paragraphs (a)-(d) are amended
to include the phrase "by the applicant" to clarify that § 1.97 is not
available for any third party seeking to have information considered in
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a pending application. Any third party seeking to have information
considered in a pending application must proceed under § 1.291 or
1.292. As discussed supra, §§ 1.97(a), (c) and (d) are also being
amended for clarity. Section 1.97(c) is further amended to correct the
phrase "certification as specified in paragraph (3) of this section" to
read "certification as specified in paragraph (e) of this section."
Section 1.107 is amended to delete the phrase "and the classes of
inventions."
Section 1.110 is amended to change the reference to § 1.78(d) to a
reference to § 1.130 for consistency with the removal of § 1.78(d),
and the location of the provisions of former § 1.78(d) in § 1.130(b).
A new paragraph (a)(3) in § 1.131 was proposed in the Notice of
Proposed Rulemaking to permit a showing of prior invention in a pending
application or patent under reexamination to avoid a rejection under 35
U.S.C. 103 based upon a patent which qualifies as prior art only under
35 U.S.C. 102(a) or (e), where the application or patent under
reexamination and the patent upon which the rejection is based are both
owned by a single party, so long as the invention claimed in the pending
application or patent under reexamination and in the other patent are
not identical as set forth in 35 U.S.C. 102. Upon further study, it is
considered appropriate to disqualify such patents, and provide for the
obviation of judicially created double patenting rejections in an
application or a patent under reexamination by the filing of a terminal
disclaimer in accordance with § 1.321(c), in a separate § 1.130.
New § 1.130(a) provides that when any claim of an application or a
patent under reexamination is rejected under 35 U.S.C. 103 on a U.S.
patent to another or others which is not prior art under 35 U.S.C.
102(b), and the inventions defined by the claims in the application or
patent under reexamination and by the claims in the patent are
patentably indistinct but not identical as set forth in 35 U.S.C. 101,
and the inventions are owned by the same party, the applicant or owner
of the patent under reexamination may disqualify the patent as prior
art. Section 1.130(a) specifically provides that the patent can be
disqualified as prior art by submission of: (1) a terminal disclaimer in
accordance with § 1.321(c), and (2) an oath or declaration stating that
the application or patent under reexamination and the patent are
currently owned by the same party, and that the inventor named in the
application or patent under reexamination is the prior inventor under 35
U.S.C. 104.
Where inventions defined by the rejected claims in the application or
a patent under reexamination and by the claims in the patent upon which
the rejection is based are patentably distinct, the rejection may be
overcome pursuant to § 1.131. Since 1.130 applies only when
inventions defined by the claims in an application or a patent under
reexamination and by the claims in the patent are patentably indistinct,
§ 1.130 expressly provides that an oath or declaration submitted
pursuant to § 1.130 to disqualify a patent must be accompanied by a
terminal disclaimer in accordance with § 1.321(c).
As the conflict between two pending applications can be avoided by
filing a continuation-in-part application merging the conflicting
inventions into a single application, § 1.130 is limited to rejections
based upon a patent.
New § 1.130(b) includes the provisions of former § 1.78(d), as
proposed in the Notice of Proposed Rulemaking. Former § 1.78(d) was
proposed to be amended to change "obviousness-type double patenting
rejection" to "non-statutory double patenting rejections" as current
examining procedures authorize non-obviousness-type double patenting
rejections, as well as obviousness-type double patenting rejections (See
section 804(II) of the Manual of Patent Examining Procedure (MPEP)), and
either may be obviated by filing a terminal disclaimer in accordance
with § 1.321(c). The phrase "non-statutory double patenting rejection,"
however, is being replaced with "judicially created double patenting
rejection" to better set forth the legal basis for the rejection.
Section 1.78(d) was also proposed to be amended to change each
instance of "application" to "application or a patent under
reexamination" for consistency with § 1.321 and to clarify that double
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patenting is a proper consideration in reexamination (Ex parte Obiaya,
227 USPQ 58, 60-61 (Bd. Pat. App. & Inter. 1985)), and that a judicially
created double patenting rejection in a patent under reexamination may
be obviated by filing a terminal disclaimer in accordance with
1.321(c).
New § 1.130(b) specifically provides that where an application or a
patent under reexamination claims an invention which is not patentably
distinct from an invention claimed in a commonly owned patent with the
same or a different inventive entity, a double patenting rejection will
be made in the application or a patent under reexamination, and that a
judicially created double patenting reject § 1.321(c).
Section 1.131 is amended to change "U.S. patent to another" to "U.S.
patent to another or others" to parallel the language in 35 U.S.C.
102(a), as well as 35 U.S.C. 102(e).
Section 1.132 is amended to change "domestic patent" to "U.S.
patent," and "does not claim the invention" to "does not claim the same
patentable invention, as defined in § 1.601(n)" for consistency with
1.131.
Section 1.154 is amended to provide that the elements of a design
application, if applicable, should appear in the following order: (1)
Design Application Transmittal Form; (2) Fee Transmittal Form; (3)
preamble, stating name of the applicant and title of the design; (4)
cross-reference to related applications; (5) statement regarding
federally sponsored research or development; (6) description of the
figure or figures of the drawing; (7) feature description; (8) a single
claim; (9) drawings or photographs; and (10) executed oath or
declaration. The phrase "[t]he following order of arrangement should be
observed in framing design specifications" is changed to "[t]he elements
of the design application, if applicable, should appear in the following
order" to clarify that § 1.154 does not per se require that an
application include all of the listed elements, but merely provides that
any listed element included in the application should appear in the
order set forth in § 1.154. This amendment to § 1.154, however, does
not modify the current requirement that an application for a design
patent have but a single claim.
A new § 1.163(c) is added to provide that the elements of a plant
application, if applicable, should appear in the following order: (1)
Plant Application Transmittal Form; (2) Fee Transmittal Form; (3) title
of the invention; (4) cross-reference to related applications; (5)
statement regarding federally sponsored research or development; (6)
background of the invention; (7) brief summary of the invention; (8)
brief description of the drawing; (9) detailed botanical description;
(10) a single claim; (11) abstract of the disclosure; (12) drawings (in
duplicate); (13) executed oath or declaration; and (14) Plant Color
Coding Sheet. The phrase "if applicable" is included in the heading,
rather than associated with any particular listed element, to clarify
that § 1.163 does not per se require that an application include all of
the listed elements, but merely provides that any listed element
included in the application should appear in the order set forth in
§ 1.163. This amendment to § 1.163, however, does not modify the current
requirement that an application for a plant patent have but a single
claim.
A new § 1.163(d) is added to define a plant color coding sheet. A
plant color coding sheet is a sheet that specifies a color coding system
as designated in a color dictionary, and lists every plant structure to
which color is a distinguishing feature and the corresponding color code
which best represents that plant structure. The plant color coding sheet
will provide a means for applicants to uniformly convey detailed color
characteristics of the plant. Providing this information in a systematic
manner will facilitate the examination of the application.
Section 1.291 is amended to provide that a protest must be filed
prior to the mailing of a Notice of Allowance to be considered timely.
As a protest cannot be considered subsequent to issuance of the
application as a patent, § 1.291(b) is amended to provide that the
protest will be considered if the application is still pending when the
protest and application file are provided to the examiner (i.e., that
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the application was pending at the time the protest was filed would be
immaterial to its ultimate consideration). Finally, the sentences
"[p]rotests raising fraud or other inequitable conduct issues will be
entered in the application file, generally without comment on those
issues" and "[p]rotests which do not adequately identify a pending
patent application will be disposed of and will not be considered by the
Office" in § 1.291 are changed to "[p]rotests raising fraud or other
inequitable conduct issues will be entered in the application file,
generally without comment on those issues" and "[p]rotests which do not
adequately identify a pending patent application will be returned to the
protestor and will not be further considered by the Office,"
respectively, and are located in paragraph (b). The Office will
acknowledge protests prior to their entry into the application file or
return to the protestor, as appropriate.
Section 1.292 is amended to delete the phrase "is filed by one having
information of the pendency of an application" as unnecessary, and would
move the requirement for the fee set forth in § 1.17(j) from paragraph
(a) to paragraph (b) where the conditions for entry of a petition for
the institution of public use proceedings are set forth. Section 1.292
is amended to further required § 1.248, or be filed with the Office in
duplicate in the event that service on the applicant is not possible.
Finally, § 1.292 is amended to provide that a petition to institute
public use proceedings to be considered timely must be filed prior to
the mailing of a Notice of Allowance.
Section 1.315 is amended to change "the attorney or agent of record,
if there be one; or if the attorney or agent so request, to the patentee
or assignee of an interest therein; or, if there be no attorney or
agent, to the patentee or to the assignee of the entire interest, if he
so request" to "the correspondence address of record. See § 1.33(a)."
This change is to simplify § 1.315, and because patents are currently
mailed to the patentee at the correspondence address of record.
Section 1.321(c) is amended to change "double patenting rejection" to
"judicially created double patenting rejection" for consistency with
1.78(c) and to clarify that the filing of a terminal disclaimer is
ineffective to overcome a statutory double patenting rejection.
Section 1.497(a) is amended to provide that an applicant in an
international application must file an oath or declaration that: (1) is
executed in accordance with either §§ 1.66 or 1.68, (2) identifies the
specification to which it is directed, (3) identifies each inventor and
the country of citizenship of each inventor, and (4) states that the
person making the oath or declaration believes the named inventor or
inventors to be the original and first inventor or inventors of the
subject matter which is claimed and for which a patent is sought, rather
than an oath or declaration in accordance with § 1.63, to enter the
national stage pursuant to §§ 1.494 or 1.495. Currently, the failure
to file an oath or declaration in strict compliance with § 1.63 results
in non-compliance with § 1.497, and thus 35 U.S.C. 371, which in turn
delays the entry of the international application into the national
stage. To expedite the entry of international applications into the
national stage, § 1.497(a) is amended to require only an oath or
declaration that is properly executed, identifies the specification to
which it is directed, and, as required by 35 U.S.C. 115, identifies each
inventor and the country of citizenship of each inventor and states that
the person making the oath or declaration believes the named inventor or
inventors to be the original and first inventor or inventors of the
subject matter which is claimed and for which a patent is sought.
Section 1.497(b) is subdivided into paragraphs (b)(1) and (b)(2).
Section 1.497(b)(1) is amended to provide that the oath or declaration
must be made by all of the actual inventors except as provided for in
§§ 1.42, 1.43 or 1.47. Section 1.497(b)(2) is amended to change "[i]f the
international application was made as provided in §§ 1.422, 1.423 or
1.425, the applicant shall state his or her relationship to the inventor
and, upon information and belief, the facts which the inventor is
required by § 1.63 to state" to "[i]f the person making the oath or
declaration is not the inventor, the oath or declaration shall state the
relationship of the person to the inventor, the facts required by
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§§ 1.42, 1.43 or 1.47, and, upon information and belief, the facts which
the inventor would have been required to state."
Section 1.497(c) is added to provide that the oath or declaration
must comply with the requirements of § 1.63. Section 1.497(c) further
provides that in instances where the oath or declaration does not comply
with 1.63, but meets the requirements of §§ 1.497(a) and (b), the
oath or declaration will be accepted as complying with 35 U.S.C.
371(c)(4) and §§ 1.494(c) or 1.495(c), thus permitting the application
to enter the national stage and the assignment of dates under 35 U.S.C.
102(e) and 371(c). A supplemental oath or declaration in compliance with
§ 1.63, however, will be required in accordance with § 1.67.
Response to Comments
Two hundred and forty-two written comments were received in response
to the Notice of Proposed Rulemaking. A public hearing was held on
September 19, 1995. Eight persons testified at the public hearing.
The written comments, and the testimony at the public hearing, have
been analyzed. In the event that H.R. 1733 is enacted, the comments
directed to the proposed changes to the rules of practice to implement
the 18-month publication of patent applications will be considered and
addressed in the final rule package to implement 18-month publication.
Responses to the comments germane to the changes in this final rule
package follow.
Comment (1): One comment suggested that, in the absence of an 18-month
publication system, the proposed rules relating to application format
and standardization of applications be republished to give the public an
opportunity to comment on the desirability of these changes in the
absence of an 18-month publication system.
Response: The Notice of Proposed Rulemaking specifically stated that the
proposed rules relating to application format and standardization of
applications may be adopted as final rules even in the absence of an
18-month publication system, and specifically advised interested members
of the public to comment on the advisability of the proposed rules
relating to application format and standardization of applications,
regardless of the legislative action on H.R. 1733. Thus, the public was
given an opportunity to comment on the desirability of these changes in
the absence of an 18-month publication system. Because the
standardization of applications is generally favored and will
substantially improve the Office's ability to efficiently and
effectively process applications, delaying their adoption as final rules
is not justified.
Comment (2): One comment stated that the Office has the authority to
require that applications be submitted in computer- readable form, and
in fact requires sequence listings to be submitted in such form. The
comment suggested that the cost of electronically scanning application
papers, as well as errors in scanning the application papers, can be
avoided by requiring applicants to provide the specification in
computer-readable form. Another comment stated that the Office has the
authority to permit electronic filing, and electronic filing should be
permitted. Several other comments indicated that scanning an application
into a data base, rather than permitting applicants to provide a copy of
the application on an electronic medium, is more costly, and is further
more likely to introduce errors that could render text searching
unreliable. And, several comments suggested that the scanning and
typesetting costs associated with the current publication process for
issued patents could be reduced by the acceptance of electronic media in
place of or in addition to the paper medium currently provided for in
the rules of practice. These comments further suggested that the Office
should establish fees that reflect the reduced cost to the Office when a
copy of an application is provided on an electronic medium (i.e., should
establish reduced fees for those who submit a copy of their application
on an electronic medium), which fee structure would provide an incentive
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to supply a copy of an application on an electronic medium.
Response: As discussed in the Notice of Proposed Rulemaking, while the
Office is considering the legislative and regulatory changes that would
be necessary to permit purely electronic filing of application papers,
it does not currently have in place an automated system for the
acceptance and processing of application papers in electronic form,
other than for sequence listings. Moreover, the Office does not
currently have the statutory authority to rebate statutory patent filing
fees to reflect any reduced cost to the Office due to the submission of
a copy of an application on an electronic medium. The Office will give
the comments further consideration as it designs and develops the Patent
Application Management (PAM) system.
Comment (3): Several comments noted that §§ 1.52(a) and (b) impose a
standard on applicants not currently observed by the Office, and
questioned whether papers in the application file prepared by the Office
will comply with §§ 1.52(a) and (b).
Response: Sections 1.52(a) and (b) apply to the application papers, and
amendments or corrections thereto. As such, §§ 1.52(a) and (b) do not
apply to those papers in the application file prepared by the Office,
since they do not become part of the printed patent.
Comment (4): One comment noted that proposed § 1.52 appears to be
neutral with regard to numbering the lines (e.g., a line number every
five lines) of the specification, and suggested that line numbering is a
beneficial practice which should be permitted, and even encouraged.
Response: Section 1.52 neither requires nor prohibits line numbering.
Applicants are encouraged, but not required, to number the lines of the
specification. The Office will give the suggestion further study and
consideration in future rulemaking.
Comment (5): One comment noted that when paragraphs are separated by a
blank line only (i.e., no indentation) and end between pages, it is not
possible to tell that a paragraph break occurred. The comment suggested
that the application format requirements should additionally require an
indentation at the beginning of each new paragraph.
Response: It is desirable that a specification include an indentation at
the beginning of a new paragraph. This requirement, however, was not
proposed for comment in the Notice of Proposed Rulemaking. In addition,
PCT Rule 11 does not require that the beginning of each new paragraph in
the specification be indented.
Comment (6): One comment noted that § 1.52(a) would prohibit
handwriting or hand-printing on papers which are to become permanent
Office records. The comment questioned whether this requirement would
also apply to papers issued in the Office. The comment suggested
revising Office practice to prohibit an examiner from handwriting
comments on official papers (e.g., advisory actions or interview summary
records) because: (1) the handwriting is not always decipherable, and
(2) the handwriting as it comes through on the carbon copies furnished
to applicants is frequently too light at least in part to be
decipherable.
Response: The Office's goal is to create a readable administrative
record of the prosecution of every application. The Office is currently
designing, testing and implementing electronic forms and Office action
writing software to avoid or minimize the need for hand-writing/printing
in Office communications. Any applicant receiving an Office
communication in which the handwriting is not decipherable, or does not
adequately appear on the carbon copies to be decipherable, should
request a legible copy of such communication from the Office.
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Comment (7): Several comments noted that the limitations in
§§ 1.52(a) and (b) regarding "typed" and "ink" appear to exclude computer
and laser printers, as well as commercially or mechanically printed
papers such as declaration forms. Another comment noted that the
limitations in §§ 1.52(a) and (b) regarding "typed" and "ink" are more
restrictive than PCT Rule 11.9(a) and (d).
Response: The phrase "printed" was proposed to be deleted since it could
be read to mean that hand-printing is acceptable. Section 1.52(a) will
require, in part, that "[a]ll papers which are to become a part of the
permanent records of the Patent and Trademark Office must be legibly
written either by a typewriter or mechanical printer in permanent dark
ink or its equivalent in portrait orientation on flexible, strong,
smooth, non-shiny, durable, and white paper." This will clarify that
papers printed by a computer-operated laser, or any mechanical printer
are acceptable, but that hand-printed papers are not. This change will
also avoid inconsistencies with the requirements of PCT Rule 11.9.
Comment (8): One comment noted that the proposed changes to § 1.52(a)
did not include any limitations regarding permissible type fonts. The
comment questioned, since the purpose of the proposed rule change was to
permit optical character recognition (OCR) scanning of the application
papers, whether script fonts would be permissible.
Response: Section 1.52(a) does not include any express prohibition
against the use of script fonts. Nevertheless, § 1.52(a) requires that
"the application papers must be presented in a form having sufficient
clarity and contrast between the paper and the writing thereon to
permit . . . electronic reproduction by use of digital imaging and optical
character recognition." Any application papers, including application
papers containing a script font, that are not in a form having
sufficient clarity and contrast between the paper and the writing
thereon to permit electronic reproduction by use of digital imaging and
optical character recognition will be objected to as not in compliance
with § 1.52(a). Therefore, the Office cautions applicants not to submit
application papers having script fonts.
Comment (9): One comment noted that § 1.52(b) would require that all
papers (including drawings per proposed § 1.84) be limited to either
DIN size A4 or 8 1/2 by 11 inches, which would eliminate the currently
allowed paper sizes of 8 1/2 by 13 or 14 inches. The comment questioned
whether this would also apply to the official papers issued by the
Office, noting that the Office currently issues papers having a paper
size mix of 8 1/2 by 11, 13, and 14 inches, which presents problems for
applicants. The comment suggested that the Office should not issue
papers of a size not permitted in § 1.52.
Response: The Office is currently in the process of standardizing to
either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm.
(8 1/2 by 11 inches).
Comment (10): One comment suggested that the Office should not issue
papers with writing on the back side in accordance with § 1.52(b).
Response: The Office currently includes informational language on the
back side of certain forms. The alternatives to issuing such forms with
writing on the back side are: (1) not providing this information to
applicants, (2) reducing the print size to permit all of the information
to be located on the front of the form, or (3) routinely providing
multiple page forms. Since none of the alternatives are preferable to
simply including informational language on the back side of certain
forms, the Office will continue to include information language on the
back of papers issued by the Office, until it fully transforms all of
its forms to electronically generated forms.
Comment (11): One comment questioned whether the phrase "claims on a
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separate sheet" in § 1.52(b) means that: (1) all of the claims must
appear on a single separate sheet, (2) each claim must appear on a
separate sheet, or (3) the claims (claim 1) must begin or commence on a
separate sheet. The comment suggested the PCT wording that the claims
shall commence on a separate sheet if the rule is intended to require
that the claims (claim 1) must begin or commence on a separate sheet.
Response: The phrase has been changed to "the claim or claims commencing
on a separate sheet" to clarify that the claims must begin or commence
on a separate sheet to parallel PCT requirements. Thus, §§ 1.52(b) and
1.75(h) require that the claims (claim 1) must begin or commence on a
separate sheet. Sections 1.52(b) and 1.75(h) do not require that all of
the claims be set forth on a single sheet, or that each claim be set
forth on a separate sheet.
Comment (12): One comment questioned whether the phrase "abstract and
claims on a separate sheet" in § 1.52(b) means that the abstract is to
be on one separate sheet, and the claims are to be (or commence) on
another separate sheet.
Response:The phrase has been changed to "the claim or claims commencing
on a separate sheet and abstract commencing on a separate sheet" to
clarify that the claims must commence on one separate sheet and the
abstract must commence on another separate sheet.
Comment (13): One comment noted that the requirement in § 1.52(b), as
proposed, will require that the lines in the oath or declaration, as
well as quotations from the rules, the MPEP, and court decisions in
subsequently filed amendments, be 1 1/2 or double spaced, and is
inconsistent with the forms included for comment with the Notice of
Proposed Rulemaking.
Response: Section 1.52(b) has been changed to require, inter alia, that
"[t]he lines of the specification, and any amendments to the
specification, must be 1 1/2 or double spaced." The requirement for
1 1/2 or double spacing will not apply to oaths or declarations,
pre-printed forms, or all of the statements in the "Remarks" section of
an amendment. Applicants are nevertheless requested to submit papers
with lines 1 1/2 or double spaced, except in standardized forms or where
single-spacing may be stylistically necessary (e.g., block quotations).
Comment (14): One comment questioned whether the requirement in
§ 1.52(b), as proposed, that papers have lines 1 1/2 or double spaced will
apply to Office actions. The comment suggested that not placing block
quotations from the statutes and regulations in single spacing will
decrease the readability of Office actions.
Response: As discussed supra, §§ 1.52(a) and (b) are designed to
facilitate patent printing and do not apply to Office actions. Section
§ 1.52(b) has been changed to require, inter alia, that "[t]he lines of
the specification, and any amendments to the specification, must be
1 1/2 or double spaced." Therefore, the requirement for 1 1/2 or double
spaced lines will not apply to Office actions.
Comment (15): Several comments objected to the requirement that tables
be in portrait orientation as inconsistent with PCT rules, and as
causing tables to be split over multiple pages.
Response: The suggestions are adopted. Section 1.58 will state that
"[c]hemical and mathematical formulae and tables must be presented in
compliance with §§ 1.52(a) and (b), except that chemical and
mathematical formulae or tables may be placed in a landscape orientation
if they cannot be presented satisfactorily in a portrait orientation,"
rather than "[t]o facilitate camera copying when printing, the width of
formulae and tables as presented should be limited normally to 12.7 cm.
(5 inches) so that it may appear as a single column in the printed
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patent."
Comment (16): One comment stated that § 1.72 is contrary to PCT Rule
11.4(a), and will require renumbering of the application pages for later
filing of that application in the European Patent Office (EPO) or under
the PCT.
Response: Section 1.72, as proposed in the Notice of Proposed
Rulemaking, provided that the abstract be "preferably prior to the first
page of the specification," and, as such, merely expressed the Office's
preference for the location of the abstract as prior to the first page
of the specification. Nevertheless, to avoid the undesirable result of
requiring an applicant who submitted an application in the format set
forth in § 1.77 to renumber the specification pages for filing that
application in the EPO or under the PCT, § 1.72 is changed to state
that the preferable location of the abstract is following the claims.
Comment (17): One comment stated that requiring that the rarely used
section headings (e.g., statement regarding federally sponsored research
and development) be followed by the phrase "not-applicable" is
confusing.
Response: Section 1.77 is permissive rather than mandatory. As such, any
applicant finding the format suggested therein to be confusing is at
liberty to simply include those section headings applicable to the
particular application. The use of each section heading, even when the
section is "not-applicable," is desirable in that it apprises the Office
that the section at issue has been considered and deemed inapplicable.
Simply not providing a section heading is ambiguous as to whether the
applicant considers the section inapplicable or has not considered
whether the section is applicable to the application. In addition, the
use of such section headings will be of greater benefit when the Office
implements procedures to permit the electronic filing of patent
applications.
Comment (18): One comment stated that the requirements set forth in
1.77 are in addition to those required by the PCT. The comment argued
that the Office cannot require international applications entering the
national stage under 35 U.S.C. 371 to comply with these requirements.
Response: As discussed supra, § 1.77 merely expresses the Office's
preference for the arrangement of the application elements. The Office
may advise an applicant that the application does not comply with the
format set forth in § 1.77, and suggest this format for the applicant's
consideration; however, the Office will not require any application to
comply with the format set forth in § 1.77. Therefore, there is no
conflict between § 1.77 and the PCT.
Comment (19): One comment noted that §§ 1.154 and 1.163 apply to
design and plant applications, and, as such, they are not in conflict
with PCT Rules. The comment suggested that it would, however, be
preferable that all types of U.S. applications maintain the same order
of application elements, and that this order be the order set forth by
the PCT Rules.
Response: As discussed supra, the arrangement of the elements of an
application set forth in § 1.77 is not mandatory, and, as such, § 1.77
is not in conflict with the PCT or PCT Rules. Section 1.77 merely
expresses the Office's preference for the arrangement of the elements of
an application. The Office's preference for the format of design
applications (§ 1.154) and plant applications (§ 1.163) is the same as
the Office's preference for utility applications (§ 1.77).
Comment (20): One comment stated that in the absence of statutory
requirements for the application elements proposed in §§ 1.77, 1.154,
and 1.163, the rule should clearly state that these application elements
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or arrangements are preferred but not mandatory.
Response: Sections 1.77, 1.154, and 1.163 employ the phrase "should"
rather than "must," which is the language of a precatory statement.
Therefore, §§ 1.77, 1.154, and 1.163 currently state that these
application elements or arrangements are preferred, but are not
mandatory.
Comment (21): One comment questioned whether the Application
Transmittal Form, and Fee Transmittal Form set forth in § 1.77 should
be numbered pages 1 and 2 pursuant to § 1.52, and further questioned
where the drawings and oath or declaration are to be numbered.
Response: Section 1.52 has been changed to provide that the pages of the
specification, not the application, should be consecutively numbered
beginning with page 1. The Application Transmittal Form, and Fee
Transmittal Form set forth in § 1.77 are not part of the specification.
As such, they should not be numbered as pages 1 and 2, respectively.
Likewise, the drawings and oath or declaration are not part of the
specification, and need not be numbered.
Comment (22): One comment stated that the failure to include the phrase
"not applicable" by all of the application elements not required by
statute or regulation rendered it unclear as to whether the Office would
object to the lack of an application element for which the phrase "not
applicable" is not included.
Response: The Office anticipates that an applicant choosing to use the
Transmittal forms provided by the Office will arrange his or her
application in the format suggested by the Office. The patent statutes
and regulations set forth the requirements for a complete application,
as well as the requirements for obtaining a filing date in an
application. Applications are examined for compliance with the patent
statutes and regulations, not for consistency with any particular
transmittal form.
Comment (23): One comment noted, in regard to § 1.84(c), that the
drawings of an international application, which are often used for
processing in the Office, will have the World Organization (WO)
publication number and International Bureau (IB) publication date on the
top of the drawing.
Response: The WO publication number and IB publication date placed on
the top of the drawing of an international application is not
objectionable under § 1.84(c).
Comment (24): One comment stated that the scan target points conflict
with PCT Rule 11.6(e). As such, the scan target points would have to be
removed from applications to be filed as an international application.
The comment further stated that these target points are unnecessary in
view of the paper size and margin requirements.
Response: Section 1.84(g) states that drawings "should," and not "must,"
have scan target points printed on two catercorner margin corners. Thus,
§ 1.84(g) merely expresses the Office's preference for scan target
points on the drawings for filming and printing purposes, which are
considered desirable due to the different sights on 21.0 cm. by 29.7 cm.
(DIN size A4) and 21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing
sheets. An applicant wishing to provide scan target points on drawings
that will later be filed in the EPO may simply copy the drawings to be
filed in the EPO, place the scan target points only on the Office copy
of the drawings, and submit the copy of the drawings containing the scan
target points to the Office. Likewise, applicants filing drawings that
were previously filed in the EPO should simply add scan target points
only to the copy of the drawings to be filed in the Office.
Nevertheless, as § 1.84(g) merely expresses a preference for scan
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target points for Office filming and printing purposes, an applicant
intending to later file the application in the EPO, or any applicant, is
at liberty to not include such scan target points on the drawings. The
Office will not object to the absence of scan target points on any
drawings filed in the Office. Therefore, § 1.84(g) does not include a
requirement in excess of, or inconsistent, with PCT Rules.
Comment (25): One comment stated that the term "catercorner" is slang,
and suggested that it be replaced in § 1.84(g) with a phrase such as
"diagonally opposite."
Response: The term "catercorner" is not slang. While there are a number
of acceptable English phrases to denote diagonally opposite, the term
"catercorner" was selected to avoid using a multiple word phrase where a
single word will suffice.
Comment (26): One comment stated that the language proposed to be added
to § 1.97 regarding a reexamination or patent owner is inconsistent
with § 1.533 and suggested that it be deleted.
Response: The suggestion is adopted.
Comment (27): One comment stated that § 1.131 does not specify whether
the phrase "application" includes provisional applications. The comment
suggested that § 1.131 be amended to state "unless the date of such
patent or publication is more than one year prior to the earliest date
on which the inventor's or patent owner's application or provisional
application from which that application claims priority therefrom was
filed in this country."
Response: The proposed change to § 1.131 is not adopted. It is well
established that the filing date of any abandoned application co-pending
with and referred to in a patent is the effective date of the patent
with respect to the common subject matter disclosed in the patent and
abandoned application. See In re Switzer, 166 F.2d 827, 77 USPQ 156
(CCPA 1948). Section 1.131 does not make a specific reference to
nonprovisional applications for which a benefit is claimed under 35
U.S.C. 120; however, it is understood that the effective date of any
patent sought to be antedated pursuant to 1.131 is the earliest
filing date of any application to which the patent is entitled to under
35 U.S.C. 120 with respect to the common subject matter disclosed in the
patent and the application. The provisions of title 35, except for 35
U.S.C. 115, 131, 135 and 157, apply to provisional applications. 35
U.S.C. 111(b)(8). It is therefore likewise unnecessary to specifically
reference provisional applications in 1.131.
Comment (28): Several comments objected to §§ 1.291 and 1.292 as
pre-grant opposition, especially in view of the pre-grant publication of
pending applications that would be provided for in H.R. 1733, if
enacted, and the expanded reexamination that would be provided for in
H.R. 1732, if enacted. The comments either suggested that the protest
and public use proceeding provisions of §§ 1.291 and 1.292 be severely
limited or abolished.
Response: The changes to §§ 1.291 and 1.292 place greater obligations
on third parties seeking to use these sections. As such, this rule
change does not add to any third party's ability to participate in the
prosecution of a pending application. Nevertheless, as neither H.R. 1732
nor H.R. 1733 has presently been enacted, analysis of whether
modification of §§ 1.291 and 1.292 in addition to that proposed in the
Notice of Proposed Rulemaking is desirable in a pre-grant publication or
expanded reexamination system is held in abeyance pending enactment of
H.R. 1733 or 1732.
Comment (29): One comment noted that any standardization of patent
applications should not include pre-printed forms taking eleven hours to
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complete. The comment further suggested that word-processor versions of
any collection of information, rather than pre-printed forms, would be
of greater assistance to members of the public.
Response: Initially, the Notice of Proposed Rulemaking indicated that
the initial patent application (e.g., the specification, drawings, as
well as the standard forms), not merely the proposed standardized forms,
is a collection of information estimated to average eleven hours to
complete. The Notice of Proposed Rulemaking stated that the public
reporting burden for these collections of information is estimated to
average: (1) twelve minutes per response for the Fee Transmittal form,
(2) twelve minutes per response for the Utility Patent Application
Transmittal form, (3) twelve minutes per response for the Design Patent
Application Transmittal form, (4) twelve minutes per response for the
Plant Patent Application Transmittal form, (5) twelve minutes per
response for the Plant Color Coding Sheet, (6) twenty-four minutes per
response for the Declaration form, and (7) twenty-four minutes per
response for the Plant Patent Application Declaration. Nevertheless, the
final rules do not require the use of any standardized form. The Office
publishes standardized forms only as an aid to practitioners and
applicants.
Comment (30): One comment questioned whether use of the standardized
versions of the various forms would be required. Another comment stated
that the Office has no authority to require the use of the published
forms in the absence of statutory authority.
Response: Use of the forms included for comment with the Notice of
Proposed Rulemaking is not mandatory. That is, an applicant need not use
the standardized versions of the Fee Transmittal form, Utility Patent
Application Transmittal form, Design Patent Application Transmittal
form, Plant Patent Application Transmittal form, Plant Color Coding
Sheet, Declaration form and Plant Patent Application Declaration form,
and need not use any fee transmittal form, application transmittal form,
or plant color coding sheet. These forms were created to assist
applicants in filing a patent application and to help ensure the filing
of a complete application accompanied by the appropriate fees, thereby
avoiding unnecessary delays in the examination of the application.
Comment (31): One comment stated that the Office should not require the
use of mandated forms, and if the Office requires the use of mandated
forms, the Office should revise the forms to render them readily
reproducible by conventional software, and should arrange for versions
of these forms in various formats to be distributed by the Internet,
bulletin board, or floppy disk. Another comment suggested that the
Office should make its form or templates available for electronic
copying.
Response: Copies of the standard forms provided by the Office may be
obtained by contacting the Customer Service Center of the Office of
Initial Patent Examination at (703) 308-1214. Also, many standardized
forms have been loaded on the Office's Internet Website and may be
electronically copied via the Internet through anonymous file transfer
protocol (ftp) (address: ftp.uspto.gov). Nevertheless, use of the forms
included for comment with the Notice of Proposed Rulemaking is not
mandatory.
Comment (32): One comment questioned why there is a box with an
instruction to type a plus sign in the box at the very top of the
standardized forms.
Response: As discussed supra, the Office plans to replace or augment the
current microfilming process with an electronic data base which captures
at least the technical content of the application-as-filed for internal
Office use. Typing a plus sign (+) into this box will facilitate the
image scanner in aligning the remaining typing on the form during the
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scanning process.
Comment (33): One comment questioned: (1) why the application
transmittal forms do not have a place for applicant to indicate the type
of new utility application being transmitted (e.g., a provisional,
original, continuation, division, continuation-in-part, reissue), and
(2) how the Office official will obtain this information for entry in
the official use "application type" box.
Response: The Utility Patent Application Transmittal form sets forth
instructions for filing utility applications under § 1.53 in the
arrangement set forth in § 1.77. All non-reissue, nonprovisional
utility applications (i.e., original, continuation, divisional, and
continuation-in-part applications) filed under § 1.53 should be
submitted using the Utility Patent Application Transmittal form. The
Design Patent Application Transmittal form sets forth instructions for
filing design applications in the arrangement set forth in § 1.154. All
non-reissue design applications should be submitted using the Design
Patent Application Transmittal form. The Plant Patent Application
Transmittal form sets forth instructions for filing plant applications
in the arrangement set forth in § 1.163. All non-reissue,
nonprovisional plant applications should be submitted using the Plant
Patent Application Transmittal form.
A Reissue Patent Application Transmittal form is also available, and
all applications for the reissue of a patent should be submitted using
the Reissue Patent Application Transmittal form. The cover sheet
provided for in § 1.53(b)(2)(i) for a provisional application functions
as a transmittal sheet for a provisional application. As such, the
standardized Provisional Application Cover Sheet is the transmittal form
for a provisional application. The provisional application cover sheet
was published in the rulemaking entitled "Changes to Implement 20-Year
Patent Term and Provisional Applications," in the Federal Register at 60
FR 20230-31 (April 25, 1995), and in the Patent and Trademark Office
Official Gazette at 1174 Off. Gaz. Pat Office 45-46 (May 2, 1995).
To provide a place on the Application Transmittal form for claims
under 35 U.S.C. 119, 120, or 121 would require the use of an
unacceptably smaller font on the Application Transmittal form. The
Declaration forms provide a place for stating claims under 35 U.S.C.
§§ 119, 120 or 121. The inclusion on filing of an executed or unexecuted
Declaration form containing this information would assist the Office in
ascertaining whether the application is an original, continuation,
divisional, or continuation-in-part application. In addition, in the
event that H.R. 1733 is enacted, and the proposed changes to
§§ 1.55(a) and 1.78(a)(2) are adopted substantially as proposed, the
routine inclusion of claims for priority under 35 U.S.C. 119, 120, or
121 in an executed or unexecuted declaration form accompanying the
application papers would be an excellent mechanism for avoiding an
inadvertent failure to timely submit a claim for priority under 35
U.S.C. 119, 120, or 121.
Comment (34): One comment noted that the heading "DECLARATION" does not
state the types of applications with which the declaration form could be
used. The comment questioned whether it is intended to be used with any
type of nonprovisional application except plant applications for which a
separate form is proposed.
Response: The declaration form containing the heading "DECLARATION" is
intended to be used with any type of nonprovisional application except
plant applications, for which a separate Plant Declaration form is
provided.
Comment (35): One comment suggested that in the foreign priority claim
section of the Declaration form, the last line, the phrase "having a
filing date before that of the application on which priority is claimed"
should be changed to "for which priority is not claimed," to cover those
foreign applications which have a filing date after that of the
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application on which priority is claimed and the benefit of which
applicant does not want to claim. The comment also indicated that,
frequently, an application is filed after the Convention Year.
Response: The suggestion is not adopted. Section 1.63(c) requires that
an oath or declaration in any application in which a claim for priority
is made pursuant to 1.55 identify . . . "any foreign application
having a filing date before that of the application on which priority is
claimed, by specifying the application number, country, day, month, and
year of its filing." Thus, the language in the Declaration form aids
applicants in submitting a declaration in compliance with § 1.63(c).
Any foreign application having a filing date before that of the
application on which priority is claimed is, by definition, a foreign
application for which priority is not claimed.
Comment (36): One comment suggested that in the foreign priority claim
section, the right hand columns, the heading should be corrected to
"Certified Copy Attached" since the Office does not routinely want
uncertified copies.
Response: The suggestion is adopted. The Declaration form has been
modified accordingly.
Comment (37): One comment noted that the Fee Calculation and
Application Transmittal are currently on a single sheet/form, where the
proposed forms provide a separate sheet/form for each. The comment also
noted that the current Declaration form is a single sheet, where the
proposed Declaration form contains multiple sheets.
Response: The Office currently receives application transmittals, fee
calculations/transmittals and declarations in a variety of forms and in
a multitude of formats. The proposed forms were developed as a result of
an analysis of the current practices and requirements of applicants, as
well as the Office's plans to scan application data from these forms
into an electronic data base. The Fee Transmittal form was created to
aid applicants in submitting the fees due on filing a new patent
application, as well as the fees that may be due throughout the
prosecution of the application. The Application Transmittal serves to
both aid applicants in filing a complete application, and simplify the
pre-examination processing of the application. To permit the inclusion
of additional fee calculation and application transmittal information on
the standardized forms, and to provide a Fee Transmittal form for use
throughout the prosecution of the application, a separate Fee
Transmittal form and Application Transmittal form were developed. A
multi-page Declaration form is necessary to accommodate the Office's
plans to scan application data from this Declaration form into an
electronic data base.
Comment (38): One comment indicated that the meaning or purpose of
"suffix" in the inventor signature block is unclear, and requested an
explanation as to whether it refers to "Jr." or "II," or whether it is a
place to put the mother's name for those inventors whose family name is
followed by their mother's name.
Response: The field on the Declaration form labeled (inventor) "suffix"
is intended to provide the applicant with an option to indicate family
position relative to age. Examples of an inventor's suffix are: Jr.,
Sr., and III. This information is tracked by the Office and is necessary
to print patents which accurately reflect bibliographic information
about the inventor. The use of this field and the data expected will be
clarified and specified in the form instructions.
Comment (39): One comment questioned the meaning or purpose of
"Applicant Authority" in the last line of the inventor data block.
Response: The phrase "Applicant Authority" indicates the authority that
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the applicant has in executing the application (e.g., inventor, executor
(§ 1.42), assignee (§ 1.47(b)). This field is an optional field for
the applicant to complete. The electronic versions of the proposed
standard declaration forms would provide the applicant with directions
and a list of valid codes that correspond with a specific identification
of the authority the applicant retains (e.g., the Authority Code for an
executor will be "04").
Comment (40): One comment stated that due to the spacing and small fonts
on the fee transmittal form, this sheet cannot be used with a
conventional word processor.
Response: To accommodate all the fee descriptions on a one-page fee
transmittal it was necessary to use smaller fonts in the form's design.
These fonts are available in Word and WordPerfect. An electronic version
of the fee transmittal will be available from the Office soon.
Comment (41): One comment stated that the "one form fits all" mentality
of the fee transmittal form should be reconsidered since certain fees
are submitted only once during the prosecution of an application.
Response: The proposed standard one-page fee form is primarily to
facilitate and simplify the fee payment process. The one-page fee
transmittal is intended to aid applicants in providing complete fee
information to the Office for each application and paper submission.
This will enable the Office to more efficiently process and record fee
payments, which will avoid delays in the prosecution of an application.
Other Considerations
This final rule change is in conformity with the requirements of the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order
12612, and the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et seq.
It has been determined that this final rule is not significant for the
purposes of Executive Order 12866.
The Assistant General Counsel for Legislation and Regulation of the
Department of Commerce has certified to the Chief Counsel for Advocacy,
Small Business Administration, that this rule change will not have a
significant economic impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The principal effect of
this rule change is to simplify and clarify the rules governing the form
of patent application papers.
The Office has also determined that this notice has no Federalism
implications affecting the relationship between the National Government
and the States as outlined in Executive Order 12612.
Notwithstanding any other provision of law, no person is required to
respond to nor shall any person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
This final rule package contains a collection of information subject
to the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et seq. This
collection of information is currently approved by the Office of
Management and Budget under Control No. 0651-0032. This collection of
information includes the initial patent application filing, the Fee
Transmittal form, the Utility Patent Application Transmittal form, the
Design Patent Application Transmittal form, the Plant Patent Application
Transmittal form, the Plant Color Coding Sheet, the Declaration form,
and the Plant Patent Application Declaration form. The above-mentioned
forms will reduce the burden and uncertainty associated with the
submission of an application and related information, and enhance the
Office's ability to use standardized automation techniques (optical
character recognition, etc.) to record and process information
concerning applications. The public reporting burden for these
collections of information is estimated to average: (1) ten hours per
response for the specification and drawings of an application, (2)
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twelve minutes per response for the Fee Transmittal form, (3) twelve
minutes per response for the Utility Patent Application Transmittal
form, (4) twelve minutes per response for the Design Patent Application
Transmittal form, (5) twelve minutes per response for the Plant Patent
Application Transmittal form, (6) twelve minutes per response for the
Plant Color Coding Sheet, (7) twenty-four minutes per response for the
Declaration form, and (8) twenty-four minutes per response for the Plant
Patent Application Declaration. These estimates include the time for
reviewing instructions, searching existing data sources, gathering and
maintaining the data needed, and completing and reviewing the
collections of information.
Send comments regarding this burden estimate or any other aspect of
this collection of information, including suggestions for reducing this
burden to the Office of System Quality and Enhancement, Data
Administration Division, Patent and Trademark Office, Washington, D.C.
20231, and to the Office of Information and Regulatory Affairs, Office
of Management and Budget, Washington, D.C. 20503 (ATTN: Paperwork
Reduction Act Project 0651-0032).
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, 37 CFR Part 1 is amended as
follows:
PART 1 - Rules of Practice in Patent Cases
1. The authority citation for 37 CFR Part 1 continues to read as follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. Section 1.5 is amended by adding paragraph (f) to read as follows:
§ 1.5 Identification of application, patent or registration.
* * * * *
(f) When a paper concerns a provisional application, it should identify
the application as such and include the application number.
3. Section 1.12 is amended by revising paragraph (c) to read as follows:
§ 1.12 Assignment records open to public inspection.
* * * * *
(c) Any request by a member of the public seeking copies of any
assignment records of any pending or abandoned patent application
preserved in confidence under 1.14, or any information with respect
thereto, must:
(1) Be in the form of a petition accompanied by the petition fee set
forth in § 1.17(i); or
(2) Include written authority granting access to the member of the
public to the particular assignment records from the applicant or
applicant's assignee or attorney or agent of record.
* * * * *
4. Section 1.14 is amended by revising the section heading and
paragraphs (a), (b), and (e) to read as follows:
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§ 1.14 Patent applications preserved in confidence.
(a)(1) Patent applications are generally preserved in confidence
pursuant to 35 U.S.C. 122. No information will be given concerning the
filing, pendency, or subject matter of any application for patent, and
no access will be given to, or copies furnished of, any application or
papers relating thereto, except as set forth below.
(2) Status information, which includes information such as whether
the application is pending, abandoned, or patented, as well as the
application number and filing date, may be supplied:
(i) Concerning an application or any application claiming the benefit
of the filing date of the application, if the application has been
identified by application number or serial number and filing date in a
published patent document,
(ii) Concerning the national stage application or any application
claiming the benefit of the filing date of a published international
application, if the United States of America has been indicated as a
Designated State in the international application, or
(iii) When it has been determined by the Commissioner to be necessary
for the proper conduct of business before the Office.
(3) Access to, or copies of, an application may be provided:
(i) When the application is open to the public as provided in
1.11(b),
(ii) When written authority in that application from the applicant,
the assignee of the application, or the attorney or agent of record has
been granted,
(iii) When it has been determined by the Commissioner to be necessary
for the proper conduct of business before the Office, or
(iv) To any person on written request, without notice to the
applicant, when the application is abandoned and available and is:
(A) Referred to in a U.S. patent,
(B) Referred to in an application open to public inspection,
(C) An application which claims the benefit of the filing date of an
application open to public inspection, or
(D) An application in which the applicant has filed an authorization
to lay open the complete application to the public.
(b) Complete applications ( 1.51(a)) which are abandoned may be
destroyed and hence may not be available for access or copies as
permitted by paragraph (a)(3)(iv) of this section after 20 years from
their filing date, except those to which particular attention has been
called and which have been marked for preservation.
* * * * *
(e) Any request by a member of the public seeking access to, or copies
of, any pending or abandoned application preserved in confidence
pursuant to paragraph (a) of this section, or any papers relating
thereto, must:
(1) Be in the form of a petition and be accompanied by the petition
fee set forth in § 1.17(i); or
(2) Include written authority granting access to the member of the
public in that particular application from the applicant or the
applicant's assignee or attorney or agent of record.
* * * * *
5. Section 1.52 is amended by revising paragraphs (a) and (b) to read
as follows:
§ 1.52 Language, paper, writing, margins.
(a) The application, any amendments or corrections thereto, and the
oath or declaration must be in the English language except as provided
for in § 1.69 and paragraph (d) of this section, or be accompanied by a
verified translation of the application and a translation of any
corrections or amendments into the English language. All papers which
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are to become a part of the permanent records of the Patent and
Trademark Office must be legibly written either by a typewriter or
mechanical printer in permanent dark ink or its equivalent in portrait
orientation on flexible, strong, smooth, non-shiny, durable, and white
paper. All of the application papers must be presented in a form having
sufficient clarity and contrast between the paper and the writing
thereon to permit the direct reproduction of readily legible copies in
any number by use of photographic, electrostatic, photo-offset, and
microfilming processes and electronic reproduction by use of digital
imaging and optical character recognition. If the papers are not of the
required quality, substitute typewritten or mechanically printed papers
of suitable quality will be required. See § 1.125 for filing substitute
typewritten or mechanically printed papers constituting a substitute
specification when required by the Office.
(b) Except for drawings, the application papers (specification,
including claims, abstract, oath or declaration, and papers as provided
for in §§ 1.42, 1.43, 1.47, etc.) and also papers subsequently filed,
must have each page plainly written on only one side of a sheet of
paper, with the claim or claims commencing on a separate sheet and the
abstract commencing on a separate sheet. See §§ 1.72(b) and 1.75(h).
The sheets of paper must be the same size and either 21.0 cm. by 29.7
cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches). Each
sheet must include a top margin of at least 2.0 cm. (3/4 inch), a left
side margin of at least 2.5 cm. (1 inch), a right side margin of at
least 2.0 cm. (3/4 inch), and a bottom margin of at least 2.0 cm. (3/4
inch), and no holes should be made in the sheets as submitted. The lines
of the specification, and any amendments to the specification, must be 1
1/2 or double spaced. The pages of the specification including claims
and abstract must be numbered consecutively, starting with 1, the
numbers being centrally located above or preferably, below, the text.
See § 1.84 for drawings.
* * * * *
6. Section 1.54 is amended by revising paragraph (b) to read as follows:
§ 1.54 Parts of application to be filed together; filing receipt.
* * * * *
(b) Applicant will be informed of the application number and filing
date by a filing receipt.
7. Section 1.58 is amended by removing and reserving paragraph (b)
and revising the section heading and paragraph (c) to read as follows:
§ 1.58 Chemical and mathematical formulae and tables.
* * * * *
(b) [Reserved]
(c) Chemical and mathematical formulae and tables must be presented
in compliance with §§ 1.52(a) and (b), except that chemical and
mathematical formulae or tables may be placed in a landscape orientation
if they cannot be presented satisfactorily in a portrait orientation.
Typewritten characters used in such formulae and tables must be chosen
from a block (nonscript) type font or lettering style having capital
letters which are at least 0.21 cm. (0.08 inch) high (e.g., elite type).
A space at least 0.64 cm. (1/4 inch) high should be provided between
complex formulae and tables and the text. Tables should have the lines
and columns of data closely spaced to conserve space, consistent with a
high degree of legibility.
8. Section 1.62 is amended by revising paragraphs (e) and (f) to read
as follows:
§ 1.62 File wrapper continuing procedure.
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* * * * *
(e) An application filed under this section will utilize the file
wrapper and contents of the prior application to constitute the new
continuation, continuation-in-part, or divisional application but will
be assigned a new application number. Changes to the prior application
must be made in the form of an amendment to the prior application as it
exists at the time of filing the application under this section. No copy
of the prior application or new specification is required. The filing of
such a copy or specification will be considered improper, and a filing
date as of the date of deposit of the request for an application under
this section will not be granted to the application unless a petition
with the fee set forth in § 1.17(i) is filed with instructions to
cancel the copy or specification.
(f) The filing of an application under this section will be construed
to include a waiver of confidence by the applicant under 35 U.S.C. 122
to the extent that any member of the public who is entitled under the
provisions of 1.14 to access to, or information concerning either the
prior application or any continuing application filed under the
provisions of this section may be given similar access to, or similar
information concerning, the other application(s) in the file wrapper.
* * * * *
9. Section 1.72 is amended by revising paragraph (b) to read as follows:
§ 1.72 Title and abstract.
* * * * *
(b) A brief abstract of the technical disclosure in the specification
must commence on a separate sheet, preferably following the claims,
under the heading "Abstract of the Disclosure." The purpose of the
abstract is to enable the Patent and Trademark Office and the public
generally to determine quickly from a cursory inspection the nature and
gist of the technical disclosure. The abstract shall not be used for
interpreting the scope of the claims.
10. Section 1.75 is amended by revising paragraph (g) and adding
paragraphs (h) and (i) to read as follows:
§ 1.75 Claim(s).
* * * * *
(g) The least restrictive claim should be presented as claim number 1,
and all dependent claims should be grouped together with the claim or
claims to which they refer to the extent practicable.
(h) The claim or claims must commence on a separate sheet.
(i) Where a claim sets forth a plurality of elements or steps, each
element or step of the claim should be separated by a line indentation.
11. Section 1.77 is revised to read as follows:
§ 1.77 Arrangement of application elements.
(a) The elements of the application, if applicable, should appear in
the following order:
(1) Utility Application Transmittal Form.
(2) Fee Transmittal Form.
(3) Title of the invention; or an introductory portion stating the
name, citizenship, and residence of the applicant, and the title of the
invention.
(4) Cross-reference to related applications.
(5) Statement regarding federally sponsored research or development.
(6) Reference to a "Microfiche appendix." (See § 1.96 (c)). The
total number of microfiche and total number of frames should be
specified.
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(7) Background of the invention.
(8) Brief summary of the invention.
(9) Brief description of the several views of the drawing.
(10) Detailed description of the invention.
(11) Claim or claims.
(12) Abstract of the Disclosure.
(13) Drawings.
(14) Executed oath or declaration.
(15) Sequence Listing (See § 1.821 et. seq.).
(b) The elements set forth in paragraphs (a)(3) through (a)(5),
(a)(7) through (a)(12) and (a)(15) of this section should appear in
upper case, without underlining or bold type, as section headings. If no
text follows the section heading, the phrase "Not Applicable" should
follow the section heading.
12. Section 1.78 is amended by removing paragraph (d) and revising
paragraphs (a)(2) and (c) to read as follows:
§ 1.78 Claiming benefit of earlier filing date and cross references to
other applications.
(a) * * * * *
(2) Any nonprovisional application claiming the benefit of one or more
prior filed copending nonprovisional applications or international
applications designating the United States of America must contain or be
amended to contain in the first sentence of the specification following
the title a reference to each such prior application, identifying it by
application number (consisting of the series code and serial number) or
international application number and international filing date and
indicating the relationship of the applications. Cross-references to
other related applications may be made when appropriate. (See
§ 1.14(a)).
* * * * *
(c) Where an application or a patent under reexamination and at least
one other application naming different inventors are owned by the same
party and contain conflicting claims, and there is no statement of
record indicating that the claimed inventions were commonly owned or
subject to an obligation of assignment to the same person at the time
the later invention was made, the assignee may be called upon to state
whether the claimed inventions were commonly owned or subject to an
obligation of assignment to the same person at the time the later
invention was made, and if not, indicate which named inventor is the
prior inventor.
13. Section 1.84 is amended by revising paragraphs (c), (f)-(g), and
(x) to read as follows:
§ 1.84 Standards for drawings.
* * * * *
(c) Identification of drawings. Identifying indicia, if provided, should
include the application number or the title of the invention, inventor's
name, docket number (if any), and the name and telephone number of a
person to call if the Office is unable to match the drawings to the
proper application. This information should be placed on the back of
each sheet of drawings a minimum distance of 1.5 cm. (5/8 inch) down
from the top of the page. In addition, a reference to the application
number, or, if an application number has not been assigned, the
inventor's name, may be included in the left-hand corner, provided that
the reference appears within 1.5 cm. (9/16 inch) from the top of the
sheet.
* * * * *
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(f) Size of paper. All drawing sheets in an application must be the
same size. One of the shorter sides of the sheet is regarded as its top.
The size of the sheets on which drawings are made must be:
(1) 21.0 cm. by 29.7 cm. (DIN size A4), or
(2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).
(g) Margins. The sheets must not contain frames around the sight;
i.e., the usable surface, but should have scan target points, i.e.,
cross-hairs, printed on two catercorner margin corners. Each sheet must
include a top margin of at least 2.5 cm. (1 inch), a left side margin of
at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (9/16
inch), and a bottom margin of at least 1.0 cm. (3/8 inch), thereby
leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7
cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm.
by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by
11 inch) drawing sheets.
* * * * *
(x) Holes. No holes should be made by applicant in the drawing sheets.
(See § 1.152 for design drawings, § 1.165 for plant drawings, and
1.174 for reissue drawings.)
14. Section 1.96 is revised to read as follows:
§ 1.96 Submission of computer program listings.
(a) General. Descriptions of the operation and general content of
computer program listings should appear in the description portion of
the specification. A computer program listing for the purpose of this
section is defined as a printout that lists in appropriate sequence the
instructions, routines, and other contents of a program for a computer.
The program listing may be either in machine or machine-independent
(object or source) language which will cause a computer to perform a
desired procedure or task such as solve a problem, regulate the flow of
work in a computer, or control or monitor events. Computer program
listings may be submitted in patent applications as set forth in
paragraphs (b) and (c) of this section.
(b) Material which will be printed in the patent. If the computer
program listing is contained on ten printout pages or less, it must be
submitted either as drawings or as part of the specification.
(1) Drawings. If the listing is submitted as drawings, it must be
submitted in the manner and complying with the requirements for drawings
as provided in § 1.84. At least one figure numeral is required on each
sheet of drawing.
(2) Specification.
(i) If the listing is submitted as part of the specification, it must
be submitted in accordance with the provisions of § 1.52, at the end of
the description but before the claims.
(ii) Any listing submitted as part of the specification must be
direct printouts (i.e., not copies) from the computer's printer with
dark solid black letters not less than 0.21 cm. high, on white, unshaded
and unlined paper, and the sheets should be submitted in a protective
cover. Any amendments must be made by way of submission of substitute
sheets.
(c) As an appendix which will not be printed. If a computer program
listing printout is eleven or more pages long, applicants must submit
such listing in the form of microfiche, referred to in the specification
(see § 1.77(a)(6)). Such microfiche filed with a patent application is
to be referred to as a "microfiche appendix." The "microfiche appendix"
will not be part of the printed patent. Reference in the application to
the "microfiche appendix" must be made at the beginning of the
specification at the location indicated in § 1.77(a)(6). Any amendments
thereto must be made by way of revised microfiche.
(1) Availability of appendix. Such computer program listings on
microfiche will be available to the public for inspection, and
microfiche copies thereof will be available for purchase with the file
wrapper and contents, after a patent based on such application is
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granted or the application is otherwise made publicly available.
(2) Submission requirements. Except as modified or clarified in this
paragraph (c)(2), computer-generated information submitted as a
"microfiche appendix" to an application shall be in accordance with the
standards set forth in 36 CFR Part 1230 (Micrographics).
(i) Film submitted shall be a first generation (camera film) negative
appearing microfiche (with emulsion on the back side of the film when
viewed with the images right-reading).
(ii) Reduction ratio of microfiche submitted should be 24:1 or a
similar ratio where variation from said ratio is required in order to
fit the documents into the image area of the microfiche format used.
(iii) At least the left-most third (50 mm. x 12 mm.) of the header or
title area of each microfiche submitted shall be clear or positive
appearing so that the Patent and Trademark Office can apply an
application number and filing date thereto in an eye-readable form. The
middle portion of the header shall be used by applicant to apply an
eye-readable application identification such as the title and/or the
first inventor's name. The attorney's docket number may be included. The
final right-hand portion of the microfiche shall contain sequence
information for the microfiche, such as 1 of 4, 2 of 4, etc.
(iv) Additional requirements which apply specifically to microfiche
of filmed paper copy:
(A) The first frame of each microfiche submitted shall contain a test
target.
(B) The second frame of each microfiche submitted must contain a
fully descriptive title and the inventor's name as filed.
(C) The pages or lines appearing on the microfiche frames should be
consecutively numbered.
(D) Pagination of the microfiche frames shall be from left to right
and from top to bottom.
(E) At a reduction of 24:1, resolution of the original microfilm
shall be at least 120 lines per mm. (5.0 target).
(F) An index, when included, should appear in the last frame (lower
right-hand corner when data is right-reading) of each microfiche.
(v) Microfiche generated by Computer Output Microfilm.
(A) The first frame of each microfiche submitted should contain a
resolution test frame.
(B) The second frame of each microfiche submitted must contain a
fully descriptive title and the inventor's name as filed.
(C) The pages or lines appearing on the microfiche frames should be
consecutively numbered.
(D) It is preferred that pagination of the microfiche frames be from
left to right and top to bottom but the alternative, i.e., from top to
bottom and from left to right, is also acceptable.
(E) An index, when included, should appear on the last frame (lower
right-hand corner when data is right-reading) of each microfiche.
15. Section 1.97 is amended by revising paragraphs (a) through (d) to
read as follows:
§ 1.97 Filing of information disclosure statement.
(a) In order for an applicant for a patent or for a reissue of a patent
to have an information disclosure statement in compliance with § 1.98
considered by the Office during the pendency of the application, it must
satisfy paragraph (b), (c), or (d) of this section.
(b) An information disclosure statement shall be considered by the
Office if filed by the applicant:
(1) Within three months of the filing date of a national application;
(2) Within three months of the date of entry of the national stage as
set forth in § 1.491 in an international application; or
(3) Before the mailing date of a first Office action on the merits,
whichever event occurs last.
(c) An information disclosure statement shall be considered by the
Office if filed by the applicant after the period specified in paragraph
(b) of this section, provided that the statement is accompanied by
either a certification as specified in paragraph (e) of this section or
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the fee set forth in § 1.17(p), and is filed before the mailing date of
either:
(1) A final action under § 1.113; or
(2) A notice of allowance under § 1.311, whichever occurs first.
(d) An information disclosure statement shall be considered by the
Office if filed by the applicant after the period specified in paragraph
(c) of this section, provided that the statement is filed on or before
payment of the issue fee and is accompanied by:
(1) A certification as specified in paragraph (e) of this section;
(2) A petition requesting consideration of the information disclosure
statement; and
(3) The petition fee set forth in § 1.17(i).
* * * * *
16. Section 1.107 is amended by revising paragraph (a) to read as
follows:
§ 1.107 Citation of references.
(a) If domestic patents are cited by the examiner, their numbers and
dates, and the names of the patentees must be stated. If foreign
published applications or patents are cited, their nationality or
country, numbers and dates, and the names of the patentees must be
stated, and such other data must be furnished as may be necessary to
enable the applicant, or in the case of a reexamination proceeding, the
patent owner, to identify the published applications or patents cited.
In citing foreign published applications or patents, in case only a part
of the document is involved, the particular pages and sheets containing
the parts relied upon must be identified. If printed publications are
cited, the author (if any), title, date, pages or plates, and place of
publication, or place where a copy can be found, shall be given.
* * * * *
17. Section 1.110 is revised to read as follows:
§ 1.110 Inventorship and date of invention of the subject matter of
individual claims.
When more than one inventor is named in an application or patent, the
Patent and Trademark Office, when necessary for purposes of an Office
proceeding, may require an applicant, patentee, or owner to identify the
inventive entity of the subject matter of each claim in the application
or patent. Where appropriate, the invention dates of the subject matter
of each claim and the ownership of the subject matter on the date of
invention may be required of the applicant, patentee or owner. See also
1.78(c) and 1.130.
18. A new § 1.130 is added after the undesignated center heading
"Affidavits Overcoming Rejections" to read as follows:
§ 1.130 Affidavit or declaration to disqualify commonly owned patent as
prior art.
(a) When any claim of an application or a patent under reexamination is
rejected under 35 U.S.C. 103 in view of a U.S. patent which is not prior
art under 35 U.S.C. 102(b), and the inventions defined by the claims in
the application or patent under reexamination and by the claims in the
patent are not identical but are not patentably distinct, and the
inventions are owned by the same party, the applicant or owner of the
patent under reexamination may disqualify the patent as prior art. The
patent can be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with § 1.321(c), and
(2) An oath or declaration stating that the application or patent
under reexamination and the patent are currently owned by the same
party, and that the inventor named in the application or patent under
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reexamination is the prior inventor under 35 U.S.C. 104.
(b) When an application or a patent under reexamination claims an
invention which is not patentably distinct from an invention claimed in
a commonly owned patent with the same or a different inventive entity, a
double patenting rejection will be made in the application or a patent
under reexamination. A judicially created double patenting rejection may
be obviated by filing a terminal disclaimer in accordance with
§ 1.321(c).
19. Section 1.131 is amended by revising paragraph (a) to read as
follows:
§ 1.131 Affidavit or declaration of prior invention to overcome cited
patent or publication.
(a)(1) When any claim of an application or a patent under reexamination
is rejected under 35 U.S.C. 102(a) or (e), or 35 U.S.C. 103 based on a
U.S. patent to another or others which is prior art under 35 U.S.C.
§§ 102(a) or (e) and which substantially shows or describes but does not
claim the same patentable invention, as defined in § 1.601(n), or on
reference to a foreign patent or to a printed publication, the inventor
of the subject matter of the rejected claim, the owner of the patent
under reexamination, or the party qualified under §§ 1.42, 1.43, or
1.47, may submit an appropriate oath or declaration to overcome the
patent or publication. The oath or declaration must include facts
showing a completion of the invention in this country or in a NAFTA or
WTO member country before the filing date of the application on which
the U.S. patent issued, or before the date of the foreign patent, or
before the date of the printed publication. When an appropriate oath or
declaration is made, the patent or publication cited shall not bar the
grant of a patent to the inventor or the confirmation of the
patentability of the claims of the patent, unless the date of such
patent or printed publication is more than one year prior to the date on
which the inventor's or patent owner's application was filed in this
country.
(2) A date of completion of the invention may not be established
under this section before December 8, 1993, in a NAFTA country, or
before January 1, 1996, in a WTO member country other than a NAFTA
country.
* * * * *
20. Section 1.132 is revised to read as follows:
§ 1.132 Affidavits or declarations traversing grounds of rejection.
When any claim of an application or a patent under reexamination is
rejected on reference to a U.S. patent which substantially shows or
describes but does not claim the same patentable invention, as defined
in § 1.601(n), on reference to a foreign patent, on reference to a
printed publication, or on reference to facts within the personal
knowledge of an employee of the Office, or when rejected upon a mode or
capability of operation attributed to a reference, or because the
alleged invention is held to be inoperative, lacking in utility,
frivolous, or injurious to public health or morals, affidavits or
declarations traversing these references or objections may be received.
21. Section 1.154 is revised to read as follows:
§ 1.154 Arrangement of specification.
(a) The elements of the design application, if applicable, should appear
in the following order:
(1) Design Application Transmittal Form.
(2) Fee Transmittal Form.
(3) Preamble, stating name of the applicant and title of the design.
(4) Cross-reference to related applications.
(5) Statement regarding federally sponsored research or development.
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(6) Description of the figure or figures of the drawing.
(7) Feature Description.
(8) A single claim.
(9) Drawings or photographs.
(10) Executed oath or declaration (See § 1.153(b)).
(b) [Reserved]
22. Section 1.163 is amended by adding new paragraphs (c) and (d) to
read as follows:
§ 1.163 Specification.
* * * * *
(c) The elements of the plant application, if applicable, should appear
in the following order:
(1) Plant Application Transmittal Form.
(2) Fee Transmittal Form.
(3) Title of the invention.
(4) Cross-reference to related applications.
(5) Statement regarding federally sponsored research or development.
(6) Background of the invention.
(7) Brief summary of the invention.
(8) Brief description of the drawing.
(9) Detailed Botanical Description.
(10) A single claim.
(11) Abstract of the Disclosure.
(12) Drawings (in duplicate).
(13) Executed oath or declaration.
(14) Plant color coding sheet.
(d) A plant color coding sheet as used in this section means a sheet
that specifies a color coding system as designated in a color
dictionary, and lists every plant structure to which color is a
distinguishing feature and the corresponding color code which best
represents that plant structure.
23. Section 1.291 is amended by revising paragraphs (a) and (b) to
read as follows:
§ 1.291 Protests by the public against pending applications.
(a) Protests by a member of the public against pending applications
will be referred to the examiner having charge of the subject matter
involved. A protest specifically identifying the application to which
the protest is directed will be entered in the application file if:
(1) The protest is submitted prior to the mailing of a notice of
allowance under § 1.311; and
(2) The protest is either served upon the applicant in accordance
with § 1.248, or filed with the Office in duplicate in the event
service is not possible.
(b) Protests raising fraud or other inequitable conduct issues will
be entered in the application file, generally without comment on those
issues. Protests which do not adequately identify a pending patent
application will be returned to the protestor and will not be further
considered by the Office. A protest submitted in accordance with the
second sentence of paragraph (a) of this section will be considered by
the Office if the application is still pending when the protest and
application file are brought before the examiner and it includes:
(1) A listing of the patents, publications, or other information
relied upon;
(2) A concise explanation of the relevance of each listed item;
(3) A copy of each listed patent or publication or other item of
information in written form or at least the pertinent portions thereof;
and
(4) An English language translation of all the necessary and
pertinent parts of any non-English language patent, publication, or
other item of information in written form relied upon.
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* * * * *
24. Section 1.292 is amended by revising paragraphs (a) and (b) to
read as follows:
§ 1.292 Public use proceedings.
(a) When a petition for the institution of public use proceedings,
supported by affidavits or declarations is found, on reference to the
examiner, to make a prima facie showing that the invention claimed in an
application believed to be on file had been in public use or on sale
more than one year before the filing of the application, a hearing may
be had before the Commissioner to determine whether a public use
proceeding should be instituted. If instituted, the Commissioner may
designate an appropriate official to conduct the public use proceeding,
including the setting of times for taking testimony, which shall be
taken as provided by §§ 1.671 through 1.685. The petitioner will be
heard in the proceedings but after decision therein will not be heard
further in the prosecution of the application for patent.
(b) The petition and accompanying papers, or a notice that such a
petition has been filed, shall be entered in the application file if:
(1) The petition is accompanied by the fee set forth in § 1.17(j);
(2) The petition is served on the applicant in accordance with
§ 1.248, or filed with the Office in duplicate in the event service is not
possible; and
(3) The petition is submitted prior to the mailing of a notice of
allowance under § 1.311.
* * * * *
25. Section 1.315 is revised to read as follows:
§ 1.315 Delivery of patent.
The patent will be delivered or mailed upon issuance to the
correspondence address of record. See § 1.33(a).
26. Section 1.321 is amended by revising paragraph (c) to read as
follows:
§ 1.321 Statutory disclaimers, including terminal disclaimers.
* * * * *
(c) A terminal disclaimer, when filed to obviate a judicially created
double patenting rejection in a patent application or in a reexamination
proceeding, must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of
this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if
filed in a patent application or in accordance with paragraph (a)(1) of
this section if filed in a reexamination proceeding; and
(3) Include a provision that any patent granted on that application
or any patent subject to the reexamination proceeding shall be
enforceable only for and during such period that said patent is commonly
owned with the application or patent which formed the basis for the
rejection.
27. Section 1.497 is revised to read as follows:
§ 1.497 Oath or declaration under 35 U.S.C. 371(c)(4).
(a) When an applicant of an international application desires to enter
the national stage under 35 U.S.C. 371 pursuant to §§ 1.494 or 1.495,
he or she must file an oath or declaration that:
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US PATENT AND TRADEMARK OFFICE |
1469 CNOG 1875 |
(1) Is executed in accordance with either §§ 1.66 or 1.68;
(2) Identifies the specification to which it is directed;
(3) Identifies each inventor and the country of citizenship of each
inventor; and
(4) States that the person making the oath or declaration believes
the named inventor or inventors to be the original and first inventor or
inventors of the subject matter which is claimed and for which a patent
is sought.
(b) (1) The oath or declaration must be made by all of the actual
inventors except as provided for in §§ 1.42, 1.43 or 1.47.
(2) If the person making the oath or declaration is not the inventor,
the oath or declaration shall state the relationship of the person to
the inventor, the facts required by §§ 1.42, 1.43 or 1.47, and, upon
information and belief, the facts which the inventor would have been
required to state.
(c) If the oath or declaration meets the requirements of paragraphs
(a) and (b) of this section, the oath or declaration will be accepted as
complying with 35 U.S.C. 371(c)(4) and §§ 1.494(c) or 1.495(c).
However, if the oath or declaration does not also meet the requirements
of § 1.63, a supplemental oath or declaration in compliance with
1.63 will be required in accordance with § 1.67.
August 13, 1996 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
[1190 OG 67]