(273) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 3 and 11
[Docket No. PTO-P-2013-0007]
RIN 0651-AC85
Changes to Implement the Patent Law Treaty
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The Patent Law Treaties Implementation Act of 2012 (PLTIA)
amends the patent laws to implement the provisions of the Hague
Agreement Concerning International Registration of Industrial Designs
(Hague Agreement) in title I, and the Patent Law Treaty (PLT) in title
II. The PLT harmonizes and streamlines formal procedures pertaining to
the filing and processing of patent applications. This final rule
revises the rules of practice for consistency with the changes in the
PLT and title II of the PLTIA. The United States Patent and Trademark
Office (Office) is implementing the Hague Agreement and title I of the
PLTIA in a separate rulemaking. The notable changes in the PLT and
title II of the PLTIA pertain to: The filing date requirements for a
patent application; the restoration of patent rights via the revival of
abandoned applications and acceptance of delayed maintenance fee
payments; and the restoration of the right of priority to a foreign
application or the benefit of a provisional application in a subsequent
application filed within two months of the expiration of the twelve-
month period (six-month period for design applications) for filing such
a subsequent application. This final rule also revises the patent term
adjustment provisions to provide for a reduction of any patent term
adjustment if an application is not in condition for examination within
eight months of its filing date or date of commencement of national
stage in an international application, and contains miscellaneous
changes pertaining to the supplemental examination, inventor's oath or
declaration, and first inventor to file provisions of the Leahy-Smith
America Invents Act (AIA).
DATES: Effective date: December 18, 2013.
Applicability date: The changes to 37 CFR 1.1, 1.4, 1.5, 1.6, 1.7,
1.17, 1.20, 1.23, 1.25, 1.29, 1.33, 1.51, 1.52, 1.54, 1.55(b) through
(e) and (h), 1.57(b) through (i), 1.58, 1.72, 1.76(d)(2), (f) and (g),
1.78, 1.83, 1.85, 1.131, 1.136, 1.137, 1.138, 1.197, 1.290, 1.311,
1.366, 1.378, 1.452, 1.550, 1.809, 1.958, 3.11, 3.31, and 11.18, and
the removal of 37 CFR 1.317, apply to any patent application filed
before, on, or after December 18, 2013, to any patent resulting from an
application filed before, on, or after December 18, 2013, and to any
reexamination proceeding and any request for supplemental examination
filed before, on, or after December 18, 2013. The changes to 37 CFR
1.16, 1.53(b) and (c), 1.57(a), 1.76(b)(3), and 1.81 apply only to
patent applications filed under 35 U.S.C. 111 on or after December 18,
2013. The changes to 37 CFR 1.53(f) and 1.495 apply only to patent
applications filed under 35 U.S.C. 111(a) or 363 on or after September
16, 2012. The changes to 37 CFR 1.55(f) and 37 CFR 1.704 apply only to
patent applications filed under 35 U.S.C. 111 on or after December 18,
2013, and international patent applications in which the national stage
commenced under 35 U.S.C. 371 on or after December 18, 2013.
FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent Counsel,
Office of Patent Examination Policy, at (571) 272-8090.
SUPPLEMENTARY INFORMATION: Executive Summary: Purpose: The PLT
harmonizes and streamlines formal procedures pertaining to the filing
and processing of patent applications. Title II of the PLTIA amends the
patent laws to implement the provisions of the PLT. This final rule
 Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1509 |
revises the rules of practice for consistency with the changes in the
PLT and title II of the PLTIA.
Summary of Major Provisions: The major changes in the PLT and title
II of the PLTIA pertain to: (1) The filing date requirements for a
patent application; (2) the restoration of patent rights via the
revival of abandoned applications and acceptance of delayed maintenance
fee payments; and (3) the restoration of the right of priority to a
foreign application or the benefit of a provisional application in a
subsequent application filed within two months of the expiration of the
twelve-month period (six-month period for design applications) for
filing such a subsequent application. This final rule also revises the
patent term adjustment provisions to provide for a reduction of any
patent term adjustment if an application is not in condition for
examination within eight months of its filing date or date of
commencement of national stage in an international application.
The Office is specifically revising the rules of practice
pertaining to the filing date requirements for a patent application to
provide that a claim is not required for a nonprovisional application
(other than for a design patent) to be entitled to a filing date (a
claim has never been required for a provisional application to be
entitled to a filing date). The Office is also providing for the filing
of a nonprovisional application "by reference" to a previously filed
application in lieu of filing the specification and drawings. An
application filed either without at least one claim or "by reference"
to a previously filed application in lieu of the specification and
drawings will be treated in a manner analogous to the pre-existing
provisions for treating an application that is missing application
components not required for a filing date under 35 U.S.C. 111(a) (37
CFR 1.53(f)), in that the applicant will be given a period of time
within which to supply a claim and/or claims or a copy of the
specification and drawings of the previously filed application.
The Office is also revising the rules of practice pertaining to the
revival of abandoned applications (37 CFR 1.137) and acceptance of
delayed maintenance fee payments (37 CFR 1.378) to provide for the
revival of abandoned applications and acceptance of delayed maintenance
fee payments solely on the basis of "unintentional" delay. The PLTIA
eliminates the provisions of the patent statutes relating to revival of
abandoned applications or acceptance of delayed maintenance fee
payments on the basis of a showing of "unavoidable" delay.
The Office is further revising the rules of practice pertaining to
priority and benefit claims to provide for the restoration of the right
of priority to a prior-filed foreign application and the restoration of
the right to benefit of a prior-filed provisional application. The
Office is providing with respect to the right of priority to a prior-
filed foreign application that if the subsequent application is filed
after the expiration of the twelve-month period (six-month period in
the case of a design application) set forth in 35 U.S.C. 119(a), but
within two months from the expiration of the twelve-month period (six-
month period in the case of a design application), the right of
priority in the subsequent application may be restored upon petition
and payment of the applicable fee if the delay in filing the subsequent
application within the twelve- or six-month period was unintentional.
The Office is providing with respect to benefit of a prior-filed
provisional application that if the subsequent application is filed
after the expiration of the twelve-month period set forth in 35 U.S.C.
119(e), but within two months from the expiration of the twelve-month
period, the benefit of the provisional application may be restored upon
petition and payment of the applicable fee if the delay in filing the
subsequent application within the twelve-month period was unintentional.
Lastly, the Office is revising the patent term adjustment
provisions to provide for a reduction of any patent term adjustment if
an application is not in condition for examination within eight months
of its filing date or date of commencement of national stage in an
international application. The PLT and PLTIA provide applicants with
additional opportunities to delay the examination process (e.g., the
ability to file an application without any claims and to file an
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1510 |
application merely by reference to a previously filed application).
This change to the patent term adjustment rules is to avoid the
situation in which an applicant obtains patent term adjustment because
the applicant takes advantage of the additional opportunities to delay
the examination process provided by the PLT and PLTIA.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Background: The PLT was concluded on June 1, 2000, and entered into
force on April 28, 2005. The PLT harmonizes and streamlines formal
procedures pertaining to the filing and processing of patent
applications. With the exception of the filing date requirements
specified in PLT Article 5, the PLT specifies maximum form and content
requirements that an Office that is a party to the PLT (a Contracting
Party) may apply. A Contracting Party is free to provide for form and
content requirements that are more permissive from the viewpoint of
applicants and patent owners. The PLT does not apply to design, plant,
provisional, or reissue applications. See PLT Art. 3 (the PLT applies
to the types of applications that are permitted to be filed as
international applications under the Patent Cooperation Treaty (PCT)).
The PLT Articles and Regulations under the PLT are available on the
World Intellectual Property Organization (WIPO) Internet Web site
(www.wipo.int).
The United States Senate ratified the PLT on December 7, 2007. The
PLT did not enter into force in the United States upon ratification in
2007 as the PLT is not a self-executing treaty. See Patent Law Treaty
and Regulations under Patent Law Treaty, Executive Report 110-6 at 3-4
(2007). Legislation (title II of the PLTIA) to amend the provisions of
title 35, United States Code, to implement the PLT was enacted on
December 18, 2012. See Public Law 112-211, sections 201 through 203,
126 Stat. 1527, 1533-37 (2012). The changes in title II (sections 201
through 203) of the PLTIA are divided into three groups: (1) The
changes pertaining to a patent application filing date; (2) the changes
pertaining to the revival of abandoned applications and acceptance of
delayed maintenance fee payments; and (3) the changes pertaining to the
restoration of the right of priority to a foreign application or the
benefit of a provisional application. See id. The major provisions of
the PLT and title II of the PLTIA are as follows:
PLT Article 5 sets forth the requirements for obtaining a filing
date. PLT Article 5(1) provides that a filing date will be accorded to
an application upon compliance with three formal requirements: (1) An
indication that the elements received by the Office are intended to be
an application for a patent for an invention; (2) indications that
would allow the Office to identify and to contact the applicant; and
(3) a part which appears to be a description of the invention. No
additional elements (such as a claim or a drawing) can be required for
a filing date to be accorded to an application. Pre-PLTIA 35 U.S.C.
111(a) provides that the filing date of an application shall be the
date on which "the specification and any required drawing" are
received in the Office, and thus requires that an application contain a
drawing where necessary for an understanding of the invention (35
U.S.C. 113(first sentence)) and at least one claim to be entitled to a
filing date. See Baxter Int'l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1333
(Fed. Cir. 1998) (both statute and regulation make clear the
requirement that a patent application must include, inter alia, a
specification containing claims and a drawing, and the omission of any
of these component parts makes a patent application incomplete and thus
not entitled to a filing date). Section 201(a) of the PLTIA amends 35
U.S.C. 111(a) to provide that the filing date of an application (other
than for a design patent) is the date on which a specification, "with
or without claims," is received in the Office. See 126 Stat. at 1533.
PLT Article 5(1)(b) permits a Contracting Party to accept a drawing
as a description of the invention in appropriate circumstances. This is
considered to be consistent with pre-existing jurisprudence in the
United States and thus no change in that regard is necessary. See Vas-
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991) ("under
proper circumstances, drawings alone may provide a `written
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1511 |
description' of an invention as required by [35 U.S.C.] 112").
PLT Article 5 and PLTIA 35 U.S.C. 111(a) specify the formal
requirements necessary for an application to be entitled to a filing
date, and compliance with these requirements ensures only that the
disclosure present upon filing in the application will be entitled to a
filing date. An application whose disclosure satisfies only the
requirements of 35 U.S.C. 111(a) to be entitled to a filing date may
nonetheless not meet the requirements of 35 U.S.C. 112 and 113
necessary for the applicant to be entitled to a patent for any claimed
invention presented in the application, or even for the application to
effectively serve as a priority or benefit application for an
application subsequently filed in the United States or abroad.
Therefore, the ability to file an application without a claim or
drawing should be viewed as a safeguard against the loss of a filing
date due to a technicality and not as a best practice.
PLT Article 5(2) permits the description of the invention to be
filed in any language.
As discussed previously, the filing date requirements in PLT
Article 5 are not simply the maximum requirements but instead
constitute the absolute minimum and maximum requirements for an
application to be accorded a filing date. See PLT Art. 2(1).
Finally, as discussed previously, the PLT does not apply to design
applications. Section 202(a) of the PLTIA amends 35 U.S.C. 171 to
provide that the filing date of an application for design patent shall
be the date on which the specification as prescribed by 35 U.S.C. 112
and any required drawings are filed. See 126 Stat. at 1535. Therefore,
a design application must contain a claim and any required drawings to
be entitled to a filing date.
35 U.S.C. 111(a) as in effect prior to the PLTIA provides that the
fee and oath or declaration may be submitted after the specification
and any required drawing are submitted, within such period and under
such conditions, including the payment of a surcharge, as may be
prescribed by the Director, and that upon failure to submit the fee and
oath or declaration within such prescribed period, the application
shall be regarded as abandoned. See 35 U.S.C. 111(a)(3) and (a)(4).
Section 201(a) of the PLTIA amends 35 U.S.C. 111(a)(3) and (a)(4) to
provide that the fee, oath or declaration, and claim or claims may be
submitted after the filing date of the application, within such period
and under such conditions, including the payment of a surcharge, as may
be prescribed by the Office, and that upon failure to submit the fee,
oath or declaration, and claim or claims within the period prescribed by
the Office, the application shall be regarded as abandoned. See 126 Stat.
at 1533.
Section 201(a) of the PLTIA further amends 35 U.S.C. 111 to: (1)
More closely align the corresponding provisions for nonprovisional
applications in 35 U.S.C. 111(a) and provisional applications in 35
U.S.C. 111(b); (2) more clearly distinguish the filing date
requirements in those sections from the more substantive requirements
of 35 U.S.C. 112 and 113; and (3) delete the reference to the
"unavoidable or unintentional" standard in favor of an "unintentional"
standard in new 35 U.S.C. 27. See id.
PLT Article 5(6) pertains to applications containing a missing part
of the description or a missing drawing. PLT Article 5(6)(a) provides
that if the missing part of the description or a missing drawing is
timely filed, the filing date of the application shall be the date on
which the Office has received that part of the description or that
drawing. PLT Article 5(6)(c) provides that if the missing part of the
description or the missing drawing is timely withdrawn by the
applicant, the filing date of the application shall be the date on
which the applicant complied with requirements provided for in PLT
Article 5(1) and (2). PLT Article 5(6)(b) provides that where (i) a
prior-filed application contains the missing part of the description
and/or missing drawing, (ii) the application as filed claims the
priority to the prior-filed application, and (iii) the applicant timely
files a copy of the prior-filed application (and translation if
necessary), the filing date of the application (including the missing
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1512 |
part of the description and/or missing drawing) shall be the date on
which the applicant complied with requirements provided for in PLT
Article 5(1) and (2). The Office's procedures concerning the handling
of applications containing a missing part of the description or a
missing drawing are set forth in sections 601.01(d) (applications filed
without all pages of the specification) and 601.01(g) (applications
filed without all figures of drawings) of the Manual of Patent
Examining Procedure (8th ed. 2001) (Rev. 9, Aug. 2012) (MPEP).
PLT Article 5(7) provides that a reference to a previously filed
application, made upon the filing of the application, shall replace the
description and any drawings of the application for purposes of the
filing date of the application. PLT Rule 2(5) requires that this
reference to the previously filed application indicate that, for the
purposes of the filing date, the description and any drawings of the
application are replaced by the reference to the previously filed
application, and also indicate the application number and the office
(intellectual property authority or country) where the previously filed
application was filed. PLT Rule 2(5) further provides that a
Contracting Party may require that: (1) A copy of the previously filed
application and a translation of the previously filed application (if
not in a language accepted by the Office) be filed with the Office
within a time limit of not less than two months from the date on which
the application containing the reference was received by the Office;
and (2) a certified copy of the previously filed application be filed
with the Office within a time limit of not less than four months from
the date on which the application containing the reference was received
by the Office.
Section 201(a) of the PLTIA amends 35 U.S.C. 111 to provide for
this reference filing in a new 35 U.S.C. 111(c). New 35 U.S.C. 111(c)
provides that a reference made upon the filing of an application to a
previously filed application shall, as prescribed by the Office,
constitute the specification and any drawings of the subsequent
application for purposes of a filing date. See 126 Stat. at 1533-34.
New 35 U.S.C. 111(c) specifically provides that the Director may
prescribe the conditions, including the payment of a surcharge, under
which a reference made upon the filing of an application under 35
U.S.C. 111(a) to a previously filed application, specifying the
previously filed application by application number and the intellectual
property authority or country in which the application was filed, shall
constitute the specification and any drawings of the subsequent
application for purposes of a filing date. See 126 Stat. at 1533. New
35 U.S.C. 111(c) further provides that a copy of the specification and
any drawings of the previously filed application shall be submitted
within such period and under such conditions as may be prescribed by
the Director, and that a failure to submit the copy of the
specification and any drawings of the previously filed application
within the prescribed period shall result in the application being
regarded as abandoned. See 126 Stat. at 1533-34. New 35 U.S.C. 111(c)
finally provides that such an abandoned application shall be treated as
having never been filed, unless: (1) The application is revived under
35 U.S.C. 27; and (2) a copy of the specification and any drawings of
the previously filed application are submitted to the Director. See 126
Stat. at 1534.
PLT Article 6 standardizes application format requirements by
providing that a Contracting Party may not impose form or content
requirements different from or in addition to the form and content
requirements provided for in the PCT, or permitted by the PCT for
international applications during national processing or examination,
or as prescribed in the PLT Regulations. The United States has taken a
reservation with respect to PLT Article 6, in that PLT Article 6(1)
shall not apply to any requirement relating to unity of invention
applicable under the PCT to an international application. See Patent
Law Treaty and Regulations under Patent Law Treaty, Executive Report
110-6 at 6. The Office appreciates that patent stakeholders prefer that
the Office move from the "independent and distinct" restriction
standard of 35 U.S.C. 121 to the "unity of invention" standard of PCT
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1513 |
Rule 13. The Office is in the process of studying the changes to the
patent statute, regulations, examination practices, and filing fees
that would be necessary to move from the "independent and distinct"
restriction standard of 35 U.S.C. 121 to the "unity of invention"
standard of PCT Rule 13 in a practical manner.
The PLT further provides for the establishment of standardized
Model International Forms, which will have to be accepted by all
Contracting Parties. The following Model International Forms have been
established under the PLT: (1) Model International Request Form; (2)
Model International Power of Attorney Form; (3) Model International
Request for Recordation of Change in Name or Address Form; (4) Model
International Request for Correction of Mistakes Form; (5) Model
International Request for Recordation of Change in Applicant or Owner
Form; (6) Model International Certificate of Transfer Form; (7) Model
International Request for Recordation of a License/Cancellation of the
Recordation of a License Form; and (8) Model International Request for
Recordation of a Security Interest/Cancellation of the Recordation of a
Security Interest Form.
PLT Articles 6, 7, and 8 provide for simplified procedures, such as
exceptions from mandatory representation for certain actions,
restrictions on requiring evidence on a systematic basis, permitting a
single communication for more than one application or patent from the same
person in certain situations (e.g., powers of attorney), and
restrictions on the requirement to submit a copy and any necessary
translation of an earlier application.
PLT Rule 7(2)(b) specifically provides that a single power of
attorney is sufficient even where it relates to more than one
application or patent of the same person, and also that a power of
attorney will be sufficient where it relates to future applications of
such person. PLT Rule 7(2)(b) permits the Office to require a separate
copy of the power of attorney be filed in each application and patent
to which it relates. The Office permits a single power of attorney for
multiple applications or patents of the same person, but requires a
separate copy of the power of attorney be filed in each application or
patent to which it relates. See 37 CFR 1.4(b). A person may give a
power of attorney that is not specific to an application or patent,
similar to the General Power of Attorney used in PCT practice (general
power of attorney), and a practitioner having authority from such
person may submit a copy of the general power of attorney in any
application or patent of that person.
PLT Articles 11, 12, and 13 provide procedures to avoid the loss of
substantive rights as a result of an unintentional failure to comply
with formality requirements or time periods.
PLT Article 11 requires a Contracting Party to provide for either
extensions of time (or an alternative to reinstate the applicant's or
owner's rights) for time limits fixed by the Contracting Party. The PLT
distinguishes between time limits fixed by applicable law and time
limits fixed by the Contracting Party. A time limit is fixed by
applicable law when the time limit is provided for in a statute (e.g.,
the three-month period in 35 U.S.C. 151) or regulation (e.g., the
three-month period in 37 CFR 1.85(c)). A time limit is fixed by the
Contracting Party when the applicable statute or regulation provides
for a time period to be set, but does not specify the time limit itself
(e.g., 35 U.S.C. 133, 37 CFR 1.53(f)(1), or 37 CFR 1.134). While many
time limits fixed by regulation are extendable (e.g., 37 CFR
1.53(f)(1), and 1.137(e)), PLT Article 11 applies only to time limits
that are not fixed by statute or regulation. The PLT also provides that
extensions of time under PLT Article 11(1) must not be for less than
two months from the date of the expiration of the unextended time
period (PLT Rule 12(2)(a)).
PLT Article 12 provides for reinstatement of rights on the basis of
unintentional delay (or alternatively if the failure occurred in spite
of due care). Section 201(b) of the PLTIA adds a new section 27 to
title 35. New 35 U.S.C. 27 provides that the Director may establish
procedures to revive an unintentionally abandoned application for
patent, accept an unintentionally delayed payment of the fee for
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1514 |
issuing each patent, or accept an unintentionally delayed response by
the patent owner in a reexamination proceeding, upon petition by the
applicant for patent or patent owner. See 126 Stat. at 1534. As
discussed previously, the PLTIA eliminates the provisions of the patent
statutes relating to revival or acceptance of delayed maintenance fee
payments on the basis of a showing of "unavoidable" delay. Thus, the
PLTIA provides a single standard (unintentional delay) for reviving
abandoned applications, accepting delayed issue fee and maintenance fee
payments, and accepting delayed responses by the patent owner in a
reexamination proceeding.
Section 202(b)(1)(A) of the PLTIA amends 35 U.S.C. 41(a)(7) to
provide that the Office shall charge $1,700.00 on filing each petition
for the revival of an abandoned application for a patent, for the
delayed payment of the fee for issuing each patent, for the delayed
response by the patent owner in any reexamination proceeding, for the
delayed payment of the fee for maintaining a patent in force, for the
delayed submission of a priority or benefit claim, or for the extension
of the twelve-month period for filing a subsequent application. See 126
Stat. at 1535.
Section 202(b)(1)(A) of the PLTIA also amends 35 U.S.C. 41(a)(7) to
provide that the Director may refund any part of this fee in
exceptional circumstances as determined by the Director. See id. The
Office has a practice of waiving surcharges not required by statute in
situations in which the failure to take the required action or pay the
required fee was due to a widespread disaster, such as a hurricane,
earthquake, or flood. See, e.g., Relief Available to Patent and
Trademark Applicants, Patentees and Trademark Owners Affected by
Hurricane Sandy, 1385 Off. Gaz. Pat. Office 162 (Dec. 18, 2012), Relief
Available to Patent and Trademark Applicants, Patentees and Trademark
Owners Affected by the Severe Earthquakes in Northern Italy, 1381 Off.
Gaz. Pat. Office 213 (Aug. 21, 2012), Relief Available to Patent and
Trademark Applicants, Patentees and Trademark Owners Affected by the
Catastrophic Flooding in Thailand, 1375 Off. Gaz. Pat. Office 188 (Feb.
21, 2012), Relief Available to Patent and Trademark Applicants,
Patentees and Trademark Owners Affected by the Catastrophic Events of
March 11, 2011, in Japan, 1365 Off. Gaz. Pat. Office 170 (Apr. 19,
2011), and Petitions to Accept a Delayed Patent Maintenance Fee Payment
where Non-Payment was due to the Effects of Hurricane Katrina, 1299
Off. Gaz. Pat. Office 20 (Oct. 4, 2005). This provision of PLTIA 35
U.S.C. 41(a)(7) permits the Office to refund (or waive) the fee
specified in 35 U.S.C. 41(a)(7) in situations in which the failure to
take the required action or pay the required fee was due to a
widespread disaster, such as a hurricane, earthquake, or flood, in the
manner that the Office would waive surcharges that are not required by
statute.
Section 202(b)(1)(B) of the PLTIA also amends 35 U.S.C. 41(c)(1) to
conform procedures for the late payment of maintenance fees with those
provided in new 35 U.S.C. 27. Section 202(b)(1)(B) of the PLTIA
specifically amends 35 U.S.C. 41(c)(1) to delete the twenty-four month
time limit for unintentionally delayed maintenance fee payments and the
reference to an unavoidable standard. PLTIA 35 U.S.C. 41(c)(1) provides
that: (1) The Director may accept the payment of any maintenance fee
required by 35 U.S.C. 41(b) after the six-month grace period if the
delay is shown to the satisfaction of the Director to have been
unintentional; (2) the Director may require the payment of the fee
specified in 35 U.S.C. 41(a)(7) as a condition of accepting payment of
any maintenance fee after the six-month grace period; and (3) if the
Director accepts payment of a maintenance fee after the six-month grace
period, the patent shall be considered as not having expired at the end
of the grace period (subject to the pre-existing intervening rights
provision of 35 U.S.C. 41(c)(2)). See 126 Stat. at 1535-36.
Section 202(b) of the PLTIA also amends 35 U.S.C.
122(b)(2)(B)(iii), 133, 151, 364(b), and 371(d) to delete the reference
to an unavoidable standard in light of new 35 U.S.C. 27. See 126 Stat.
at 1536.
Section 202(b)(6) of the PLTIA amends 35 U.S.C. 151 to provide
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1515 |
that: (1) If it appears that an applicant is entitled to a patent under
the law, a written notice of allowance of the application shall be
given or mailed to the applicant; (2) the notice of allowance shall
specify a sum, constituting the issue fee and any required publication
fee, which shall be paid within three months thereafter; and (3) upon
payment of this sum, the patent may issue, but if payment is not timely
made, the application shall be regarded as abandoned. See id. Under former
35 U.S.C. 151: (1) The Office issues a notice of allowance if it appears
that applicant is entitled to a patent under the law; (2) the notice of
allowance specifies a sum, which constitutes the issue fee or a portion
thereof; (3) the sum specified in the notice of allowance must be paid
within three months; (4) the patent shall issue if the sum specified in the
notice of allowance is timely paid, but the application is abandoned if the
sum specified in the notice of allowance is not timely paid; (5) any
remaining balance of the issue fee must be paid within three months
from the mailing of a notice that the balance of the issue fee is due;
and (6) the patent shall lapse if any remaining balance of the issue
fee is not paid within three months from the mailing of a notice that
the balance of the issue fee is due. See In re Mill, 12 USPQ2d 1847
(1989) (discussing the practice prescribed in 35 U.S.C. 151 for
obtaining the balance of the issue fee due in an application in which
the sum specified in the notice of allowance is timely paid). The PLTIA
amends 35 U.S.C. 151 to provide that the sum specified by the notice of
allowance constitutes the issue fee and any required publication fee
(rather than the issue fee or a portion thereof), and eliminates the
provisions (the third and fourth paragraphs of former 35 U.S.C. 151)
pertaining to the lapsed patent practice.
The lapsed patent provisions of former 35 U.S.C. 151 were relevant
when the issue fee was revised after a notice of allowance is issued
but before the issue fee is paid. Under former 35 U.S.C. 151: (1) If
the fee specified in the notice of allowance was timely paid, the
Office would issue a notice that any balance of the issue fee is due
and give the applicant three months to pay the balance of the issue
fee; and (2) if the balance of the issue fee was not paid within this
three-month period, then the patent would lapse. See Mill, 12 USPQ2d at
1848. Under the changes to 35 U.S.C. 151 in the PLTIA, the sum
specified in the notice of allowance will constitute the issue fee and
any required publication fee, and the Office will proceed to issue a
patent when the applicant pays the sum specified in the notice of
allowance, regardless of the issue fee and/or publication fee in effect
on the date the sum specified in the notice of allowance is paid.
The Office published a final rule in March of 2013, setting and
adjusting patent fees under section 10 of the AIA. See Setting and
Adjusting Patent Fees, 78 FR 4212 (Jan. 18, 2013) (fee setting final
rule). The fee setting final rule reduces issue fees and publication
fees paid on or after January 1, 2014. See Setting and Adjusting Patent
Fees, 78 FR at 4235-36, 4286-87. To allow applicants whose notice of
allowance is mailed between October 1, 2013, and December 31, 2013, to
take advantage of the reduced issue and publication fee, any notice of
allowance mailed between October 1, 2013, and December 31, 2013, will
indicate that the issue and publication fee due is the lower of: (1)
The issue fee plus publication fee in effect on the date the notice of
allowance is mailed; or (2) the issue and publication fee in effect on
the date the issue and publication fee is paid. Thus, the sum specified
in a notice of allowance mailed between October 1, 2013, and December
31, 2013, will be the issue fee in effect on January 1, 2014, for
applicants who receive a notice of allowance before January 1, 2014,
but who pay the issue fee on or after January 1, 2014.
PLT Article 13 provides for the restoration of the right of
priority where there is a failure to timely claim priority to the prior
application, and also where there is a failure to file the subsequent
application within twelve months of the filing date of the priority
application. Section 201(c) of the PLTIA amends 35 U.S.C. 119 to
provide that the twelve-month periods set forth in 35 U.S.C. 119(a) and
(e) may be extended by an additional two months if the delay in filing
an application claiming priority to a foreign application or the
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1516 |
benefit of a provisional application within that twelve-month period
was unintentional. Section 201(c) of the PLTIA also amends 35 U.S.C.
119(a) and 365(b) to provide for unintentionally delayed claims for
priority under the PCT and the Regulations under the PCT, and priority
claims to an application not filed within the priority period specified
in the PCT and the Regulations under the PCT but filed within the
additional two-month period.
Section 201(c) of the PLTIA specifically amends 35 U.S.C. 119(a) by
adding that the Director may prescribe regulations, including the
requirement for payment of the fee specified in 35 U.S.C. 41(a)(7),
pursuant to which the twelve-month period set forth in 35 U.S.C. 119(a)
may be extended by an additional two months if the delay in filing the
application in the United States within the twelve-month period was
unintentional. See 126 Stat. at 1534.
Section 201(c) of the PLTIA specifically amends 35 U.S.C. 119(e)(1)
by adding that the Director may prescribe regulations, including the
requirement for payment of the fee specified in 35 U.S.C. 41(a)(7),
pursuant to which the twelve-month period set forth in 35 U.S.C. 119(e)
may be extended by an additional two months if the delay in filing the
application under 35 U.S.C. 111(a) or 363 within the twelve-month
period was unintentional. See id.
Section 201(c) of the PLTIA amends 35 U.S.C. 119(e)(3) by adding
that for a patent application filed under 35 U.S.C. 363 in a Receiving
Office other than the United States Patent and Trademark Office, the
twelve-month and additional two-month period set forth in 35 U.S.C.
119(e) shall be extended as provided under the PCT and PCT Regulations.
See 126 Stat. at 1534-35.
Section 201(c) of the PLTIA amends 35 U.S.C. 365(b) by adding that
the Director may establish procedures, including the requirement for
payment of the fee specified in 35 U.S.C. 41(a)(7), to accept an
unintentionally delayed claim for priority under the PCT and PCT
Regulations, and to accept a priority claim that pertains to an
application that was not filed within the priority period specified in
the PCT and PCT Regulations, but was filed within the additional two-
month period specified under 35 U.S.C. 119(a) or the PCT or PCT
Regulations. See 126 Stat. at 1535.
Sections 201(c) and 202(b)(2) and (b)(3) of the PLTIA amend 35
U.S.C. 119(b), 119(e), and 120 to change the phrase "including the
payment of a surcharge" in the provision pertaining to the submission
of delayed priority or benefit claims to "including the requirement
for payment of the fee specified in [35 U.S.C.] 41(a)(7)." See 126
Stat. at 1534 and 1536.
PLT Article 14 and PLT Rules 15, 16, and 17 pertain to requests for
a change in the applicant's or owner's name or address, requests for a
change in the applicant or owner (e.g., due to an assignment), requests
for recordation of a license or a security interest, and requests for
correction of a mistake.
35 U.S.C. 261 as in effect prior to the PLTIA provides that:
"Subject to the provisions of this title, patents shall have the
attributes of personal property." Section 201(d) of the PLTIA amends
35 U.S.C. 261, first paragraph, by adding: "[t]he [United States]
Patent and Trademark Office shall maintain a register of interests in
applications for patents and patents and shall record any document
related thereto upon request, and may require a fee therefor." See 126
Stat. at 1535. Section 201(d) of the PLTIA also amends 35 U.S.C. 261,
fourth paragraph, to read as follows: "An interest that constitutes an
assignment, grant or conveyance shall be void as against any subsequent
purchaser or mortgagee for a valuable consideration, without notice,
unless it is recorded in the [United States] Patent and Trademark
Office within three months from its date or prior to the date of such
subsequent purchase or mortgage." See id.
PLT Rule 15(3)(b) provides that a single request for recordation of
a change in the name and/or address of the applicant or owner is
sufficient even where it relates to more than one application or patent
of the same person, but also permits the Office to require a separate
copy of the request for each application and patent to which it
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1517 |
relates. PLT Rules 16(5) and 17(5) provide that a single request for
recordation of a change in the applicant or owner and a single request
for recordation of a license or security interest is sufficient even
where it relates to more than one application or patent of the same
person, but also permits the Office to require a separate copy of the
request for each application and patent to which it relates. The Office
will permit a single request for recordation of a change in the name
and/or address of the applicant or owner, single request for
recordation of a change in the applicant or owner, and a single request
for recordation of a license or security interest for multiple
applications or patents of the same person, but will require a separate
copy of such a request for each application and patent to which it
relates. See 37 CFR 1.4(b).
PLT Rule 18(3) provides that a single request for correction of a
mistake is sufficient even where it relates to more than one
application or patent of the same person, provided that the mistake and
correction are common to all applications or patents concerned, but
also permits the Office to require a separate copy of the request for
each application and patent to which it relates. The Office will permit
a single request for correction of a mistake to more than one
application or patent of the same person, provided that the mistake and
correction are common to all applications or patents concerned, but
will require a separate copy of such a request for each application and
patent to which it relates. See 37 CFR 1.4(b).
The PLT also provides for a minimum two-month time period for
replies to notifications concerning noncompliance pertaining to: (1)
Filing date issues or omitted drawings or pages of specification (PLT
Rule 2(1)); (2) the form or content of an application (PLT Rule 6(1));
(3) the appointment of a representative (PLT Rule 7(5)); (4) the formal
requirements for communications from the applicant or patent owner (PLT
Rule 11(1)); (5) requests for recordation of a change in name or
address (PLT Rule 15(6); (6) requests for recordation of a change in
the applicant or patent owner (PLT Rule 16(8)); (7) requests for
recordation of a license or a security interest (PLT Rule 17(8)); and
(8) requests for correction of a mistake (PLT Rule 18(6)).
The Office has and may continue to develop certain pilot programs
that are not encompassed by the PLT. These pilot programs will continue
to set time periods of less than two months in certain situations as
necessary to avoid delays and permit the timely evaluation of the
effectiveness of the program.
The first is the pre-appeal brief conference program. The Notice of
Panel Decision from Pre-Appeal Brief Review will continue to set a time
period of one month from the mailing of the Notice of Panel Decision
from Pre-Appeal Brief Review, or the balance of the two-month time
period running from the notice of appeal, whichever is longer, to file
an appeal brief in order to avoid dismissal of the appeal if the result
of the pre-appeal brief review is that the applicant must proceed to
the Patent Trial and Appeal Board. The Notice of Non-Compliant Pre-
Appeal Brief Request for Review will continue to set a time period of
one month from the mailing of the Notice of Non-Compliant Pre-Appeal
Brief Request for Review, or the balance of the two-month time period
running from the notice of appeal, whichever is longer, to file an
appeal brief in order to avoid dismissal of the appeal.
The second is the pre-first Office action on the merits interview
program. The Notice of Non-Compliant First Action Interview Request
will continue to set a non-extendable time period of one month or
thirty days, whichever is longer, for an applicant to correct the
deficiencies to avoid the application being removed from the Full First
Office Action Interview Pilot Program and examined in regular course.
The First Action Interview Pilot Program Pre-Interview Communication
will continue to set a time period of one month or thirty days,
whichever is longer (extendable by only one month) for an applicant to
schedule an interview and submit a proposed amendment or arguments to
avoid the application being removed from the Full First Office Action
Interview Pilot Program and examined in regular course. However, the
Office is revising the Full First Action Interview program to provide
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1518 |
that the First Action Interview Office Action Summary will set a time
period of two months (extendable by two months) in order for an
applicant to reply to the Office action.
The Office is revising the Accelerated Examination program in view
of the PLT. The Office adopted an Accelerated Examination program in
2006, which provided for Office actions setting a one-month non-
extendable time period for replies. See Changes to Practice for
Petitions in Patent Applications To Make Special and for Accelerated
Examination, 71 FR 36323, 36325 (June 25, 2006); see also MPEP
708.02(a). The Office is revising the Accelerated Examination program
to provide that Office actions (other than a notice of allowance) will
set a shortened statutory period for reply of at least two months. In
addition, extensions of this shortened statutory period under 37 CFR
1.136(a) will be permitted, but filing a petition for an extension of
time will result in the application being taken out of the Accelerated
Examination program, in the same manner as filing a petition for an
extension of time will result in the application being taken out of the
Prioritized Examination program. Cf. Changes To Implement the
Prioritized Examination Track (Track I) of the Enhanced Examination
Timing Control Procedures Under the Leahy-Smith America Invents Act, 76
FR 59050, 59051 (Sept. 23, 2011).
Section 203(a) provides that the amendments made by title II of the
PLTIA take effect on December 18, 2013 (the date that is one year after
the date of the enactment of the PLTIA) and apply to: (1) Any patent
issued before, on, or after December 18, 2013; and (2) any application
for patent that is pending on or filed after December 18, 2013. See 126
Stat. at 1536. Section 203(b) provides that the amendments to 35 U.S.C.
111 made by title II of the PLTIA apply only to applications that are
filed on or after December 18, 2013. Section 203(b) also provides that
the amendments made by title II of the PLTIA shall have no effect with
respect to any patent that is the subject of litigation in an action
commenced before December 18, 2013. See 126 Stat. at 1537.
As discussed previously, the PLT does not apply to design, plant,
provisional, or reissue applications. The changes in the PLTIA and this
final rule to implement the PLT, however, are applicable to design,
plant, provisional, and reissue applications, except that PLTIA 35
U.S.C. 171 and 37 CFR 1.53(b) as adopted in this final rule require that
a design application contain a claim and any required drawings to be
entitled to a filing date.
The PLT itself will enter into force for the United States three
months after the date on which the United States deposits its
instrument of ratification with the Director General of WIPO or on a
later date indicated in the U.S. instrument (but no later than six
months after the date the instrument is deposited). See PLT Art.
21(2)(ii) and Patent Law Treaty and Regulations under Patent Law
Treaty, Executive Report 110-6 at 3. The Office plans to modify its
procedures not covered by title II of the PLTIA for consistency with
the PLT and PLT Regulations no later than December 18, 2013. However,
the changes to Office practices do not affect the requirements for
replies to Office notices and actions issued prior to December 18,
2013. See PLT Art. 22(2) (a Contracting Party is not obliged to apply
PLT provisions to procedures commenced before the date on which the PLT
binds the Contracting Party under PLT Article 21).
The Office revised the rules of practice to implement the
supplemental examination provisions of the AIA in August of 2012. See
Changes to Implement the Supplemental Examination Provisions of the
Leahy-Smith America Invents Act and to Revise Reexamination Fees, 77 FR
48828 (Aug. 14, 2012). This final rule also adds references to
supplemental examination in the filing, correspondence, deposit
account, and paper and compact disc quality and format provisions of
the rules of practice. The Office is specifically revising these
provisions to indicate that the provisions pertaining to ex parte
reexamination proceedings are also applicable in supplemental
examination proceedings. See Changes to Implement the Supplemental
Examination Provisions of the Leahy-Smith America Invents Act and to
Revise Reexamination Fees, 77 FR at 48830 (adopting ex parte
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1519 |
reexamination content requirements for supplemental examination
proceedings).
Discussion of Specific Rules
The following is a discussion of amendments to Title 37 of the Code
of Federal Regulations, Parts 1, 3, and 11.
Section 1.1: Section 1.1(c) is amended to provide that: (1)
Requests for supplemental examination (original and corrected request
papers), and any other papers filed in a supplemental examination
proceeding, should be additionally marked "Mail Stop Supplemental
Examination;" (2) any papers filed in a reexamination proceeding
ordered as a result of a supplemental reexamination proceeding, other
than correspondence to the Office of the General Counsel pursuant to
§ 1.1(a)(3) and § 102.4, should be additionally marked "Mail
Stop Ex Parte Reexam."
Section 1.4: Section 1.4(a)(2) is amended to add a reference to
supplemental examination proceedings in subpart E of 37 CFR part 1
(§ 1.601 to 1.625).
Section 1.4(c) is amended to provide that subjects provided for on
a single Office or WIPO form may be contained in a single paper. This
provision is to clarify that subjects that are provided for on a single
Office or WIPO form are not considered separate subjects for purposes
of § 1.4(c) (which thus must be contained in separate papers).
Section 1.4(d) is amended to implement the signature provisions of
PLT Rule 9(4) concerning electronic communications. PLT Rule 9(4)
provides that where an Office permits the filing of communications in
electronic form or by electronic means of transmittal, it shall
consider such a communication signed if a graphic representation of a
signature accepted by that Office appears on that communication as
received by the Office. Section 1.4(d) is specifically amended to
provide that correspondence permitted via the Office electronic filing
system may be signed by a graphic representation of a handwritten
signature as provided for in § 1.4(d)(1) or a graphic
representation of an S-signature as provided for in § 1.4(d)(2)
when it is submitted via the Office electronic filing system. Section
1.4(d) is also amended to provide for S-signatures in supplemental
examination proceedings, simplify the organization of the provisions in
§ 1.4(d)(4) pertaining to certifications, and locate the provisions
pertaining to forms in § 1.4(d)(5).
Section 1.5: Section 1.5(d) is amended to provide for letters
relating to supplemental examination proceedings.
Section 1.6: Section 1.6(d) is amended to provide for
correspondence in supplemental examination proceedings in a like manner
to correspondence in ex parte reexamination proceedings. Section 1.6(d)
is specifically amended to provide that a request for supplemental
examination (as with a request for ex parte reexamination) may not be
filed by facsimile, and that the control number of the proceeding
should be entered on the cover sheet of any papers filed in a
supplemental examination proceeding (as with papers filed in an ex
parte reexamination proceeding).
Section 1.7: Section 1.7(a) is amended to refer to § 90.3
rather than former § 1.304 for time for appeal or for commencing
civil action. The judicial review provisions of § 1.302
through 1.304 were replaced by 37 CFR part 90 in September of 2012. See
Rules of Practice for Trials Before the Patent Trial and Appeal Board
and Judicial Review of Patent Trial and Appeal Board Decisions, 77 FR
48612, 48625-26, 48677-78 (Aug. 14, 2012) (final rule).
Section 1.16: Section 1.16(f) is amended to provide that it is also
applicable to filing a nonprovisional application that does not contain
at least one claim on the filing date of the application as well as to
filing a nonprovisional application filed by reference to a previously
filed application under § 1.57(a). See discussion of § 1.53 and 1.57.
Section 1.16(f) provides that the surcharge is applicable to filing the
basic filing fee, search fee, examination fee, or inventor's oath or
declaration on a date later than the filing date of the application, an
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1520 |
application that does not contain at least one claim on the filing date
of the application, or an application filed by reference to a previously
filed application under § 1.57(a), except provisional applications.
Section 1.17: Sections 1.17(f) and (g) are amended for consistency
with the changes to § 1.57. See discussion of § 1.57. Section
1.17(f) is also amended to add the phrase "in an application for
patent" in the references to § 1.182 and 1.183 to clarify
that the fee specified in § 1.17(f) is not applicable in
reexamination proceedings. The fee for filing a petition in a
reexamination proceeding (except for those specifically enumerated in
§ 1.550(i) and 1.937(d)) is set forth in § 1.20(c)(6). See
Changes to Implement the Supplemental Examination Provisions of the
Leahy-Smith America Invents Act and to Revise Reexamination Fees, 77 FR
at 48832 and 48851.
Section 1.17(m) is amended to implement the change to 35 U.S.C.
41(a)(7), 41(c)(1), 119, 120, and 365 in section 202(b) of the PLTIA.
Section 202(b)(1)(A) of the PLTIA amends 35 U.S.C. 41(a)(7) to provide
that the Office shall charge $1,700.00 ($850.00 small entity) on filing
each petition for the revival of an abandoned application for a patent,
for the delayed payment of the fee for issuing each patent, for the
delayed response by the patent owner in any reexamination proceeding,
for the delayed payment of the fee for maintaining a patent in force,
for the delayed submission of a priority or benefit claim, or for the
extension of the twelve-month period for filing a subsequent application.
Sections 202(b)(1)(B), 202(b)(2), and 202(b)(3) of the PLTIA amend 35
U.S.C. 41(c)(1), 119, and 120 to replace "payment of a surcharge" with
"payment of the fee specified in section 41(a)(7)." Section 1.17(m) as
adopted in this final rule does not include a micro entity fee amount as
this fee is set under 35 U.S.C. 41(a)(7) as amended by 202(b)(1)(A) of the
PLTIA and not section 10(a) of the AIA. Section 10(b) of the AIA provides
that the micro entity discount applies to fees set under section 10(a) of
the AIA. See Public Law 112-29, 125 Stat. 284, 316-17 (2011). The fee
specified in § 1.17(m) will have a micro entity amount when patent fees
are again set under section 10(a) of the AIA.
Section 1.17(p) is amended, and § 1.17(o) is added, to provide
for information disclosure statements under § 1.97(c) or (d) in
§ 1.17(p) and for third-party submissions under § 1.290 in
§ 1.17(o). Section 1.17(p) formerly provided for both information
disclosure statements under § 1.97(c) or (d) and third-party
submissions under § 1.290, which could have caused confusion as a
third party is not eligible for the micro entity discount. Thus,
§ 1.17(p) as adopted in this final rule provides for information
disclosure statements under § 1.97(c) or (d) and includes both a
small entity and micro entity discount, and § 1.17(o) as adopted in
this final rule provides for third-party submissions under § 1.290
and includes only a small entity discount.
Sections 1.17(l) and 1.17(t) are removed in view of the change to
35 U.S.C. 41(a)(7), 119, and 120 in section 202(b) of the PLTIA.
Section 1.20: Section 1.20(i) is removed in view of the change to
35 U.S.C. 41(a)(7) and 41(c)(1) in section 202(b)(1) of the PLTIA.
Section 1.23: Section 1.23(c) is added to provide that a fee
transmittal letter may be signed by a juristic applicant or patent
owner. PLT Article 7(2) provides that an assignee of an application, an
applicant, owner, or other interested person may act pro se before the
Office for the mere payment of a fee.
Section 1.25: Section 1.25(b) is amended to provide for deposit
account charge authorizations in supplemental examination proceedings
in a like manner to deposit account charge authorizations in ex parte
reexamination proceedings. Section 1.25(b) is specifically amended to
provide that an authorization to charge a deposit account the fee for a
request for supplemental examination pursuant to § 1.610 and any
other fees required in a supplemental examination proceeding in a
patent may also be filed with the request for supplemental examination.
Section 1.29: Section 1.29(e) is amended to provide that a micro
entity certification in an international application filed in a
Receiving Office other than the United States Receiving Office may be
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1521 |
signed by a person authorized to represent the applicant under § 1.455.
Section 1.29(k)(4) is amended to delete "but payment of a
deficiency based upon the difference between the current fee amount for
a small entity and the amount of the previous erroneous micro entity
fee payment will not be treated as an assertion of small entity status
under § 1.27(c)" and "[o]nce a deficiency payment is submitted
under this paragraph, a written assertion of small entity status under
§ 1.27(c)(1) is required to obtain small entity status." This
change to § 1.29(k)(4) is for consistency with the provision of
§ 1.29(i) that a notification of loss of micro entity status is not
automatically treated as a notification of loss of small entity status.
Section 1.33: Section 1.33(c) is amended to provide for
correspondence to and from the patent owner in supplemental examination
proceedings in a like manner to correspondence to and from the patent
owner in ex parte reexamination proceedings. Section 1.33(c) is
specifically amended to provide that all notices, official letters, and
other communications for the patent owner in a supplemental examination
proceeding will be directed to the correspondence address in the patent
file, and that papers filed in a supplemental examination proceeding on
behalf of the patent owner must be signed by the patent owner, or if
there is more than one owner by all the owners, or by an attorney or
agent of record in the patent file, or by a registered attorney or
agent not of record who acts in a representative capacity under the
provisions of § 1.34.
Section 1.51: Section 1.51(a) is amended to provide that an
application transmittal letter limited to the transmittal of the
documents and fees comprising a patent application under this section
may be signed by a juristic applicant or patent owner. PLT Article 7(2)
provides that an assignee of an application, an applicant, owner, or
other interested person may act pro se before the Office for the filing
of an application for the purposes of the filing date.
Section 1.52: Section 1.52(a)(1), (b)(2), (b)(4), (b)(5), and
(b)(6) are amended to provide for paper quality and format requirements
in supplemental examination proceedings in a like manner to paper
quality and format requirements in ex parte reexamination proceedings.
Section 1.52(e) is amended to provide for compact disc quality and
format requirements in supplemental examination proceedings in a like
manner to compact disc quality and format requirements in ex parte
reexamination proceedings.
Section 1.53: Section 1.53 is amended to implement the changes to
35 U.S.C. 111 in section 201 of the PLTIA and the change to 35 U.S.C.
171 in section 202(a) of the PLTIA.
Section 201(a) of the PLTIA amends 35 U.S.C. 111(a) to provide that
the filing date of an application (other than for a design patent) is
the date on which a specification, "with or without claims," is
received in the Office. Section 1.53(b) as adopted in this final rule
thus provides that the filing date of an application for patent filed
under § 1.53, except for an application for a design patent or a
provisional application under § 1.53(c), is the date on which a
specification, with or without claims, is received in the Office.
Section 202(a) of the PLTIA amends 35 U.S.C. 171 to provide that
the filing date of an application for design patent shall be the date
on which the specification as prescribed by 35 U.S.C. 112 and any
required drawings are filed. Therefore, a design application must
contain a claim to be entitled to a filing date. Section 1.53(b) as
adopted in this final rule thus provides that the filing date of an
application for a design patent filed under this section, except for a
continued prosecution application under § 1.53(d), is the date on
which the specification as prescribed by 35 U.S.C. 112, including at
least one claim, and any required drawings are received in the Office.
Section 201(a) of the PLTIA amends 35 U.S.C. 111(b) to more closely
align the corresponding provisions for nonprovisional applications in
35 U.S.C. 111(a) and provisional applications in 35 U.S.C. 111(b).
Section 1.53(c) as adopted in this final rule thus provides that the
filing date of a provisional application is the date on which a
specification, with or without claims, is received in the Office.
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1522 |
As discussed previously, PLT Article 5 and PLTIA 35 U.S.C. 111(a)
provide minimal formal requirements necessary for an application to be
entitled to a filing date to safeguard against the loss of a filing
date due to a technicality. PLT Article 5 and PLTIA 35 U.S.C. 111
should not be viewed as prescribing a best practice for the preparation
and filing of a patent application. The preparation of claims to any
claimed invention for which patent protection is desired and inclusion of
such claims with the application on filing will help ensure that the
application satisfies the disclosure requirements of 35 U.S.C. 112(a) for
any such claimed invention.
Section 201(a) of the PLTIA amends 35 U.S.C. 111(a) to provide that
the claim or claims may be submitted after the filing date of the
application, within such period and under such conditions, including
the payment of a surcharge, as may be prescribed by the Office, and
that upon failure to submit one or more claims within the period
prescribed by the Office, the application shall be regarded as
abandoned. Section 1.53(f) as adopted in this final rule thus provides
that an application filed without at least one claim would be treated
in a manner analogous to how an application without the filing, search,
or examination fee is treated under pre-existing § 1.53. Section
1.53(f) specifically provides that if an application which has been
accorded a filing date pursuant to § 1.53(b) does not include at
least one claim: (1) The applicant will be notified and given a period
of time within which to file a claim or claims and pay the surcharge if
required by § 1.16(f) to avoid abandonment if the applicant has
provided a correspondence address; and (2) the applicant has three
months from the filing date of the application within which to file a
claim or claims and pay the surcharge required by § 1.16(f) to
avoid abandonment if the applicant has not provided a correspondence
address.
The changes to § 1.53 to implement the changes to 35 U.S.C. 111
in section 201 of the PLTIA and the change to 35 U.S.C. 171 in section
202(a) of the PLTIA (just discussed previously) apply only to
applications under 35 U.S.C. 111 filed on or after December 18, 2013.
Section 1.53 is also amended to implement the change to 35 U.S.C.
115 in section 1(f) of the Act to correct and improve certain
provisions of the Leahy-Smith America Invents Act and title 35, United
States Code (AIA Technical Corrections Act). Section 1(f) of the AIA
Technical Corrections Act amends 35 U.S.C. 115(f) to read as follows:
"[t]he applicant for patent shall provide each required oath or
declaration under [35 U.S.C. 115](a), substitute statement under [35
U.S.C. 115](d), or recorded assignment meeting the requirements of [35
U.S.C. 115](e) no later than the date on which the issue fee for the
patent is paid." See Public Law 112-274, section 1(f), 126 Stat. 2456-
57 (2013).
In the rulemaking to implement the inventor's oath or declaration
provisions of the AIA, the Office provided that applicants may postpone
filing the inventor's oath or declaration until the application is
otherwise in condition for allowance if the applicant provides an
application data sheet before examination indicating the name,
residence, and mailing address of each inventor. See Changes to
Implement the Inventor's Oath or Declaration Provisions of the Leahy-
Smith America Invents Act, 77 FR 48776, 48779-80 (Aug. 14, 2012) (final
rule). AIA 35 U.S.C. 115(f) provided that a notice of allowance under
35 U.S.C. 151 may be provided to an applicant only if the applicant has
filed each required oath or declaration under 35 U.S.C. 115(a),
substitute statement under 35 U.S.C. 115(d), or recorded assignment
meeting the requirements of 35 U.S.C. 115(e). The Office thus provided
that if an application is in condition for allowance but does not
include an oath or declaration in compliance with § 1.63, or a
substitute statement in compliance with § 1.64, executed by or with
respect to each actual inventor, the Office will issue a "Notice of
Allowability" (PTOL-37) (but not a "Notice of Allowance and Fee(s)
Due" (PTOL-85)) giving the applicant three months to file an oath or
declaration in compliance with § 1.63, or substitute statement in
compliance with § 1.64, executed by or with respect to each actual
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1523 |
inventor, to avoid abandonment. The Office also provided that the
"Notice of Allowance and Fee(s) Due" (PTOL-85)) will not be issued
until the application includes an oath or declaration in compliance
with § 1.63, or substitute statement in compliance with § 1.64,
executed by or with respect to each actual inventor. See Changes to
Implement the Inventor's Oath or Declaration Provisions of the Leahy-
Smith America Invents Act, 77 FR at 48787-88.
The change to 35 U.S.C. 115(f) in section 1(f) of the AIA Technical
Corrections Act permits the Office to issue a "Notice of Allowance and
Fee(s) Due" (PTOL-85) before the application includes an oath or
declaration in compliance with § 1.63, or substitute statement in
compliance with § 1.64, executed by or with respect to each actual
inventor. See Changes to Implement the Inventor's Oath or Declaration
Provisions of the Leahy-Smith America Invents Act, 77 FR at 48802
(noting that the only effect of AIA 35 U.S.C. 115(f) is to preclude the
Office from issuing a notice of allowance until each required
inventor's oath or declaration has been filed). The Office is thus
revising the provisions pertaining to the filing of an application
without the inventor's oath or declaration to provide that if an
application is in condition for allowance but does not include an oath
or declaration in compliance with § 1.63, or a substitute statement
in compliance with § 1.64, executed by or with respect to each
actual inventor, the Office will issue a "Notice of Allowability"
(PTOL-37) requiring an oath or declaration in compliance with §
1.63, or substitute statement in compliance with § 1.64, executed
by or with respect to each actual inventor, together with the "Notice
of Allowance and Fee(s) Due" (PTOL-85).
35 U.S.C. 115(f) does not specifically provide for the consequence
that results if an applicant fails to provide an oath or declaration in
compliance with § 1.63, or a substitute statement in compliance
with § 1.64, executed by or with respect to each actual inventor.
PLTIA 35 U.S.C. 111(a)(3), however, provides that the "fee, oath or
declaration, and 1 or more claims may be submitted after the filing
date of the application, within such period and under such conditions,
including the payment of a surcharge, as may be prescribed by the
Director," and that "[u]pon failure to submit the fee, oath or
declaration, and 1 or more claims within such prescribed period, the
application shall be regarded as abandoned." Section 1.53(f)(3)(ii) as
adopted in this final rule thus provides that if the applicant is
notified in a notice of allowability that an oath or declaration in
compliance with § 1.63, or substitute statement in compliance with
§ 1.64, executed by or with respect to each named inventor has not
been filed, the applicant must file each required oath or declaration
in compliance with § 1.63, or substitute statement in compliance
with § 1.64, no later than the date on which the issue fee is paid
to avoid abandonment (which time period is not extendable). Section
1.53(f)(3)(ii) as adopted in this final rule also provides that: (1)
The applicant must file each required oath or declaration in compliance
with § 1.63, or substitute statement in compliance with § 1.64,
no later than the date on which the issue fee for the patent is paid
(as required by 35 U.S.C. 115(f)); and (2) that the Office may dispense
with the notice provided for in § 1.53(f)(1) if each required oath
or declaration in compliance with § 1.63, or substitute statement
in compliance with § 1.64, has been filed before the application is
in condition for allowance.
Section 1.54: Section 1.54(b) is amended to provide that a letter
limited to a request for a filing receipt (which includes a corrected
filing receipt) may be signed by a juristic applicant or patent owner.
PLT Article 7(2) provides that an assignee of an application, an
applicant, owner, or other interested person may act pro se before the
Office for the issue of a receipt or notification by the Office in respect
of any procedure referred to in PLT Article 7(2)(a)(i) through
7(2)(a)(iii).
Section 1.55: Section 1.55 is amended to implement the provisions
in section 201(c) of the PLTIA and PLT Article 13 for the restoration
of the right of priority. Section 201(c) of the PLTIA amends 35 U.S.C.
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1524 |
119(a) by adding that the Director may prescribe regulations, including
the requirement for payment of the fee specified in 35 U.S.C. 41(a)(7),
pursuant to which the twelve-month period set forth 35 U.S.C. 119(a)
may be extended by an additional two months if the delay in filing the
application in the United States within the twelve-month period was
unintentional.
Section 1.55(b) is amended to provide that its time period
requirement is subject to § 1.55(c).
Section 1.55(c) as adopted in this final rule contains the
provisions relating to the restoration of the right of priority under
35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b). Section
1.55(c) as adopted in this final rule specifically provides that if the
subsequent application has a filing date which is after the expiration
of the twelve-month period (six-month period in the case of a design
application) set forth in § 1.55(b), but within two months from the
expiration of the period set forth in § 1.55(b), the right of
priority in the subsequent application may be restored upon petition if
the delay in filing the subsequent application within the period set
forth in § 1.55(b) was unintentional. When the last day for filing
an application within the period set forth in § 1.55(b) falls on
Saturday, Sunday, or a Federal holiday within the District of Columbia,
the additional two-month period specified in § 1.55(c) is measured
from the next succeeding secular or business day. See 35 U.S.C. 21(b).
Section 1.55(c) as adopted in this final rule further provides that a
petition to restore the right of priority under § 1.55(b) filed in
the subsequent application must include: (1) The priority claim under
35 U.S.C. 119(a) through (d) or (f) or 365(a) or (b) in an application
data sheet (§ 1.76(b)(6)), identifying the foreign application to
which priority is claimed, by specifying the application number,
country (or intellectual property authority), day, month, and year of
its filing, unless previously submitted; (2) the petition fee as set
forth in § 1.17(m); and (3) a statement that the delay in filing
the subsequent application within the twelve-month period (six-month
period in the case of a design application) set forth in § 1.55(b)
was unintentional. Section 1.55(c) as adopted in this final rule
further provides that the Director may require additional information
where there is a question whether the delay was unintentional.
Section 1.55(c) as adopted in this final rule also provides that
the right of priority in the subsequent application may be restored
under PCT Rule 26bis.3. A decision by a Receiving Office to restore a
right of priority under PCT Rule 26bis.3 in an international
application designating the United States is effective as to the United
States in the national stage of such application in accordance with PCT
Rule 49ter.1.
The procedure set forth in § 1.55(c) as adopted in this final
rule is for applicants whose delay in filing the subsequent application
within the twelve-month time period in 35 U.S.C. 119(a) was
unintentional. The use of the additional two-month time period in 35
U.S.C. 119(a) as an "extension of time" to file the subsequent
application would be considered an abuse of the provisions. Cf. In re
Application of S., 8 USPQ2d 1630, 1632 (Comm'r Pat. 1988) (use of the
procedures for the revival of an unintentionally abandoned application
as an "extension of time" is an abuse of the revival procedures).
The provisions of former § 1.55(c) pertaining to the time for
filing a priority claim in an application entering the national stage
under 35 U.S.C. 371 have been transferred to § 1.55(d) and the
provisions of former § 1.55(c) pertaining to the time for filing a
certified copy of the foreign application in an application entering
the national stage under 35 U.S.C. 371 have been transferred to § 1.55(f).
With the changes to § 1.55(c), (d), and (f) in this final
rule, § 1.55 is organized as follows: (1) § 1.55(a) provides
generally that a nonprovisional application may claim priority to one
or more prior foreign applications under the conditions specified in 35
U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b); (2)
§ 1.55(b) contains provisions relating to the time for filing a
nonprovisional application claiming priority to a foreign application
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1525 |
under 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b));
(3) § 1.55(c) contains the provisions relating to the restoration
of the right of priority under 35 U.S.C. 119(a) through (d) and (f),
172, and 365(a) and (b); (4) § 1.55(d) contains the provisions
relating to the time for filing a priority claim in any nonprovisional
application (an application filed under 35 U.S.C. 111(a) or an
application entering the national stage under 35 U.S.C. 371); (5)
§ 1.55(e) contains the provisions relating to delayed priority claims in
an application filed under 35 U.S.C. 111(a) or in a national stage
application under 35 U.S.C. 371; (6) § 1.55(f) contains the
provisions relating to the time for filing the certified copy of a
foreign application in any nonprovisional application (an application
filed under 35 U.S.C. 111(a) or an application entering the national
stage under 35 U.S.C. 371); (7) § 1.55(g) contains the provisions
relating to the filing of a priority claim, certified copy of the
foreign application, and translation of a non-English language foreign
application in any application; (8) § 1.55(h) contains the
provisions relating to the priority document exchange agreement; (9)
§ 1.55(i) contains the provisions relating to the filing of an
interim copy of a foreign application; (10) § 1.55(j) contains the
provisions relating to requirements for certain applications filed on
or after March 16, 2013; (11) § 1.55(k) contains the provisions
relating to inventor's certificates; and (12) § 1.55(l) provides
that the time periods set forth in § 1.55 are not extendable.
Section 1.55(d) is amended to specify the time for filing a
priority claim in any nonprovisional application (applications under 35
U.S.C. 111(a) and international application entering the national stage
under 35 U.S.C. 371).
Section 1.55(d)(1) pertains to applications under 35 U.S.C. 111(a).
Section 1.55(d)(1) provides that the claim for priority must be filed
within the later of four months from the actual filing date of the
application or sixteen months from the filing date of the prior foreign
application in an original application filed under 35 U.S.C. 111(a),
except as provided in § 1.55(e). Section 1.55(d)(1) further
provides that the claim for priority must be presented in an
application data sheet (§ 1.76(b)(6)), and must identify the
foreign application to which priority is claimed, by specifying the
application number, country (or intellectual property authority), day,
month, and year of its filing. Section 1.55(d)(1) finally provides that
the time period in § 1.55(d)(1) does not apply in a design
application. The provisions of § 1.55(d)(1) were included in former
§ 1.55(d).
Section 1.55(d)(2) pertains to international applications entering
the national stage under 35 U.S.C. 371. Section 1.55(d)(2) provides
that the claim for priority must be made within the time limit set
forth in the PCT and the Regulations under the PCT in an international
application entering the national stage under 35 U.S.C. 371, except as
provided in § 1.55(e). The provisions of § 1.55(d)(2) were
included in former § 1.55(c).
Section 1.55(e) is amended to also provide for delayed priority
claims under 35 U.S.C. 365(b) in a national stage application under 35
U.S.C. 371. Section 1.55(e) is further amended for consistency with the
change to 35 U.S.C. 119(b) in section 202(b)(2) of the PLTIA (replaces
"payment of a surcharge" with "payment of the fee specified in
section 41(a)(7)"). See discussion of § 1.17(m).
Section 1.55(f) is amended to specify the time for filing a
certified copy of the foreign application in any nonprovisional
application (applications under 35 U.S.C. 111(a) and international
applications entering the national stage under 35 U.S.C. 371).
Section 1.55(f)(1) pertains to applications under 35 U.S.C. 111(a).
Section 1.55(f)(1) provides that a certified copy of the foreign
application must be filed within the later of four months from the
actual filing date of the application or sixteen months from the filing
date of the prior foreign application in an original application filed
under 35 U.S.C. 111(a) (except as provided in § 1.55(h) and (i)).
Section 1.55(f)(1) also provides that the time period in § 1.55(f)(1)
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1526 |
does not apply in a design application. The provisions of § 1.55(f)(1)
were included in former § 1.55(f).
Section 1.55(f)(2) pertains to international applications entering
the national stage under 35 U.S.C. 371. Section 1.55(f)(2) provides
that a certified copy of the foreign application must be filed within
the time limit set forth in the PCT and the Regulations under the PCT
in an international application entering the national stage under 35
U.S.C. 371. This provision of § 1.55(f)(2) was included in former
§ 1.55(c). Section 1.55(f)(2) as adopted in this final rule also
provides for the situation in which a certified copy of the foreign
application is not filed during the international stage of an
international application. Section 1.55(f)(2) provides that in such a
situation a certified copy of the foreign application must be filed
within four months from the date of entry into the national stage as
set forth in § 1.491 or sixteen months from the filing date of the
prior-filed foreign application (except as provided in § 1.55(h)
and (i)).
Section 1.55(f)(3) provides for the situation in which a certified
copy of the foreign application is not filed within the period
specified in 1.55(f)(1) in an application under 35 U.S.C. 111(a) or
within the period specified in 1.55(f)(2) in an international
application entering the national stage under 35 U.S.C. 371, and the
exceptions in § 1.55(h) and (i) are not applicable. Section
1.55(f)(3) provides that in this situation the certified copy of the
foreign application must be accompanied by a petition including a
showing of good and sufficient cause for the delay and the petition fee
set forth in § 1.17(g).
Section 1.55(h) is amended to delete the reference to § 1.55(c)
for consistency with the transfer of the provisions of former
§ 1.55(c) to § 1.55(d) and (f).
Section 1.57: Section 1.57 is amended to implement the reference
filing provisions of section 201(a) of the PLTIA (new 35 U.S.C. 111(c))
and PLT Article 5(7). Section 1.57 was amended in 2004 to implement the
provisions of PLT Article 5(6) pertaining to applications containing a
missing part of the description or a missing drawing. See Changes to
Support Implementation of the United States Patent and Trademark Office
21st Century Strategic Plan, 69 FR 56482, 56499 (Sept. 21, 2004).
35 U.S.C. 111(c) provides that a reference made upon the filing of
an application to a previously filed application shall, as prescribed
by the Office, constitute the specification and any drawings of the
subsequent application for purposes of a filing date. 35 U.S.C. 111(c)
specifically provides that the Director may prescribe the conditions,
including the payment of a surcharge, under which a reference made upon
the filing of an application under 35 U.S.C. 111(a) to a previously
filed application, specifying the previously filed application by
application number and the intellectual property authority or country
in which the application was filed, shall constitute the specification
and any drawings of the subsequent application for purposes of a filing
date. PLT Rule 2(5) requires that this reference to the previously
filed application indicate that, for the purposes of the filing date,
the description and any drawings of the application are replaced by the
reference to the previously filed application, and also provides that a
Contracting Party may require that the reference indicate the filing
date of the previously filed application. Section 1.57(a) as adopted in
this final rule thus provides that, subject to the conditions and
requirements of § 1.57(a), a reference made in the English language
in an application data sheet in accordance with § 1.76 upon the
filing of an application under 35 U.S.C. 111(a) to a previously filed
application, indicating that the specification and any drawings of the
application under 35 U.S.C. 111(a) are replaced by the reference to the
previously filed application, and specifying the previously filed
application by application number, filing date, and the intellectual
property authority or country in which the previously filed application
was filed, shall constitute the specification and any drawings of the
application under 35 U.S.C. 111(a) for purposes of a filing date under
§ 1.53(b). The requirement for a reference to the previously filed
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1527 |
application in an application data sheet will be satisfied by the
presentation of such reference to the previously filed application on
the Patent Law Treaty Model International Request Form filed in the
Office (see discussion of § 1.76).
For an application under 35 U.S.C. 111(a) filed by reference to a
previously filed application under § 1.57(a), the specification and
any drawings of the previously filed application will constitute the
specification and any drawings of the application under 35 U.S.C.
111(a) filed by reference under § 1.57(a). Thus, the specification
and any drawings of the previously filed application will be considered
in determining whether an application under 35 U.S.C. 111(a) filed by
reference under § 1.57(a) is entitled to a filing date under § 1.53(b).
35 U.S.C. 111(c) further provides that a copy of the specification
and any drawings of the previously filed application shall be submitted
within such period and under such conditions as may be prescribed by
the Director, and that a failure to submit the copy of the
specification and any drawings of the previously filed application
within the prescribed period shall result in the application being
regarded as abandoned. Section 1.57(a) as adopted in this final rule
thus provides that: (1) The applicant will be notified and given a
period of time within which to file a copy of the specification and
drawings from the previously filed application, an English language
translation of the previously filed application, and the fee required
by § 1.17(i) if the previously filed application is in a language
other than English, and pay the surcharge required by § 1.16(f), to
avoid abandonment if the applicant has provided a correspondence
address (§ 1.57(a)(1)); and (2) the applicant has three months from
the filing date of the application to file a copy of the specification
and drawings from the previously filed application, an English language
translation of the previously filed application, and the fee required
by § 1.17(i) if the previously filed application is in a language
other than English, and pay the surcharge required by § 1.16(f), to
avoid abandonment if the applicant has not provided a correspondence
address (§ 1.57(a)(2)). Section 1.57(a) as adopted in this final
rule also provides that such a notice may be combined with a notice
under § 1.53(f) (e.g., a notice requiring that the applicant
provide at least one claim and pay the filing fees).
Applicants filing by reference under 35 U.S.C. 111(c) and § 1.57
should take care to ensure that the application number, filing date,
and intellectual property authority or country of the previously
filed application are accurately specified on the application data
sheet (or Patent Law Treaty Model International Request Form) as the
specification and drawings of the application specified on the
application data sheet are the specification and drawings of the
application being filed by reference under 35 U.S.C. 111(c) and § 1.57.
If an applicant specifies an application number, filing date, or
intellectual property authority or country of an application other than
the application number, filing date, or intellectual property authority
or country of the intended previously filed application on the
application data sheet (i.e., the applicant mistypes the application
number, filing date, or intellectual property authority or country on
the application data sheet), the applicant may file a petition under
§ 1.53 to have the application accorded a filing date as of the
date the specification and drawings of the intended previously filed
application are filed in the Office using that specification and
drawings (rather than the specification and drawings of the application
specified on the application data sheet). Simply submitting the
specification and drawings of the intended previously filed application
without such a petition under § 1.53 in reply to a notice under
§ 1.57(a) requiring the specification and drawings of the
application specified on the application data sheet will result in the
submission being treated as an incomplete reply. In addition, if the
previously filed application is also a foreign priority application
under 35 U.S.C. 119(a) through (d) and (f) and § 1.55, an applicant
should consider filing a copy of the specification and drawings of the
previously filed application in the Office no later than fourteen month
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1528 |
from the filing date of the previously filed application (regardless of
the time period provided in § 1.57(a)) to avoid the loss of the
right of priority under 35 U.S.C. 119(a) through (d) and (f) and § 1.55
in the event that any of the application number, filing date, or
intellectual property authority or country of the application specified
on the application data sheet is not the application number, filing
date, or intellectual property authority or country of the intended
previously filed application.
35 U.S.C. 111(c) also provides that an application abandoned due to
failure to submit a copy of the specification and any drawings of the
previously filed application within the prescribed period shall be
treated as having never been filed unless: (1) The application is
revived under 35 U.S.C. 27; and (2) a copy of the specification and any
drawings of the previously filed application are submitted to the
Director. Section 1.57(a)(3) as adopted in this final rule thus
provides that an application abandoned under § 1.57(a)(1) or (a)(2)
shall be treated as having never been filed, unless: (1) The
application is revived under § 1.137; and (2) a copy of the
specification and any drawings of the previously filed application are
filed in the Office.
Section 1.57(a)(4) as adopted in this final rule provides that a
certified copy of the previously filed application must be filed in the
Office, unless the previously filed application is an application filed
under 35 U.S.C. 111 or 363, or the previously filed application is a
foreign priority application and the conditions set forth in § 1.55(h)
are satisfied with respect to such foreign priority application. Section
1.57(a)(4) as adopted in this final rule also provides that the certified
copy of the previously filed application (when required by § 1.57(a)(4))
must be filed within the later of four months from the filing date of the
application or sixteen months from the filing date of the previously filed
application, or must be accompanied by a petition including a showing of
good and sufficient cause for the delay and the petition fee set forth in
§ 1.17(g).
Section 1.57(b) as adopted in this final rule contains the
provisions of former § 1.57(a), except to provide that if an
application is not otherwise entitled to a filing date under
§ 1.53(b), the amendment must be by way of a petition pursuant to
§ 1.53(e) (rather than a petition pursuant to § 1.57). Thus, any
filing date petition for an application under 35 U.S.C. 111(a) is a
petition under § 1.53(e), regardless of whether the application
under 35 U.S.C. 111(a) relies upon the incorporation by reference
provisions of § 1.57(a), (b), or (c).
Sections 1.57(c) through (h) as adopted in this final rule contain
the provisions of former § 1.57(b) through (g).
Section 1.57(i) as adopted in this final rule provides that an
application transmittal letter limited to the transmittal of a copy of
the specification and drawings from a previously filed application
submitted under § 1.57(a) or (b) of this section may be signed by a
juristic applicant or patent owner. PLT Article 7(2) and PLT Rule 7(1)
provide that an assignee of an application, an applicant, owner, or
other interested person may act pro se before the Office for the filing
of a copy of a previously filed application for purposes of the
reference filing provisions of PLT Article 5(7) and reliance upon a
reference to a prior-filed application to provide the missing parts of
the description or missing drawings under PLT Article 5(6).
Section 1.58: Section 1.58(a) is amended to provide that the
description portion of the specification may contain tables, but the
same tables "should" (rather than "must") not be included in both
the drawings and description portion of the specification.
Section 1.72: Section 1.72(b) is amended to provide that the
abstract must be as concise as the disclosure permits, preferably not
exceeding 150 words in length. See PCT Rule 8.1(b) ("[t]he abstract
shall be as concise as the disclosure permits (preferably 50 to 150
words if it is in English or when translated into English)").
Section 1.76: Section 1.76(b)(3) is amended to include the
sentence: "[w]hen information concerning the previously filed
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1529 |
application is required under § 1.57(a), application information
also includes the reference to the previously filed application,
indicating that the specification and any drawings of the application
are replaced by the reference to the previously filed application, and
specifying the previously filed application by application number,
filing date, and the intellectual property authority or country in
which the previously filed application was filed." See discussion of
§ 1.57(a).
Section 1.76(d)(2) is amended to provide that the information in
the application data sheet will govern when inconsistent with the
information supplied at any time in a Patent Cooperation Treaty Request
Form, Patent Law Treaty Model International Request Form, Patent Law
Treaty Model International Request for Recordation of Change in Name or
Address Form, or Patent Law Treaty Model International Request for
Recordation of Change in Applicant or Owner Form. Whenever information in
a Patent Cooperation Treaty Request Form or Patent Law Treaty Model Form
is inconsistent with the information in the application data sheet, the
information in the application data sheet will govern regardless of whether
the application data sheet was filed before or after the Patent Cooperation
Treaty Request Form or Patent Law Treaty Model Form. Thus, incorrect
information in an application data sheet must be corrected via a new
application data sheet (§ 1.76(c)) rather than a Patent Cooperation
Treaty Request Form or Patent Law Treaty Model Form as the previously
filed application data sheet will govern over the Patent Cooperation
Treaty Request Form or Patent Law Treaty Model Form.
Section 1.76 is also amended to permit the use of Patent Law Treaty
Model International Forms as appropriate or the Patent Cooperation
Treaty Request Form in lieu of an application data sheet under § 1.76.
Section 1.76(f) as adopted in this final rule provides that: (1)
The requirement in § 1.55 or 1.78 for the presentation of a
priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an
application data sheet will be satisfied by the presentation of such
priority or benefit claim in the Patent Law Treaty Model International
Request Form; (2) the requirement in § 1.57(a) for a reference to
the previously filed application in an application data sheet will be
satisfied by the presentation of such reference to the previously filed
application in the Patent Law Treaty Model International Request Form;
and (3) the requirement in § 1.46 for the presentation of the name
of the applicant under 35 U.S.C. 118 in an application data sheet will
be satisfied by the presentation of the name of the applicant in the
Patent Law Treaty Model International Request Form, Patent Law Treaty
Model International Request for Recordation of Change in Name or
Address Form, or Patent Law Treaty Model International Request for
Recordation of Change in Applicant or Owner Form, as applicable.
Section 1.76(g) as adopted in this final rule provides that the
requirement in § 1.78 for the presentation of a benefit claim under
35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be
satisfied in a national stage application under 35 U.S.C. 371 by the
presentation of such benefit claim in the Patent Cooperation Treaty
Request Form contained in the international application or the presence
of such benefit claim on the front page of the publication of the
international application under PCT Article 21(2). Section 1.76(g)
states "the Patent Cooperation Treaty Request Form contained in the
international application" to make clear that the provision does not
allow for that addition or correction of benefit claim (or any other)
information during the national stage via the submission of a new
Patent Cooperation Treaty Request Form. Applicants may add or correct
benefit claim (or any other) information during the national stage via
the submission of an application data sheet under § 1.76 (assuming
that the conditions and requirements for such addition or correction
are satisfied). Section 1.76(g) provides for presence of such benefit
claim on the front page of the publication of the international
application under PCT Article 21(2) to account for replacement sheets
of the Patent Cooperation Treaty Request Form that may not be forwarded
to each national office but that are reflected in the IB publication of
the international application. Section 1.76(g) does not mention either
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1530 |
the provisions in § 1.55 for the presentation of a priority claim
under 35 U.S.C. 119 or 365 in an application data sheet or the
provisions in § 1.46 for the presentation of the name of the
applicant under 35 U.S.C. 118 in an application data sheet with respect
to a national stage application under 35 U.S.C. 371 as this information
is taken from the WIPO records of the international application in a
national stage application under 35 U.S.C. 371.
Section 1.76(g) also provides that the requirement in § 1.55 or
§ 1.78 for the presentation of a priority or benefit claim under 35
U.S.C. 119, 120, 121, or 365 in an application data sheet and the
requirement in § 1.46 for the presentation of the name of the
applicant under 35 U.S.C. 118 in an application data sheet will be
satisfied in an application under 35 U.S.C. 111 by the presentation of
such priority or benefit claim and presentation of the name of the
applicant in a Patent Cooperation Treaty Request Form. Section 1.76(g)
finally also provides that if a Patent Cooperation Treaty Request Form
is submitted in an application under 35 U.S.C. 111, the Patent
Cooperation Treaty Request Form must be accompanied by a clear
indication that treatment of the application as an application under 35
U.S.C. 111 is desired.
Section 1.78: Section 1.78 is amended to implement the provisions
in section 201(c) of the PLTIA and PLT Article 13 for the restoration
of the right to the benefit of a provisional application. Section
201(c) of the PLTIA specifically amends 35 U.S.C. 119(e)(1) by adding
that the Director may prescribe regulations, including the requirement
for payment of the fee specified in 35 U.S.C. 41(a)(7), pursuant to
which the twelve-month period set forth in 35 U.S.C. 119(e) may be
extended by an additional two months if the delay in filing the
application under 35 U.S.C. 111(a) or 363 within the twelve-month
period was unintentional.
Section 1.78(a) as adopted in this final rule contains the
provisions of former § 1.78(a), § 1.78(b) as adopted in this
final rule contains the provisions pertaining to the restoration of the
right to the benefit of a provisional application, and § 1.78(c)
through (h) contain the provisions of former § 1.78(b) through (g),
respectively. Therefore, § 1.78 as adopted in this final rule is
organized as follows: (1) § 1.78(a) contains provisions relating to
claims under 35 U.S.C. 119(e) for the benefit of a prior-filed
provisional application; (2) § 1.78(b) contains provisions relating
to the restoration of the right to the benefit of a provisional
application under 35 U.S.C. 119(e); (3) § 1.78(c) contains
provisions relating to delayed claims under 35 U.S.C. 119(e) for the
benefit of a prior-filed provisional application; (4) § 1.78(d)
contains provisions relating to claims under 35 U.S.C. 120, 121, or
365(c) for the benefit of a prior-filed nonprovisional or international
application; (5) § 1.78(e) contains provisions relating to delayed
claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-
filed nonprovisional or international application; (6) § 1.78(f)
contains provisions relating to applications containing patentably
indistinct claims; (7) § 1.78(g) contains provisions relating to
applications or patents under reexamination naming different inventors
and containing patentably indistinct claims; and (8) § 1.78(h)
provides that the time periods set forth in § 1.78 are not extendable.
Section 1.78(a)(1) as adopted in this final rule also provides that
the twelve-month period is subject to PCT Rule 80.5, as well as 35
U.S.C. 21(b) (and § 1.7(a)).
Section 1.78(a)(4) as adopted in this final rule also provides that
if the later-filed application is a national stage application under 35
U.S.C. 371, this reference must be submitted within the latest of four
months from the date on which the national stage commenced under 35
U.S.C. 371(b) or (f), four months from the date of the initial
submission under 35 U.S.C. 371 to enter the national stage, or sixteen
months from the filing date of the prior-filed provisional application.
This change may avoid the need for petitions under both § 1.137 and
§ 1.78(c) in the situation in which the applicant does not make the
initial submission under 35 U.S.C. 371 to enter the national stage within
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1531 |
four months from the date on which the national stage commenced under 35
U.S.C. 371(b) or (f) in an international application.
As discussed previously, § 1.78(b) as adopted in this final
rule contains the provisions pertaining to the restoration of the right
to the benefit of a provisional application under 35 U.S.C. 119(e).
Section 1.78(b) as adopted in this final rule also provides that if the
nonprovisional application or international application designating the
United States of America has a filing date which is after the
expiration of the twelve-month period set forth in § 1.78(a)(1) but
within two months from the expiration of the period set forth in
§ 1.78(a)(1), the benefit of the provisional application may be restored
upon petition if the delay in filing the nonprovisional application or
international application designating the United States of America
within the period set forth in § 1.78(a)(1) was unintentional. When
the last day for filing an application within the period set forth in
§ 1.78(a)(1) falls on Saturday, Sunday, or a Federal holiday within
the District of Columbia, the additional two-month period specified in
§ 1.78(b) is measured from the next succeeding secular or business
day. See 35 U.S.C. 21(b). Section 1.78(b) as adopted in this final rule
further provides that a petition to restore the benefit of the
provisional application under this paragraph filed in the
nonprovisional application or international application designating the
United States of America must include: (1) The reference required by 35
U.S.C. 119(e) and § 1.78(a)(3) to the prior-filed provisional
application, unless previously submitted; (2) the petition fee as set
forth in § 1.17(m); and (3) a statement that the delay in filing
the nonprovisional application or international application designating
the United States of America within the twelve-month period set forth
in § 1.78(a)(1) was unintentional. Section 1.78(b) as adopted in
this final rule further provides that the Director may require
additional information where there is a question whether the delay was
unintentional.
Section 1.78(b) as adopted in this final rule further provides that
the right of priority in the subsequent application may be restored
under PCT Rule 26bis.3. A decision by a Receiving Office to restore a
right of priority under PCT Rule 26bis.3 to a provisional application
in an international application designating the United States is
effective as to the United States in the national stage of such
application in accordance with PCT Rule 49ter.1.
Section 1.78(b) as adopted in this final rule finally provides that
the restoration of the right of priority under PCT Rule 26bis.3 to a
provisional application does not affect the requirement to include the
reference required by § 1.78(a)(3) to the provisional application
in a national stage application under 35 U.S.C. 371 within the time
period provided by § 1.78(a)(4) to avoid waiver of the benefit
claim.
The procedure set forth in § 1.78(b) as adopted in this final
rule is for applicants whose delay in filing the subsequent application
within the twelve-month time period in 35 U.S.C. 119(e)(1) was
unintentional. The use of the additional two-month time period in 35
U.S.C. 119(e)(1) as an "extension of time" to file the subsequent
application would be considered an abuse of the provisions. Cf.
Application of S., 8 USPQ2d at 1632 (use of the procedures for the
revival of an unintentionally abandoned application as an "extension
of time" is an abuse of the revival procedures).
Section 1.78(c) as adopted in this final rule also implements the
changes to 35 U.S.C. 119(e) in section 201(c)(1)(B)(i)(II) of the
PLTIA. Section 201(c)(1)(B)(i)(II) of the PLTIA replaces "payment of a
surcharge" with "payment of the fee specified in section 41(a)(7)"
(see discussion of § 1.17(m)) and deletes "during the pendency of
the application." Section 1.78(c) as adopted in this final rule thus
also provides that if the reference required by 35 U.S.C. 119(e) and
§ 1.78(a)(3) is presented in an application (either a
nonprovisional application or an international application designating
the United States) after the time period provided by § 1.78(a)(4),
the claim under 35 U.S.C. 119(e) for the benefit of a prior-filed
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1532 |
provisional application may be accepted if the reference identifying
the prior-filed application by provisional application number was
unintentionally delayed. Section 1.78(c) as adopted in this final rule
further provides that a petition to accept an unintentionally delayed
claim under 35 U.S.C. 119(e) for the benefit of a prior-filed
provisional application must be accompanied by: (1) The reference
required by 35 U.S.C. 119(e) and § 1.78(a)(3) to the prior-filed
provisional application, unless previously submitted; (2) the petition
fee as set forth in § 1.17(m); and (3) a statement that the entire
delay between the date the benefit claim was due under § 1.78(a)(4)
and the date the benefit claim was filed was unintentional. Section
1.78(c) as adopted in this final rule further provides that the
Director may require additional information where there is a question
as to whether the delay was unintentional.
Section 1.78(d)(3) as adopted in this final rule also provides that
if the later-filed application is a nonprovisional application entering
the national stage from an international application under 35 U.S.C.
371, this reference must be submitted within the latest of four months
from the date on which the national stage commenced under 35 U.S.C.
371(b) or (f) in the later-filed international application, four months
from the date of the initial submission under 35 U.S.C. 371 to enter
the national stage, or sixteen months from the filing date of the
prior-filed application. This change may avoid the need for petitions
under both § 1.137 and § 1.78(e) in the situation in which the
applicant does not make the initial submission under 35 U.S.C. 371 to
enter the national stage within four months from the date on which the
national stage commenced under 35 U.S.C. 371(b) or (f) in an
international application.
Section 1.78(e)(2) as adopted in this final rule is also amended
for consistency with the change to 35 U.S.C. 120 in section 202(b)(3)
of the PLTIA (replaces "payment of a surcharge" with "payment of the
fee specified in section 41(a)(7)"). See discussion of § 1.17(m).
Section 1.81: Section 1.81(a) is amended to delete the provision
that a drawing (where necessary for the understanding of the subject
matter sought to be patented), or a high quality copy thereof, must be
filed with the application. As discussed previously, 35 U.S.C. 111 no
longer requires that an application contain a drawing where necessary
for the understanding of the subject matter sought to be patented to be
entitled to a filing date. 35 U.S.C. 113 continues to provide, however,
that "[t]the applicant shall furnish a drawing where necessary for the
understanding of the subject matter sought to be patented" and that
"[d]rawings submitted after the filing date of the application may not
be used (i) to overcome any insufficiency of the specification due to
lack of an enabling disclosure or otherwise inadequate disclosure
therein, or (ii) to supplement the original disclosure thereof for the
purpose of interpretation of the scope of any claim." See 35 U.S.C.
113. Thus, the absence of any drawing on the filing of an application
where a drawing is necessary for the understanding of the subject
matter sought to be patented may result in an applicant not being
able to obtain a patent for any claimed invention presented in the
application, but the absence of any drawing on the filing of an
application no longer raises a question as to whether the application
is entitled to a filing date.
As discussed previously, PLT Article 5 and PLTIA 35 U.S.C. 111
should not be viewed as prescribing a best practice for the preparation
and filing of a patent application. The preparation of drawings for a
provisional or nonprovisional application is prudent where a drawing is
necessary for the understanding of the subject matter sought to be
patented, and inclusion of such drawing(s) with the application on
filing will help ensure that the requirements of 35 U.S.C. 113 are
satisfied for any such claimed invention.
Section 1.83: Section 1.83(a) is amended to provide that tables
that are included in the specification and sequences that are included
in sequence listings "should" (rather than "must") not be duplicated in
the drawings.
Section 1.85: Section 1.85(c) is amended to provide that if a
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1533 |
corrected drawing is required or if a drawing does not comply with
§ 1.84 at the time an application is allowed, the Office may notify
the applicant in a notice of allowability and set a three-month (non-
extendable) period of time from the mailing date of the notice of
allowability within which the applicant must file a corrected drawing
in compliance with § 1.84 to avoid abandonment.
Section 1.131: Section 1.131(a) is amended to change "the inventor
of the subject matter of the rejected claim, the owner of the patent
under reexamination, or the party qualified under § 1.42 or § 1.46,"
to "the applicant or patent owner." The final rule to implement the
inventor's oath or declaration provisions (section 4) of the AIA changed
the phrase "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" to "the applicant or patent owner." See Changes To
Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith
America Invents Act, 77 FR 48776, 48793 and 48821 (Aug. 14, 2012). The
final rule to implement the first inventor to file provisions (section 3)
of the AIA changed "the applicant or patent owner" to "the inventor of the
subject matter of the rejected claim, the owner of the patent under
reexamination, or the party qualified under § 1.42 or § 1.46." See Changes
to Implement the First Inventor To File Provisions of the Leahy-Smith
America Invents Act, 78 FR 11024, 11036 and 11058 (Feb. 14, 2013). This
final rule revises § 1.131(a) to restore the phrase "the applicant
or patent owner," and this phrase is applicable both to applications
filed before September 12, 2012 (as the party qualified under former
§ 1.42, 1.43, or 1.47 is the applicant in an application filed
before September 16, 2012) and to applications filed on or after
September 12, 2012 (as the party qualified under § 1.42 or § 1.46 is the
applicant in an application filed on or after September 16, 2012).
Section 1.136: Sections 1.136 is amended to locate the duplicative
cross reference provisions of § 1.136(a)(2) and (b) in new § 1.136(d).
Section 1.136 is also amended to refer to § 90.3 rather than former
§ 1.304 for the time for appeal or for commencing a civil action. As
discussed previously, the judicial review provisions of § 1.302 through
1.304 were replaced by 37 CFR part 90 in September of 2012.
Section 1.137: Section 1.137 is revised to implement the change in
the PLTIA to eliminate revival of abandoned applications under the
"unavoidable" standard and to provide for the revival of abandoned
applications (as well as the acceptance of delayed responses in
reexamination by patent owners and delayed maintenance fee payments) on
the basis of unintentional delay. As discussed previously, section
201(b) of the PLTIA specifically adds new 35 U.S.C. 27, providing that
the Director may establish procedures to revive an unintentionally
abandoned application for patent, accept an unintentionally delayed
payment of the fee for issuing a patent, or accept an unintentionally
delayed response by the patent owner in a reexamination proceeding,
upon petition by the applicant for patent or patent owner. The patent
laws formerly provided for revival of an unintentionally abandoned
application only in the patent fee provisions of 35 U.S.C. 41(a)(7).
See Public Law 97-247, section 3(a), 96 Stat. 317-18 (1982). This
raised questions concerning the Office's authority to revive an
unintentionally abandoned application (without a showing of unavoidable
delay) in certain situations. See e.g., Aristocrat Techs. Australia Pty
Ltd. v. Int'l Game Tech., 543 F.3d 657 (Fed. Cir. 2008).
Section 1.137(a) as adopted in this final rule eliminates the
provisions pertaining to petitions on the basis of unavoidable delay.
Section 1.137(a) as adopted in this final rule instead provides that if
the delay in reply by applicant or patent owner was unintentional, a
petition may be filed pursuant to § 1.137 to revive an abandoned
application or a reexamination prosecution terminated under § 1.550(d)
or 1.957(b) or limited under § 1.957(c).
Section 1.137(b) as adopted in this final rule sets out the
petition requirements. Section 1.137(b) as adopted in this final rule
specifically provides that a grantable petition pursuant to § 1.137
must be accompanied by: (1) The reply required to the outstanding
Office action or notice, unless previously filed; (2) the petition fee
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1534 |
as set forth in § 1.17(m); (3) any terminal disclaimer (and fee as
set forth in § 1.20(d)) required pursuant to § 1.137(d); and
(4) a statement that the entire delay in filing the required reply from
the due date for the reply until the filing of a grantable petition
pursuant to this section was unintentional. Section 1.137 as adopted in
this final rule continues to provide that the Director may require
additional information where there is a question whether the delay was
unintentional.
Sections 1.137(c), (d), and (e) as adopted in this final rule
eliminate the language pertaining to "lapsed" patents. Section
202(b)(6) of the PLTIA amends 35 U.S.C. 151 to delete the third and
fourth paragraphs pertaining to the lapsed patent practice.
Section 1.137(c) as adopted in this final rule also provides that
in an application abandoned under § 1.57(a), the reply must include
a copy of the specification and any drawings of the previously filed
application, and clarifies that an application must be abandoned after
the close of prosecution as defined in § 1.114(b) for the reply
requirement to be met by the filing of a request for continued
examination in compliance with § 1.114.
Section 1.137(f) as adopted in this final rule eliminates as
unnecessary the language limiting petitions to the unintentional
standard. The PLTIA eliminates revival of abandoned applications under
the "unavoidable" standard.
Section 1.137(g) as adopted in this final rule contains the
provisions of former § 1.137(g).
Section 1.138: Section 1.138(b) is amended to change "§ 1.33(b)(1),
(b)(3) or (b)(4)" to "§ 1.33(b)(1) or (b)(3)" for consistency with the
elimination of § 1.33(b)(4) in the rulemaking to implement the inventor's
oath or declaration provisions of the AIA. See Changes to Implement the
Inventor's Oath or Declaration Provisions of the Leahy-Smith America
Invents Act, 77 FR at 48783, 48814.
Section 1.197: Section 1.197 is amended to refer to § 90.3
rather than former § 1.304 for the time for appeal or for
commencing a civil action. As discussed previously, the judicial
review provisions of § 1.302 through 1.304 were replaced by 37
CFR part 90 in September of 2012. Section 1.197 is also amended to
locate the provisions of paragraphs (b)(1), (b)(1)(i), (b)(1)(ii), and
(b)(2) in paragraphs (a), (a)(1), (a)(2), and (b), respectively, as
§ 1.197(a) was formerly reserved.
Section 1.290: Section 1.290(f) is amended to reference § 1.17(o),
rather than § 1.17(p), for consistency with the change to § 1.17. See
discussion of § 1.17.
Section 1.311: Section 1.311(a) is amended to better track the
language of PLTIA 35 U.S.C. 151. Section 1.311 is specifically amended
in this final rule to provide that the notice of allowance shall
specify a sum constituting the issue fee and any required publication
fee (§ 1.211(e)), which issue fee and any required publication fee
must both be paid within three months from the date of mailing of the
notice of allowance to avoid abandonment of the application. This
change to § 1.311 does not represent a change in Office practice as
pre-existing Office practice is to include any required publication fee
(along with the issue fee) in the sum specified in the notice of
allowance.
Section 1.317: Section 1.317 is removed and reserved. Section
202(b)(6) of the PLTIA amends 35 U.S.C. 151 to delete the third and
fourth paragraphs pertaining to the lapsed patent practice.
Section 1.366: Section 1.366(a) is amended to provide that a
maintenance fee transmittal letter may be signed by a juristic
applicant or patent owner. PLT Article 7(2)(b) provides that a
maintenance fee may be paid by any person.
Section 1.366(b) is amended to correct a typographical error
("other than that set forth § 1.23" is correct to read "other
than that set forth in § 1.23").
Section 1.378: Section 1.378 is amended to implement the changes to
35 U.S.C. 41(c)(1) in section 202(b)(1)(B) of the PLTIA. Section
202(b)(1)(B) of the PLTIA amends 35 U.S.C. 41(c)(1) to delete the
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1535 |
twenty-four month time limit for unintentionally delayed maintenance
fee payments and to delete the reference to an unavoidable standard.
PLTIA 35 U.S.C. 41(c)(1) provides that: (1) The Director may accept the
payment of any maintenance fee required by 35 U.S.C. 41(b) after the
six-month grace period if the delay is shown to the satisfaction of the
Director to have been unintentional; (2) the Director may require the
payment of the fee specified in 35 U.S.C. 41(a)(7) as a condition of
accepting payment of any maintenance fee after the six-month grace
period; and (3) if the Director accepts payment of a maintenance fee
after the six-month grace period, the patent shall be considered as not
having expired at the end of the grace period.
Section 1.378(a) is amended to eliminate the provisions pertaining
to petitions on the basis of unavoidable delay.
Section 1.378(b) is also amended to eliminate the provisions
pertaining to petitions asserting unavoidable delay. Section 1.378(b)
is amended to set out the requirements for petitions asserting
unintentional delay (these requirements were formerly set out in
§ 1.378(c)). Section 1.378(b) is also amended to refer to the petition
fee set forth in § 1.17(m) rather than the surcharge set forth in
§ 1.20(i) as PLTIA 35 U.S.C. 41(c)(1) refers to the fee specified
in 35 U.S.C. 41(a)(7) rather than a surcharge.
Section 1.378(c) is amended to provide that any petition under this
section must be signed in compliance with § 1.33(b) (§ 1.378(d)
sets out the former signature requirement for a petition to accept a
delayed maintenance fee payment).
Section 1.378(d) as adopted in this final rule includes the
provisions of former § 1.378(e) pertaining to a request for
reconsideration of a maintenance fee decision, except that § 1.378(d)
as adopted in this final rule eliminates: (1) The requirement
for the petition fee under § 1.17(f) for a request for
reconsideration of a maintenance fee decision; and (2) the provision
that after the decision on the petition for reconsideration, no further
reconsideration or review of the matter will be undertaken by the
Director.
Section 1.378(e) as adopted in this final rule includes the
provisions of former § 1.378(e) pertaining to the situation in
which the maintenance fee will be refunded.
As discussed previously, the PLTIA amends 35 U.S.C. 41(c)(1) to
replace "payment of a surcharge" with "payment of the fee specified
in [35 U.S.C.] 41(a)(7)." The PLTIA revises delayed maintenance fee
payment practice to be more consistent with abandoned application
revival practice, in that there is a petition fee for filing the
petition to accept a delayed maintenance fee payment under the PLTIA,
rather than a surcharge for accepting a delayed maintenance fee payment
under former 35 U.S.C. 41(c). Section 1.378(e) thus does not provide
for a refund of the petition fee set forth in § 1.17(m) even if the
delayed maintenance fee payment is not accepted. See MPEP
711.03(c)(II)(B) (indicating that the petition fee under 35 U.S.C.
41(a)(7) is required for the filing (and not merely the grant) of a
petition and that this petition fee will not be refunded regardless of
whether the petition is dismissed or denied). Section 1.378(d),
however, does not require the petition fee under § 1.17(f) for a
request for reconsideration of a maintenance fee decision as § 1.137
does not require the petition fee under § 1.17(f) for a request for r
econsideration of a revival decision.
Section 1.452: Section 201(c) of the PLTIA amends 35 U.S.C. 365(b)
by adding that the Director may establish procedures, including the
requirement for payment of the fee specified in 35 U.S.C. 41(a)(7), to
accept an unintentionally delayed claim for priority under the PCT and
PCT Regulations, and to accept a priority claim that pertains to an
application that was not filed within the priority period specified in
the PCT and PCT Regulations, but was filed within the additional two-
month period specified under 35 U.S.C. 119(a) or the PCT or PCT
Regulations. Section 1.452(b)(2) as adopted in this final rule thus
refers to the petition fee as set forth in § 1.17(m) for
consistency with section 201(c) of the PLTIA.
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1536 |
Former § 1.452(d) contained a caveat that restoration of a
right of priority to a prior application by the United States Receiving
Office under § 1.452, or by any other Receiving Office under the
provisions of PCT Rule 26bis.3, would not entitle applicants to a right
of priority in any application which has entered the national stage
under 35 U.S.C. 371, or in any application filed under 35 U.S.C. 111(a)
which claims benefit under 35 U.S.C. 120 and 365(c) to an international
application in which the right to priority has been restored. This
final rule eliminates former § 1.452(d) in view of PLTIA 35 U.S.C.
119 and 365(b).
Section 1.495: As discussed previously, the Office is revising the
provisions pertaining to the filing of an application without the
inventor's oath or declaration to provide that if an application is in
condition for allowance but does not include an oath or declaration in
compliance with § 1.63, or a substitute statement in compliance
with § 1.64, executed by or with respect to each actual inventor,
the Office will issue a "Notice of Allowability" (PTOL-37) requiring
an oath or declaration in compliance with § 1.63, or substitute
statement in compliance with § 1.64, executed by or with respect to
each actual inventor, together with the "Notice of Allowance and
Fee(s) Due" (PTOL-85), since the AIA Technical Corrections Act amends
35 U.S.C. 115(f) to permit the Office to issue a "Notice of Allowance
and Fee(s) Due" (PTOL-85) before the application includes an oath or
declaration in compliance with § 1.63, or substitute statement in
compliance with § 1.64, executed by or with respect to each actual
inventor. As also discussed previously, 35 U.S.C. 115(f) does not
specifically provide for the consequence that results if an applicant
fails to provide an oath or declaration in compliance with § 1.63, or
a substitute statement in compliance with § 1.64, executed by or with
respect to each actual inventor. PLTIA 35 U.S.C. 371(d), however,
provides that "[t]he requirement with respect to . . . the oath or
declaration referred to in [35 U.S.C. 371(c)(4)] shall be complied with
by the date of the commencement of the national stage or by such later
time as may be fixed by the Director," and that the "[f]ailure to
comply with these requirements shall be regarded as abandonment of the
application by the parties thereof." The Office is thus amending
§ 1.495(c)(3)(ii) to provide that if the applicant is notified in a
notice of allowability that an oath or declaration in compliance with
§ 1.63, or substitute statement in compliance with § 1.64,
executed by or with respect to each named inventor has not been filed,
the applicant must file each required oath or declaration in compliance
with § 1.63, or substitute statement in compliance with § 1.64,
no later than the date on which the issue fee is paid to avoid
abandonment (which time period is not extendable). The Office is also
amending § 1.495(c)(3)(ii) to provide that: (1) The applicant must
file each required oath or declaration in compliance with § 1.63,
or substitute statement in compliance with § 1.64, no later than
the date on which the issue fee for the patent is paid (as required by
35 U.S.C. 115(f)); and (2) that the Office may dispense with the notice
provided for in § 1.495(c)(1) if each required oath or declaration
in compliance with § 1.63, or substitute statement in compliance
with § 1.64, has been filed before the application is in condition
for allowance.
Section 1.550: Section 1.550(c) is amended to allow for no-cause
extensions of time for actions by patent owners in patent owner
requested or Director ordered ex parte reexamination proceedings for up
to two months from the time period set for reply in the Office action.
Section 1.550(c) provides that any request for such an extension must
specify the requested period of extension and be accompanied by the
petition fee set forth in § 1.17(g).
Section 1.550(c) continues to provide that: (1) Any request for an
extension in a third party requested ex parte reexamination must be
filed on or before the day on which action by the patent owner is due,
and the mere filing of such a request for extension will not effect the
extension; and (2) the time for taking any action by a patent owner
will not be extended in a third party requested ex parte reexamination
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1537 |
in the absence of sufficient cause or for more than a reasonable time.
A third party requested ex parte reexamination is initiated by a party
other than the patent owner or the Office and is thus an "inter partes
proceeding" under PLT Rule 12(5)(a)(vi). Thus, this final rule does
not change extension of time practice under § 1.550(c) for patent
owner replies in a third party requested ex parte reexamination.
Section 1.550(c) provides that: (1) A request for an extension in a
patent owner requested or Director ordered ex parte reexamination for
more than two months from the time period set for reply in the Office
action must be filed on or before the day on which action by the patent
owner is due, and the mere filing of a request for an extension of more
than two months from the time period set for reply in the Office action
will not effect the extension; and (2) the time for taking any action
by a patent owner will not be extended for more than two months from
the time period set for reply in the Office action in a patent owner
requested or Director ordered ex parte reexamination in the absence of
sufficient cause or for more than a reasonable time.
Section 1.550(e) is amended for consistency with the change to
§ 1.137 in this final rule to eliminate the provisions pertaining
to petitions on the basis of unavoidable delay. Section 1.550(e) is
specifically amended to provide that if a response by the patent owner
is not timely filed in the Office, a petition may be filed pursuant to
§ 1.137 to revive a reexamination prosecution terminated under
§ 1.550(d) if the delay in response was unintentional.
Section 1.704: Section 1.704 is amended to provide for the
situation in which an application is not in condition for examination
within eight months from the date on which the application was filed
under 35 U.S.C. 111(a) or the date of commencement of the national
stage under 35 U.S.C. 371(b) or (f) in an international application. In
implementing the patent term adjustment provisions of the American
Inventors Protection Act of 1999 (Pub. L. 106-113, 113 Stat. 1501,
1501A-557 through 1501A-560 (1999)), the Office proposed a reduction of
any patent term adjustment if an application was not complete on
filing. See Changes to Implement Patent Term Adjustment Under Twenty-
Year Patent Term, 65 FR 17215, 17219-20, 17228 (Mar. 31, 2000)
(proposed rule). The Office received a number of comments in response
to this proposal suggesting that an application being in condition for
examination on filing is not necessary for the Office to meet the
fourteen-month time frame in 35 U.S.C. 154(b)(1)(A)(i) and that an
applicant should be permitted to complete the application and correct
application informalities after the filing date of the application. See
Changes to Implement Patent Term Adjustment Under Twenty-Year Patent
Term, 65 FR 56366, 56381 (Sept. 18, 2000) (final rule). The Office did
not adopt this proposed reduction in 2000 because an applicant could
not delay placing an application in condition for examination to the
point that it would contribute to the Office's missing the fourteen-
month time frame in 35 U.S.C. 154(b)(1)(A)(i) under the provisions for
completing an application (§ 1.53(f)) in effect in 2000 without the
applicant's incurring a reduction of patent term adjustment under 35
U.S.C. 154(b)(2)(C)(ii). See id. Specifically, the fourteen-month time
frame in 35 U.S.C. 154(b)(1)(A)(i) did not begin (under the patent laws
in effect between 2000 and 2012) until the specification and drawings
of an application were filed in the Office, which permitted the Office
to conduct a formalities review and issue a notice (if necessary)
requiring the applicant to complete the application and correct any
application informalities no later than one to two months from the
filing of an application. Thus, the Office could review the
specification and drawings and issue a notice (if necessary) requiring
the applicant to complete the application and correct the application
papers no later than two months from the filing of an application. As
such, applications would either be in condition for examination within
five months from the filing of an application, or the applicant would
incur a reduction of any patent term adjustment under 35 U.S.C.
154(b)(2)(C)(ii) (providing a reduction of any patent term adjustment
for the cumulative total of any periods of time in excess of three
months that are taken to respond to a notice from the Office making any
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1538 |
rejection, objection, argument, or other request, and measuring such
three-month period from the date the notice was given or mailed to the
applicant). The Office, however, also noted that it would revisit this
decision if the provisions for completing an application and correcting
application formalities contributed to the Office's missing the
fourteen-month time frame under 35 U.S.C. 154(b)(1)(A)(i). See id.
The PLT and PLTIA 35 U.S.C. 111 provide applicants with additional
opportunities to delay the examination process (e.g., the ability to
file an application without any claims and to file an application
merely by reference to a prior-filed application). Specifically, the
fourteen-month time frame specified in 35 U.S.C. 154(b)(1)(A)(i) may
now begin before the specification and drawings of an application are
filed in the Office in an application filed under 35 U.S.C. 111(a), due
to the change to 35 U.S.C. 111 in the PLTIA. In addition, the fourteen-
month time frame specified in 35 U.S.C. 154(b)(1)(A)(i) may now begin
before the specification and drawings of an application are filed in
the Office in an international application, due to the change to 35
U.S.C. 154(b)(1)(A)(i)(II) in section 1(h)(1)(A) of the AIA Technical
Corrections Act, Public Law 112-274, 126 Stat. 2456, 2457 (2013)
(changing "the date on which an international application fulfilled
the requirements of section 371" to "the date of commencement of the
national stage under section 371 in an international application").
Section 1.704 is amended to provide that the circumstances that
constitute a failure of the applicant to engage in reasonable efforts
to conclude processing or examination of an application also include
the failure to provide an application in condition for examination
within eight months from the date on which the application was filed
under 35 U.S.C. 111(a) or the date of commencement of the national
stage under 35 U.S.C. 371(b) or (f) in an international application.
Section 1.704 as adopted in this final rule does not require that
applications be in condition for examination on filing (or commencement
of national stage in an international application) in order for an
applicant to avoid a reduction of patent term adjustment. It is,
however, reasonable to expect that an application should be placed in
condition for examination within eight months of its filing date (or
date of commencement of national stage in an international application).
Section 1.704(c)(12) as adopted in this final rule provides that
where there is a failure to provide an application in condition for
examination within eight months from the date on which the application
was filed under 35 U.S.C. 111(a) or the date of commencement of the
national stage under 35 U.S.C. 371(b) or (f) in an international
application, the period of adjustment set forth in § 1.703 shall be
reduced by the number of days, if any, beginning on the day after the
date that is eight months from the date on which the application was
filed under 35 U.S.C. 111(a) or the date of commencement of the
national stage under 35 U.S.C. 371(b) or (f) in an international
application and ending on the date the application is in condition for
examination. Section 1.704(c)(11) as adopted in this final rule
contains the provisions of former § 1.704(c)(11) without the
"and" at the end (as § 1.704(c)(11) is no longer the penultimate
paragraph of § 1.704(c)), and § 1.704(c)(13) as adopted in this
final rule contains the provisions of former § 1.704(c)(12).
Section 1.704(f) is added to define when an application is "in
condition for examination" for purposes of § 1.704(c)(12). Section
1.704(f) as adopted in this final rule provides that an application
filed under 35 U.S.C. 111(a) is in condition for examination when the
application includes a specification, including at least one claim and
an abstract (§ 1.72(b)), and has papers in compliance with
§ 1.52, drawings in compliance with § 1.84, any English translation
required by § 1.52(d) or § 1.57(a), a sequence listing in
compliance with § 1.821 through 1.825 (if applicable), the
inventor's oath or declaration or application data sheet containing the
information specified in § 1.63(b), the basic filing fee (§ 1.16(a)
or § 1.16(c)), the search fee (§ 1.16(k) or § 1.16(m)), the examination
fee (§ 1.16(o) or § 1.16(q)), any certified copy of the previously filed
application required by § 1.57(a), and any application size fee required
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1539 |
by the Office under § 1.16(s). Section 1.704(f) as adopted in this final
rule provides that an international application is in condition for
examination when the application has entered the national stage as defined
in § 1.491(b), and includes a specification, including at least one claim
and an abstract (§ 1.72(b)), and has papers in compliance with
§ 1.52, drawings in compliance with § 1.84, a sequence listing
in compliance with § 1.821 through 1.825 (if applicable), the
inventor's oath or declaration or application data sheet containing the
information specified in § 1.63(b), the search fee (§ 1.492(b)), the
examination fee (§ 1.492(c)), and any application size fee required by the
Office under § 1.492(j). Section 1.704(f) as adopted in this final rule
also provides that an application shall be considered as having papers in
compliance with § 1.52, drawings (if any) in compliance with § 1.84, and
a sequence listing in compliance with § 1.821 through § 1.825 (if
applicable) for purposes of § 1.704(f) on the filing date of the latest
reply (if any) correcting the papers, drawings, or sequence listing that is
prior to the date of mailing of either an action under 35 U.S.C. 132 or a
notice of allowance under 35 U.S.C. 151, whichever occurs first.
Section 1.809: Section 1.809(c) is amended to provide that if an
application for patent is otherwise in condition for allowance except
for a needed deposit and the Office has received a written assurance
that an acceptable deposit will be made, the Office may notify the
applicant in a notice of allowability and set a three-month (non-
extendable) period of time from the mailing date of the notice of
allowability within which the deposit must be made in order to avoid
abandonment.
Section 1.958: Section 1.958 is amended for consistency with the
change to § 1.137 in this final rule to eliminate the provisions
pertaining to petitions on the basis of unavoidable delay. Section
1.958 is specifically amended to provide that if a response by the
patent owner is not timely filed in the Office, a petition may be filed
pursuant to § 1.137 to revive a reexamination prosecution
terminated under § 1.957(b) or limited under § 1.957(c) if the
delay in response was unintentional.
Section 3.11: Section 3.11(a) is amended to implement section
201(d) of the PLTIA. Section 201(d) of the PLTIA amends 35 U.S.C. 261,
first paragraph, by adding: "[t]he Patent and Trademark Office shall
maintain a register of interests in patents and applications for
patents and shall record any document related thereto upon request, and
may require a fee therefor." Section 3.11(a) is thus amended to
provide that other documents relating to interests in patent
applications and patents, accompanied by completed cover sheets as
specified in § 3.28 and § 3.31, will be recorded in the Office.
Section 3.31: Section 3.31(h) is amended to permit the use of PLT
International Model forms as appropriate in lieu of an assignment cover
sheet under § 3.31. Section 3.31(h) specifically provides that the
assignment cover sheet required by § 3.28 for a patent application
or patent will be satisfied by the Patent Law Treaty Model
International Request for Recordation of Change in Applicant or Owner
Form, Patent Law Treaty Model International Request for Recordation of
a License/Cancellation of the Recordation of a License Form, Patent Law
Treaty Model International Certificate of Transfer Form, or Patent Law
Treaty Model International Request for Recordation of a Security
Interest/Cancellation of the Recordation of a Security Interest Form, as
applicable, except where the assignment is also an oath or declaration
under § 1.63.
Section 11.18: Section 11.18(a) is amended to simply refer to
"§ 1.4(d)" (rather than "§ 1.4(d)(1)" and "§ 1.4(d)(2)"
separately) for consistency with the change to § 1.4(d).
Comments and Responses to Comments: The Office published a notice
of proposed rulemaking on April 11, 2013, proposing to change the rules
of practice to implement the changes in the PLT and title II of the
PLTIA. See Changes to Implement the Patent Law Treaty, 78 FR 21788
(Apr. 11, 2013) (PLT notice of proposed rulemaking). The Office
received nine written submissions containing comments from intellectual
property organizations, industry, law firms, individual patent
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1540 |
practitioners, and the general public in response to this notice of
proposed rulemaking. Comments that supported the proposed changes or
pertained to editorial suggestions are not discussed. The remaining
comments and the Office's responses to those comments follow:
Comment 1: One comment suggested that § 1.16(f) should be
clarified to indicate that only a single surcharge is required for an
application regardless of the number of deficiencies present in the
application.
Response: Section 1.16(f) as adopted in this final rule has been
clarified, as suggested by the comment, to indicate that only a single
surcharge is required for an application regardless of the number of
deficiencies enumerated in § 1.16(f) that are present in the
application.
Comment 2: One comment requested clarification on whether the basic
filing fee is applicable to an application filed without any claims,
and when the excess claims fee for presenting more than three
independent claims or more than twenty total claims must be submitted.
Response: The basic filing fee set forth in § 1.16(a), (b),
(c), or (d), the search fee set forth in § 1.16(k), (l), (m), or
(n), and the examination fee set forth in § 1.16(o), (p), (q), or
(r) are due for an application filed without any claims. If more than
three independent claims, more than twenty total claims, or a multiple
dependent claim are later presented in the application, the excess
claims fee as set forth in § 1.16(h), (i), and/or (j) is due when
the excess claims are presented in the application. The provisions of
§ 1.53(f)(4) are applicable if the excess claims fee as set forth
in § 1.16(h), (i), and/or (j) is not paid when the claims requiring
an excess claims fee are presented in the application.
Comment 3: One comment expressed concern that allowing the later
filing of claims would enable an applicant to draft and file claims for
an application in the United States after obtaining examination results
in other countries, and would either delay publication of the
application or result in publishing an application without claims. The
comment suggested that the rules provide applicants with a not unduly
long period of time for the filing of claims in such an application.
Response: As discussed in the PLT notice of proposed rulemaking, an
application filed without at least one claim would be treated in a
manner analogous to the pre-existing practice under § 1.53(f) for
treating an application filed without the filing, search, or
examination fee. See Changes to Implement the Patent Law Treaty, 78 FR
at 21793. The pre-existing practice under § 1.53(f) for treating an
application filed without the filing, search, or examination fee
involves issuing a notice that sets a two-month period (extendable
under § 1.136) within which the applicant must supply the missing
fees in order to avoid abandonment. The Office will not publish an
application until it includes at least one claim. The Office, however,
also does not publish applications until the basic filing fee has been
paid, and the pre-existing practice under § 1.53(f) for treating an
application filed without the filing fee does not delay publication in
most applications. Thus, the Office does not expect the changes to 35
U.S.C. 111(a) in the PLTIA and the changes to § 1.53 is this final
rule to delay eighteen-month publication.
Comment 4: One comment suggested that the term "replaced" in
§ 1.57(a) and 1.76(b)(3) is confusing as it suggests that some
other specification and drawings are or need to be present to be
replaced. The comment suggests using "provided" or "constituted"
(to match 35 U.S.C. 111(c)).
Response: The phrase "are replaced" is used in § 1.57(a)
and 1.76(b)(3) because that phrase is used in PLT Rule 2(5)(a) as well
as in the pre-printed information in the section of the Patent Law
Treaty Model Request Form that pertains to reference filing (Box IX).
Comment 5: One comment requested clarification of the applicability
of the "reference filing" provision of § 1.57(a) to a
continuation-in-part application. The comment suggested adding a
provision to § 1.57(a) pertaining to applications filed "by
reference" to a previously filed application with new matter
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1541 |
(additional description and/or drawings) included with the filing.
Response: 35 U.S.C. 111(c) provides that the reference to the
previously filed application "shall constitute the specification and
any drawings of the subsequent application." 35 U.S.C. 111(c) thus
does not contemplate the filing by reference of a continuation-in-part
of the previously filed application, as the specification and any
drawings of the subsequent continuation-in-part application would need
to extend beyond the specification and any drawings of the previously
filed application. Therefore, there is no provision for the filing of a
continuation-in-part of a previously filed application under 35 U.S.C.
111(c) and § 1.57(a). An applicant who desires to file a
continuation-in-part of a previously filed application may effectively
do so by filing the additional subject matter as the specification of
an application under 35 U.S.C. 111(a) and § 1.53(b) with an express
incorporation by reference under § 1.57(c) of the previously filed
application. An applicant will be required to revise the application
(e.g., submit a substitute specification under § 1.125) if
"essential material" is being incorporated by reference and the
previously filed application has not been issued as a U.S. patent or
published as a U.S. patent application publication. See § 1.57(d),
(g), and (h) (as adopted in this final rule). Thus, applicants are
encouraged to file a continuation-in-part application with a new
specification and drawings that contains both the subject matter of the
previously filed application and the additional subject matter, rather
than with an incorporation by reference under § 1.57(c) of the
previously filed application.
Comment 6: Several comments stated that the Office should not
require a certified copy of a prior foreign filed application under
§ 1.55 or § 1.57 within the later of four months from the
actual filing date of the application or sixteen months from the filing
date of the prior foreign application, or provide for a reduction of
patent term adjustment if a certified copy of a foreign previously
filed application under § 1.57 is not received within a set time
period. The comments suggested that the Office revise § 1.57(a)(4)
to permit the filing of an interim copy of the foreign previously filed
application and provide an exception for the situation in which the
foreign previously filed application is filed in a foreign intellectual
property office participating with the Office in a bilateral or
multilateral priority document exchange agreement (i.e., a
participating foreign intellectual property office).
Response: The Office previously revised § 1.55 in the final
rule to implement the first inventor to file provisions of the AIA to
require that a certified copy of any foreign priority application be
filed in applications under 35 U.S.C. 111(a) within the later of four
months from the actual filing date of the application or sixteen months
from the filing date of the prior foreign application (with certain
exceptions). See Changes to Implement the First Inventor To File
Provisions of the Leahy-Smith America Invents Act, 78 FR 11024, 11028-
29, 11053-55 (Feb. 14, 2013) (to be codified at § 1.55(f)). The
Office included this change to § 1.55 in the final rule to
implement the first inventor to file provisions of the AIA to ensure
that it has a copy of any foreign priority application by the time of
eighteen-month publication since U.S. patent application publications
(as well as U.S. patents) will have a prior art effect as of the
earliest priority date (for subject matter disclosed in the priority
application) with respect to applications subject to AIA 35 U.S.C. 102.
See id. at 11028.
The changes in this final rule relating to the requirement for a
certified copy of a foreign application pertain to: (1) International
applications in which a certified copy of the foreign priority
application was not filed during the international stage; and (2)
applications filed via the reference filing provisions of 35 U.S.C.
111(c) and § 1.57(a) (where the specification and drawings of the
application filed by reference are the specification and drawings of
the foreign previously filed application).
With respect to international applications in which a certified
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1542 |
copy of the foreign priority application is not filed during the
international stage, § 1.55 formerly provided that a certified copy
of the foreign priority application must be filed within the time limit
set forth in the PCT and the Regulations under the PCT in an
international application entering the national stage under 35 U.S.C.
371. Section 1.55(f)(2) as adopted in this final rule simply provides
that if a certified copy of the foreign priority application is not
filed during the international stage of an international application, a
certified copy of the foreign priority application must be filed within
four months from the date of entry into the national stage as set forth
in § 1.491 or sixteen months from the filing date of the foreign
priority application (with the exceptions applicable to applications
filed under 35 U.S.C. 111(a)).
With respect to applications filed via the reference filing
provision of 35 U.S.C. 111(c) and § 1.57(a), this final rule
provides that a certified copy of a foreign previously filed
application must be filed within the later of four months from the
actual filing date of the application or sixteen months from the filing
date of the foreign previously filed application, and provides for a
reduction of patent term adjustment if a certified copy of a foreign
previously filed application is not received within eight months from
the date on which the application was filed by reference under 35
U.S.C. 111(a).
As discussed previously, PLT Article 5 and PLTIA 35 U.S.C. 111
should not be viewed as prescribing a best practice for the preparation
and filing of a patent application. The reference filing provisions of
35 U.S.C. 111(c) and § 1.57(a) should not be the routine filing
practice for an application having a previously filed counterpart
application, but rather should be viewed as a safeguard in the
situation in which the due date for filing an application is
approaching and a copy of the specification and any drawings of the
previously filed counterpart application are not available. Thus, the
use of the reference filing provisions of 35 U.S.C. 111(c) and
§ 1.57(a) should be relatively rare. If the specification and any
drawings of the previously filed counterpart application are available,
an applicant should simply file a copy of the specification and any
drawings of the previously filed counterpart application as an
application under 35 U.S.C. 111(a) and § 1.53(b). This will avoid
the concerns (the previously discussed consequences of mistyping the
application number, filing date, or intellectual property authority or
country on the application data sheet) inherent in the reference filing
provisions of 35 U.S.C. 111(c) and § 1.57(a), and also avoid the
requirement in § 1.57(a)(4) to file a certified copy of a foreign
previously filed application within the later of four months from the
actual filing date of the application or sixteen months from the filing
date of the foreign previously filed application, as well as the
reduction of patent term adjustment if a certified copy of a foreign
previously filed application is not received within eight months from
the date on which the application was filed by reference under 35
U.S.C. 111(a).
Section 1.57(a)(4) as adopted in this final rule (and as proposed
in the PLT notice of proposed rulemaking) does not require a certified
copy of the previously filed application if the previously filed
application is an application filed under 35 U.S.C. 111 or 363. The
Office has modified § 1.57(a)(4) as adopted in this final rule to
also provide that a certified copy of a foreign previously filed
application is not required if it is a foreign priority application
filed in a participating foreign intellectual property office, and the
conditions set forth in § 1.55(h) pertaining to applications
claiming priority to a foreign application filed in a participating
foreign intellectual property office are met.
The Office is not making the interim copy provision of § 1.55(i)
applicable to the requirement for a certified copy of a foreign
previously filed application in an application filed by reference under
35 U.S.C. 111(c) and § 1.57(a). As discussed previously, the Office
revised § 1.55 in the final rule to implement the first inventor to
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1543 |
file provisions of the AIA to require that a certified copy of the
foreign application be filed within the later of four months from the
actual filing date of the application or sixteen months from the filing
date of the prior foreign application (with certain exceptions). The
Office included this change to ensure that it has a copy of any foreign
priority application by the time of eighteen-month publication since
U.S. patent application publications (as well as U.S. patents) will
have a prior art effect as of the earliest priority date (for subject
matter disclosed in the priority application) with respect to
applications subject to AIA 35 U.S.C. 102. See id. An interim copy
under § 1.55(i) is acceptable for meeting this time period
requirement in § 1.55(f) because the copy is being used in
determining patentability in another application and not in determining
the effective filing date of a claimed invention in the application
claiming the right of foreign priority. Section 1.55 requires that a
certified copy of the foreign priority application be provided when the
applicant is relying upon the right of foreign priority in determining
the effective filing date of a claimed invention in the application
claiming the right of foreign priority. See id. at 11054 (to be
codified at § 1.55(g)(2)). The requirement for a copy of a foreign
previously filed application under § 1.57(a)(4) is to ensure that
the copy of the specification and any drawings subsequently provided by
the applicant correspond to the specification and any drawings of the
foreign previously filed application, which relates to the effective
filing date of the claimed invention in the application filed by
reference under § 1.57. Thus, the applicant's reliance upon the
specification and any drawings of a foreign previously filed application
under § 1.57(a)(4) is comparable to an applicant's reliance upon the
specification and any drawings of the prior foreign application for the
effective filing date of a claimed invention, which is a situation in
which the Office would require a certified copy (and not merely an interim
copy) of the priority application. Therefore, the Office is not making the
interim copy provision of § 1.55(i) also applicable to the requirement
for a certified copy of the priority application under § 1.57(a)(4).
Section 1.57(a)(4) as adopted in this final rule also provides that
the applicant may file a petition showing good and sufficient cause for
the delay if a certified copy of a foreign previously filed application
was not filed within the later of four months from the actual filing
date of the application or sixteen months from the filing date of the
prior foreign application (and the exception pertaining to applications
claiming priority to a foreign priority application filed in a
participating foreign intellectual property office is not applicable).
This provision is designed to avoid a loss of rights for applicants who
make a reasonable effort to timely file a certified copy of the foreign
previously filed application.
Comment 7: One comment noted the provision in 35 U.S.C. 111(c) (and
§ 1.57(a)(3)) that if the copy of the specification and any
drawings of the previously filed application are not submitted, the
application shall be considered as abandoned, and treated as "having
never been filed" unless revived and the appropriate copies of
previously filed application is filed. The comment questioned the
effect of the phrase "treated as having never been filed" on an
application claiming priority to or the benefit of an application filed
by reference under § 1.57(a) and requested clarification that this
is permitted.
Response: 35 U.S.C. 111(c) provides that "[a] failure to submit
the copy of the specification and any drawings of the previously filed
application within the prescribed period shall result in the
application being regarded as abandoned" and that "[s]uch application
shall be treated as having never been filed" unless the application is
revived and a copy of the specification and any drawings of the
previously filed application are submitted. The phrase "treated as
having never been filed"in 35 U.S.C. 111(c) precludes an applicant
from claiming priority to or the benefit of such an application as an
applicant may not claim priority to or the benefit of an application
that had "never been filed." Thus, an applicant may claim priority to
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1544 |
or the benefit of an application abandoned under 35 U.S.C. 111(c) and
§ 1.57(a)(1) or (a)(2) only if the application is revived under
§ 1.137 and a copy of the specification and any drawings of the
previously filed application are submitted to the Office. See § 1.137(c)
("[i]n an application abandoned under § 1.57(a), the reply must include
a copy of the specification and any drawings of the previously filed
application").
Comment 8: One comment stated that the PLTIA eliminates the
provisions for revival of an abandoned application on the basis of
unavoidable delay, meaning that any petition for the revival of an
abandoned application must be on the basis of unintentional delay,
which requires a fee of $1700 ($850 for a small entity). The comment
further stated that the PLT does not, however, require elimination of
the "unavoidable" delay standard.
Response: The PLT does not require elimination of the
"unavoidable" delay standard (which the Office considers to be a
subset of "unintentional" delay), but also does not require a
Contracting Party to have an "unavoidable" delay (or "due care")
standard. The PLTIA amended 35 U.S.C. 41, 111, 133, 151, 364, and 371
to eliminate the provisions pertaining to revival of an abandoned
application or acceptance of a delayed maintenance fee payment on the
basis of unavoidable delay, thus providing a single uniform standard
for the revival of an abandoned application, acceptance of a delayed
maintenance fee payment, acceptance of a delayed priority or benefit
claims, and restoration of the right of priority to a foreign
application or benefit of a provisional application. This final rule
simply implements the changes to 35 U.S.C. 41, 111, 133, 151, 364, and
371 provided for in the PLTIA.
Comment 9: One comment noted that an applicant could pay the lower
fee for revival on the basis of unavoidable delay under the former
practice, but that an applicant must pay the higher fee for revival on
the basis of unintentional delay and request a refund for "exceptional
circumstances" under the PLTIA. Another comment suggested that the
"exceptional circumstances" provision of the PLTIA be employed to
effectively retain the "unavoidable" delay standard (i.e., permitting
an applicant to show "unavoidable" delay and request a refund for
"exceptional circumstances"). Another comment expressed concern with
the absence of an unavoidable delay standard for restoration of
priority in international applications on the basis that many major
patent offices require that there be a showing of a failure to timely
file in spite of due care in order to obtain restoration of priority,
and suggested that the Office provide applicants with the option of
filing a petition on the basis of "exceptional circumstances" which
the Office would interpret as meeting the PLT standard of "failure to
timely file in spite of due care." The comments also suggested that
the rules provide for requests for refund due to the presence of
"exceptional circumstances."
Response: The PLTIA adopts a single uniform standard
("unintentional" delay) for the revival of an abandoned application,
acceptance of a delayed response by the patent owner in a reexamination
proceeding, acceptance of a delayed claim for priority or to the
benefit of a prior-filed application, restoration of the right of
priority to a foreign application or the benefit of a provisional
application, and acceptance of a delayed maintenance fee payment. See
35 U.S.C. 27 ("[t]he Director may establish procedures . . . to revive
an unintentionally abandoned application for patent, accept an
unintentionally delayed payment of the fee for issuing each patent, or
accept an unintentionally delayed response by the patent owner in a
reexamination proceedin"); 41(c)(1) ("[t]he Director may accept the
payment of any maintenance fee . . . if the delay is shown to the
satisfaction of the Director to have been unintentional"); 119(a)
("[t]he Director may prescribe regulations . . . pursuant to which the
12-month period set forth in this subsection may be extended by an
additional 2 months if the delay in filing the application in this
country within the 12-month period was unintentional"); 119(b)(2)
("[t]he Director may establish procedures . . . to accept an
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1545 |
unintentionally delayed claim under this section"); 119(e)(1) ("[t]he
Director may prescribe regulations . . . pursuant to which the 12-month
period set forth in this subsection may be extended by an additional 2
months if the delay in filing the application under [35 U.S.C.] 111(a)
or [35 U.S.C.] 363 within the 12-month period was unintentional"); and
120 ("[t]he Director may establish procedures . . . to accept an
unintentionally delayed submission of an amendment under this
section").
As discussed previously, the "exceptional circumstances"
provision of the PLTIA permits the Office to refund (or waive) the fee
specified in 35 U.S.C. 41(a)(7) in situations in which the failure to
take the required action or pay the required fee was due to a widespread
disaster. The "exceptional circumstances" standard of the PLTIA is not the
equivalent of or a substitute for either the former "unavoidable"
delay standard or the PLT "in spite of due care" standard. Since the
PLTIA eliminated the "unavoidable" delay standard and did not adopt
the PLT "in spite of due care" standard, the Office does not consider
it appropriate to employ the "exceptional circumstances" provision of
the PLTIA as a backdoor retention of the "unavoidable" delay standard
or as a mechanism for the Office to opine on whether an applicant has
met a standard (the PLT "in spite of due care" standard) that is not
part of the United States patent laws. Moreover, the Office's costs for
treating a petition under the "in spite of due care" standard (like
the Office's costs for treating a petition under the former
"unavoidable" delay standard) would far exceed the Office's costs for
treating a petition under the "unintentional" delay standard provided
for in the United States patent laws, and would thus warrant a higher
petition fee rather than the reduced petition fee or no petition fee as
suggested by the comments.
The International Bureau of the World Intellectual Property
Organization (International Bureau) processes requests for restoration
of priority under both the "unintentional" delay standard and the
"in spite of due care" standard. Applicants who know at the time of
filing of the international application that the priority period has
expired and desire treatment under the "in spite of due care"
standard have the option of filing the international application with
the International Bureau as the Receiving Office. Applicants who
discover that an international application was filed after the
expiration of the priority period and desire treatment under the "in
spite of due care" standard may request that the application be
transferred to the International Bureau as Receiving Office under PCT
Rule 19.4. See April 2007 Revision of Patent Cooperation Treaty
Procedure, 72 FR 51559, 51562 (Sept. 10, 2007).
As the "exceptional circumstances'"provision of the PLTIA permits the
Office to refund (or waive) the fee specified in 35 U.S.C. 41(a)(7)
in situations in which the failure to take the required action or pay
the required fee was due to a widespread disaster and not in response
to petitions from applicants, the Office is not adopting provisions for
applicants to request a refund on the basis of there being
"exceptional circumstances."
Comment 10: Several comments noted that the fee for revival on the
basis of unintentional delay was decreased to $1,700 ($850 for a small
entity), but that this fee was also made applicable to delayed payments
of maintenance fees and the failure to timely file a foreign priority
or domestic benefit claim. One comment suggested that this fee change
as it applies to the failure to timely file a foreign priority or
domestic benefit claim was a considerable increase and should be
reconsidered.
Response: As discussed in the PLT notice of proposed rulemaking,
the PLTIA amends 35 U.S.C. 41(a)(7), 119(b), 119(e), and 120 to provide
that the Office shall charge $1,700.00 on filing each petition for the
revival of an abandoned application for a patent, for the delayed
payment of the fee for issuing each patent, for the delayed response by
the patent owner in any reexamination proceeding, for the delayed
payment of the fee for maintaining a patent in force, for the delayed
submission of a priority or benefit claim, or for the extension of the
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1546 |
twelve-month period for filing a subsequent application. See Changes to
Implement the Patent Law Treaty, 78 FR at 21792-93. The changes to the
fee for the revival of an abandoned application for a patent, for the
delayed payment of the fee for maintaining a patent in force, and for
the delayed submission of a priority or benefit claim in this final
rule simply implement the changes in the PLTIA.
Comment 11: One comment opposed the elimination of the
"unavoidable" delay standard on the basis that it would result in a
significant fee increase to revive applications abandoned due to
catastrophes such as earthquakes and tsunamis.
Response: As discussed previously, the PLTIA contains a provision
that permits the Office to refund (or waive) the fee specified in 35
U.S.C. 41(a)(7) in situations in which the failure to take the required
action or pay the required fee was due to a widespread disaster, such
as an earthquake or tsunami.
Comment 12: One comment stated that under the PLTIA the provisions
for revival of an abandoned application on the basis of unintentional
delay also applied to a failure to timely pay a maintenance fee or
failure to timely file a foreign priority or domestic benefit claim.
Response: The PLTIA adopts a single uniform standard
("unintentional" delay) for the revival of an abandoned application,
acceptance of a delayed maintenance fee payment, and acceptance of a
delayed priority or benefit claim. The failure to timely file a foreign
priority or domestic benefit claim does not result in abandonment of an
application (and thus the need for revival) per se. The PLTIA, however,
expressly provides that the standard for acceptance of a delayed
priority or benefit claim ("unintentional" delay) is the same as the
standard for revival of an abandoned application.
Comment 13: One comment expressed concern about the impact of the
provision for the restoration of the right of priority on patent term.
The comment suggested that this provision would effectively extend the
patent term by up to two months for negligent applicants. The comment
suggested that there be appropriate measures (e.g., requirement for a
terminal disclaimer) to ensure that an applicant does not benefit by
missing the date for filing the subsequent application.
Response: The Office does not consider it necessary to create a
complex restoration process to avoid abuse at this time. An applicant's
failure to file the subsequent application within the twelve-month
period in 35 U.S.C. 119(a) or (e) must have been unintentional. Thus,
an applicant who intentionally delays filing the subsequent application
will not be able to obtain priority to a prior foreign application
under 35 U.S.C. 119(a) or benefit of a prior provisional application
under 35 U.S.C. 119(e). In addition, the subsequent application must
still be filed within two months of the expiration of the twelve-month
period. The Office, however, may consider requirements if it appears
that the procedures for restoration of the priority under 35 U.S.C.
119(a) or benefit under 35 U.S.C. 119(e) are being used routinely or
are being abused.
Comment 14: One comment stated that the PLTIA uses the phrase
"extending by an additional 2 months," rather than terminology more
consistent with the PLT such as "restoration" or "reinstatement" of
priority rights. The comment stated that during the PLT discussions at
WIPO, there was great criticism of this provision as extending the
Paris Convention period from twelve months to fourteen months. The
comment further stated that the argument presented at WIPO to accept
the provision was that it was not extending the twelve-month Paris
Convention period, but rather was reinstating or restoring the right of
priority.
Response: The Office does not consider the change to 35 U.S.C.
119(a) in the PLTIA to be an "extension" of the twelve-month Paris
Convention period. As discussed previously, the procedures set forth in
§ 1.55(c) (and 1.78(b)) as adopted in this final rule are for
applicants whose delay in filing the subsequent application within the
twelve-month time period in 35 U.S.C. 119(a) (or 119(e)(1)) was
unintentional, and the use of the additional two-month time period in 35
U.S.C. 119(a) (or 119(e)(1)) as an "extension of time" to file the
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1547 |
subsequent application would be considered an abuse of the provisions.
Comment 15: Several comments suggested that the Office provide for
PCT applications filed in the United States Receiving Office in a
language other than English in view of the change to 35 U.S.C. 361(c)
to change "International applications filed in the Patent and
Trademark Office shall be in the English language" to "International
applications filed in the Patent and Trademark Office shall be filed in
the English language, or an English translation shall be filed within
such later time as may be fixed by the Director."
Response: The PLTIA amends 35 U.S.C. 361(c) to authorize the Office
to allow the filing of PCT applications in a language other than
English if an English-language translation of the PCT application is
filed within the period specified by the Office. In U.S. national
practice for applications filed under 35 U.S.C. 111(a) in a language
other than English, the Office requires an English-language translation
of the non-English-language application and conducts all subsequent
processing and examination of the application using the English-
language translation and not the initial non-English-language
application. Unlike U.S. national practice for applications filed under
35 U.S.C. 111(a), the PCT and PCT Regulations provide for a Receiving
Office to review PCT applications (the PCT application as filed, and
not any subsequent translation of the PCT application) for errors
(e.g., review the description to determine whether it refers to
drawings that are not present) (PCT Article 14 and PCT Rules 20 and
25), and to process requests for incorporation by reference in PCT
applications (PCT Rule 20.6), and other amendments and corrections to
PCT applications (PCT Rule 26). There is no provision in the PCT that
provides for the filing of an application in one language for the
purpose of establishing a filing date, and the later filing of a
translation of such application for the purpose of subsequent review
and processing by the Receiving Office. The United States Receiving
Office is simply not currently capable of conducting the review and
processing required by the PCT for PCT applications filed in a language
other than English. Creating a procedure under the PCT to provide for
the initial filing of a non-English-language PCT application and later
filing of an English-language translation for the purpose of subsequent
review and processing would, under the provisions of the PCT and PCT
Regulations, result in the resetting of the International Filing Date
to the later date of submission of the English-language translation of
the non-English-language PCT application. Therefore, to avoid the loss
of a filing date for a PCT application in a language other than English
deposited with the United States Receiving Office, the Office will
continue to apply the current process under PCT Rule 19.4 of
transmitting such a PCT application to the International Bureau for
processing in its capacity as a Receiving Office, which will avoid the
loss of a filing date as long as the PCT application is in a language
accepted under PCT Rule 12.1(a) by the International Bureau as a
Receiving Office. See MPEP 1805.
Comment 16: One comment suggested that the word "also" in § 1.78(a)(4)
and (c)(3) (two occurrences in each paragraph) (§ 1.78(a)(4) and (d)(3)
as adopted in this final rule) is confusing and redundant.
Response: 35 U.S.C. 119(e) and 120 each require that the specific
reference to the prior-filed application be submitted at such time
during the pendency of the application as required by the Director.
Sections 1.78(a)(4) and 1.78(d)(3), therefore, require that the
specific reference to the prior-filed application be submitted during
the pendency of the application as is expressly required by 35 U.S.C.
119(e) and 120, and also require that the specific reference to the
prior-filed application be submitted within the four-month or sixteen-
month time frame as is authorized by 35 U.S.C. 119(e) and 120.
Comment 17: One comment suggested that the phrase "for the
patent" should read "for the application" or be deleted in both
occurrences in § 1.53(f)(3)(ii) and 1.495(c)(3)(ii).
Response: The phrase "issue fee for the patent" tracks the
language of 35 U.S.C. 115(f) as amended by the AIA Technical
Corrections Act.
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1548 |
Comment 18: One comment suggested that the requirement that any
petition for reconsideration of a decision refusing to accept a
maintenance fee be accompanied by the petition fee set forth in § 1.17(f)
should be deleted for consistency with the change to § 1.17(f).
Response: Section 1.378(d) as adopted in this final rule does not
include the requirement for the petition fee under § 1.17(f) for a
request for reconsideration of a maintenance fee decision.
Comment 19: Several comments suggested that § 1.704(f) be
clarified to indicate that the phrase "in compliance with" in
connection with the application papers, drawings, translations, and
sequence listings applies to preexamination requirements and does not
apply to corrections required by examiners.
Response: Section 1.704(f) as adopted in this final rule provides
that an application shall be considered as having papers in compliance
with § 1.52, drawings (if any) in compliance with § 1.84, and a
sequence listing in compliance with § 1.821 through § 1.825 (if
applicable) for purposes of § 1.704(f) on the filing date of the
latest reply (if any) correcting the papers, drawings, or sequence
listing that is prior to the date of mailing of either an action under
35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151, whichever
occurs first. Thus, the patent term adjustment reduction provision of
§ 1.704(c)(12) would not apply to a correction of the application
papers, drawings, or sequence listing that is required by an examiner
(i.e., would not apply to corrections that take place after the date of
mailing of either an action under 35 U.S.C. 132 or a notice of
allowance under 35 U.S.C. 151).
Comment 20: One comment noted that the PLTIA amends 35 U.S.C. 261
to provide for a "register of interests in applications for patents
and patents," but that the PLTIA does not specify the scope of an
"interest." The comment requests guidance on the scope of these
interests as well as what is necessary to have these interests
recorded.
Response: The Office currently records assignments, licenses,
security agreements, and other interests in patents and patent
applications, but the recording of such a document is not a
determination of the effect the document has on the ownership of the
patent or even the validity of the document. See MPEP 301. Pre-PLTIA 35
U.S.C. 261 applied to "applications for patent, patents, or any
interest therein." The Office does not view the PLTIA as changing the
meaning of the term "interest" as used in 35 U.S.C. 261.
Comment 21: Several comments suggested that the Office should move
from the "independent and distinct" restriction standard of 35 U.S.C.
121 to the PCT "unity of invention" standard.
Response: As discussed in the PLT notice of proposed rulemaking,
the Office is in the process of studying the changes to the patent
statute, regulations, examination practices, and filing fees that would
be necessary to move from the "independent and distinct" restriction
standard of 35 U.S.C. 121 to the "unity of invention" standard of PCT Rule
13 in a practical manner.
Rulemaking Considerations
A. Administrative Procedure Act
This rulemaking implements the PLT and title II of the PLTIA. The
changes in this rulemaking (except for the change to the patent term
adjustment provisions of 37 CFR 1.704) are to revise application filing
and prosecution procedures to conform to the changes in title II of the
PLTIA and section 1(f) of the AIA Technical Corrections Act, to
eliminate procedural requirements to ensure that the rules of practice
are consistent with the PLT, and to make minor changes pertaining to
the supplemental examination, inventor's oath or declaration, and first
inventor to file provisions of the AIA. Therefore, the changes in this
rulemaking (except for the change to the patent term adjustment
provisions of 37 CFR 1.704) involve rules of agency practice and
procedure and/or interpretive rules. See Bachow Commc'ns Inc. v.
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1549 |
F.C.C., 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an
application process are procedural under the Administrative Procedure
Act); Inova Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir.
2001) (rules for handling appeals were procedural where they did not
change the substantive standard for reviewing claims); Nat'l Org. of
Veterans' Advocates, Inc. v. Sec'y of Veterans Affairs, 260 F.3d 1365,
1375 (Fed. Cir. 2001) (rule that clarifies interpretation of a statute
is interpretive).
Accordingly, prior notice and opportunity for public comment were
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law),
except for the change to the patent term adjustment provisions of 37
CFR 1.704. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed.
Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B),
does not require notice and comment rulemaking for "interpretative
rules, general statements of policy, or rules of agency organization,
procedure, or practice") (quoting 5 U.S.C. 553(b)(A)). The Office,
however, published proposed changes for comment as it sought the
benefit of the public's views on the Office's proposed implementation
of the PLT and title II of the PLTIA and section 1(f) of the AIA
Technical Corrections Act.
B. Regulatory Flexibility Act
For the reasons set forth herein, the Deputy General Counsel for
General Law of the United States Patent and Trademark Office has
certified to the Chief Counsel for Advocacy of the Small Business
Administration that the changes in this final rule will not have a
significant economic impact on a substantial number of small entities.
See 5 U.S.C. 605(b). The proposed rule described a similar
certification at that time by the Deputy General Counsel for General
Law, and no comments were received.
As noted in the notice of proposed rulemaking, the primary changes
in this rulemaking are to revise application filing and prosecution
procedures to conform to the changes in title II of the PLTIA and
eliminate procedural requirements to ensure that the rules of practice
are consistent with the PLT.
The notable changes in the PLT and title II of the PLTIA pertain
to: (1) The filing date requirements for a patent application; (2) the
restoration of patent rights via the revival of abandoned applications
and acceptance of delayed maintenance fee payments; and (3) the
restoration of the right of priority to a foreign application or the
benefit of a provisional application in a subsequent application filed
within two months of the expiration of the twelve-month period (six-
month period for design applications) for filing such a subsequent
application.
The requirements and fees for filing of an application without a
claim track the existing provisions in 37 CFR 1.53(f) for an
application that is missing application components not required for a
filing date. The requirements and fees for filing of an application
"by reference" to a previously filed application in lieu of filing
the specification and drawings (reference filing) are simpler than the
existing requirements in 37 CFR 1.57(a) that apply when relying upon
the specification and drawings of a prior-filed application as the
specification and drawings of an application.
The requirements for a petition to revive an abandoned application
(37 CFR 1.137) or accept a delayed maintenance fee payment (37 CFR
1.378) on the basis of "unintentional" delay are the pre-existing
requirements for a petition to revive an abandoned application or
accept a delayed maintenance fee payment. PLTIA 35 U.S.C. 41(a)(7) and
(c)(1) set the petition fee amount for a petition to accept a delayed
maintenance fee payment at an amount equal to the fee for a petition to
revive an unintentionally abandoned application, which is comparable to
the pre-existing surcharge for accepting an unintentionally delayed
maintenance fee payment.
The requirements and fees for a petition to restore the right of
priority to a prior-filed foreign application or a petition to restore
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1550 |
the right to benefit of a prior-filed provisional application
correspond to the pre-existing requirements for petitions based upon
unintentional delay (i.e., a petition to revive an abandoned
application (37 CFR 1.137) or accept a delayed maintenance fee payment
(37 CFR 1.378)). PLTIA 35 U.S.C. 41(a)(7) and 119 set the petition fee
amount for a petition to restore the right of priority to a prior-filed
foreign application or a petition to restore the right to benefit of a
prior-filed provisional application at an amount equal to the fee for a
petition to revive an unintentionally abandoned application. Prior to
the PLTIA, 35 U.S.C. 119 did not permit an applicant who missed the
filing period requirement in 35 U.S.C. 119(a) or (e) to restore the
right of priority to the prior-filed foreign application or restore the
right to benefit of the prior-filed provisional application.
The changes to the patent term adjustment reduction provisions do
not impose any additional burden on applicants. The change to 37 CFR
1.704(c) simply specifies that the failure to place an application in
condition for examination within eight months from the date on which
the application was filed under 35 U.S.C. 111(a) or the date of
commencement of the national stage under 35 U.S.C. 371(b) or (f) in an
international application constitutes a failure of an applicant to
engage in reasonable efforts to conclude processing or examination of
an application. This change will not have a significant economic impact
on a substantial number of small entities because: (1) Applicants
already have to place an application in a condition for examination;
(2) applicants are not entitled to patent term adjustment for
examination delays that result from an applicant's delay in prosecuting
the application (35 U.S.C. 154(b)(2)(C)(i) and 37 CFR 1.704(a)); and
(3) applicants may avoid any consequences from this provision simply by
placing the application in condition for examination within eight
months from the date on which the application was filed under 35 U.S.C.
111(a) or the date of commencement of the national stage under 35
U.S.C. 371(b) or (f) in an international application.
For the foregoing reasons, the changes in this final rule will not
have a significant economic impact on a substantial number of small
entities.
C. Executive Order 12866 (Regulatory Planning and Review)
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory Review)
The Office has complied with Executive Order 13563. Specifically,
the Office has, to the extent feasible and applicable: (1) Made a
reasoned determination that the benefits justify the costs of the rule;
(2) tailored the rule to impose the least burden on society consistent
with obtaining the regulatory objectives; (3) selected a regulatory
approach that maximizes net benefits; (4) specified performance
objectives; (5) identified and assessed available alternatives; (6)
involved the public in an open exchange of information and perspectives
among experts in relevant disciplines, affected stakeholders in the
private sector, and the public as a whole, and provided on-line access
to the rulemaking docket; (7) attempted to promote coordination,
simplification, and harmonization across government agencies and
identified goals designed to promote innovation; (8) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (9) ensured the objectivity of scientific
and technological information and processes.
E. Executive Order 13132 (Federalism)
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1551 |
F. Executive Order 13175 (Tribal Consultation)
This rulemaking will not: (1) Have substantial direct effects on
one or more Indian tribes; (2) impose substantial direct compliance
costs on Indian tribal governments; or (3) preempt tribal law.
Therefore, a tribal summary impact statement is not required under
Executive Order 13175 (Nov. 6, 2000).
G. Executive Order 13211 (Energy Effects)
This rulemaking is not a significant energy action under Executive
Order 13211 because this rulemaking is not likely to have a significant
adverse effect on the supply, distribution, or use of energy.
Therefore, a Statement of Energy Effects is not required under
Executive Order 13211 (May 18, 2001).
H. Executive Order 12988 (Civil Justice Reform)
This rulemaking meets applicable standards to minimize litigation,
eliminate ambiguity, and reduce burden as set forth in sections 3(a)
and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children)
This rulemaking does not concern an environmental risk to health or
safety that may disproportionately affect children under Executive
Order 13045 (Apr. 21, 1997).
J. Executive Order 12630 (Taking of Private Property)
This rulemaking will not affect a taking of private property or
otherwise have taking implications under Executive Order 12630 (Mar.
15, 1988).
K. Congressional Review Act
Under the Congressional Review Act provisions of the Small Business
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.),
prior to issuing any final rule, the United States Patent and Trademark
Office will submit a report containing the final rule and other
required information to the United States Senate, the United States
House of Representatives, and the Comptroller General of the Government
Accountability Office. The changes in this rule are not expected to
result in an annual effect on the economy of 100 million dollars or
more, a major increase in costs or prices, or significant adverse
effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign-based enterprises in domestic and export markets.
Therefore, this rule is not expected to result in a "major rule" as
defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995
The changes set forth in this rule do not involve a Federal
intergovernmental mandate that will result in the expenditure by State,
local, and tribal governments, in the aggregate, of 100 million dollars
(as adjusted) or more in any one year, or a Federal private sector
mandate that will result in the expenditure by the private sector of
100 million dollars (as adjusted) or more in any one year, and will not
significantly or uniquely affect small governments. Therefore, no
actions are necessary under the provisions of the Unfunded Mandates
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
M. National Environmental Policy Act
This rulemaking will not have any effect on the quality of the
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1552 |
environment and is thus categorically excluded from review under the
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act
The requirements of section 12(d) of the National Technology
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not
applicable because this rulemaking does not contain provisions which
involve the use of technical standards.
O. Paperwork Reduction Act
The Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.)
requires that the Office consider the impact of paperwork and other
information collection burdens imposed on the public. This final rule
involves information collection requirements which are subject to
review by the Office of Management and Budget (OMB) under the Paperwork
Reduction Act of 1995 (44 U.S.C. 3501-3549).
The notable changes in the PLT and title II of the PLTIA pertain
to: (1) The filing date requirements for a patent application; (2) the
restoration of patent rights via the revival of abandoned applications
and acceptance of delayed maintenance fee payments; and (3) the
restoration of the right of priority to a foreign application or the
benefit of a provisional application in a subsequent application filed
within two months of the expiration of the twelve-month period (six-
month period for design applications) for filing such a subsequent
application.
The information collection requirements pertaining to petitions to
accept a delayed maintenance fee payment have been reviewed and
approved by the OMB under OMB control number 0651-0016. The information
collection requirements pertaining to patent term adjustment have been
reviewed and approved by the OMB under OMB control number 0651-0020.
The information collection requirements pertaining to recording
assignments (and other interests) in patents and patent applications
have been reviewed and approved by the OMB under OMB control number
0651-0027. The information collection requirements pertaining to
petitions to revive an abandoned application have been reviewed and
approved by the OMB under OMB control number 0651-0031. The information
collection requirements pertaining to the specification (including claims)
and drawings required for a patent application have been reviewed and
approved by the OMB under OMB control number 0651-0032. The information
collection requirements pertaining to representative and correspondence
address have been reviewed and approved by the OMB under OMB control
number 0651-0035. The changes in this final rule pertaining to petitions
to accept a delayed maintenance fee payment, patent term adjustment,
petitions to revive an abandoned application, the specification (including
claims) and drawings required for a patent application, and representative
and correspondence address, do not propose to add any additional
requirements (including information collection requirements) or fees
for patent applicants or patentees. Therefore, the Office did not
resubmit information collection packages to OMB for its review and
approval because the changes in this final rule do not affect the
information collection requirements associated with the information
collections approved under OMB control numbers 0651-0016, 0651-0020,
0651-0027, 0651-0031, 0651-0032, and 0651-0035.
This final rule also provides for the optional use by applicants of
the following Patent Law Treaty Model International Forms: (1) Model
International Request Form; (2) Model International Power of Attorney
Form; (3) Model International Request for Recordation of Change in Name
or Address Form; (4) Model International Request for Correction of
Mistakes Form; (5) Model International Request for Recordation of
Change in Applicant or Owner Form; (6) Model International Certificate
of Transfer Form; (7) Model International Request for Recordation of a
License/Cancellation of the Recordation of a License Form; and (8)
Model International Request for Recordation of a Security Interest/
Cancellation of the Recordation of a Security Interest Form. This final
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1553 |
rule also requires revisions to the pre-printed information on the
forms for petitions to accept a delayed maintenance fee payment and
petitions to revive an abandoned application (PTO/SB/64, PTO/SB/64a,
PTO/SB/66) and elimination of the forms for petitions based upon
unavoidable delay (PTO/SB/61 and PTO/SB/65) in the information
collections approved under OMB control numbers 0651-0016 and 0651-0031.
The Office is submitting a change worksheet to OMB to add these Patent
Law Treaty Model International Forms and form revisions to the
information collections approved under OMB control numbers 0651-0016,
0651-0020, 0651-0027, 0651-0031, 0651-0032, and 0651-0035.
This final rule adds petitions to restore the right of priority to
a prior-filed foreign application or a petition to restore the right to
benefit of a prior-filed provisional application. The Office submitted
a proposed information collection to OMB for its review and approval
when the notice of proposed rulemaking was published. The Office also
published the title, description, and respondent description of the
information collection, with an estimate of the annual reporting
burdens, in the notice of proposed rulemaking. See Changes to Implement
the Patent Law Treaty, 78 FR at 21802-03. The Office did not receive
any comments on this proposed information collection, and the changes
adopted in this final rule do not require any change to the proposed
information collection. Accordingly, the Office has resubmitted the
proposed revision to the information collection to OMB. The proposed
information collection is available at OMB's Information Collection
Review Web site: www.reginfo.gov/public/do/PRAMain.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall a person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act, unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
37 CFR Part 3
Administrative practice and procedure, Inventions and patents,
Trademarks.
37 CFR Part 11
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
For the reasons set forth in the preamble, 37 CFR parts 1, 3, and
11 are amended as follows:
PART 1-RULES OF PRACTICE IN PATENT CASES
. 1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
. 2. Section 1.1 is amended by revising paragraph (c) to read as follows:
§ 1.1 Addresses for non-trademark correspondence with the United
States Patent and Trademark Office.
* * * * *
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1554 |
(c) For reexamination or supplemental examination proceedings. (1)
All correspondence concerning ex parte reexamination, other than
correspondence to the Office of the General Counsel pursuant to §
1.1(a)(3) and § 102.4 of this chapter, should be additionally
marked "Mail Stop Ex Parte Reexam."
(2) All correspondence concerning inter partes reexamination, other
than correspondence to the Office of the General Counsel pursuant to
§ 1.1(a)(3) and § 102.4 of this chapter, should be additionally
marked "Mail Stop Inter Partes Reexam."
(3) Requests for supplemental examination (original and corrected
request papers) and any other paper filed in a supplemental examination
proceeding, should be additionally marked "Mail Stop Supplemental
Examination."
(4) All correspondence concerning a reexamination proceeding
ordered as a result of a supplemental reexamination proceeding, other
than correspondence to the Office of the General Counsel pursuant to
§ 1.1(a)(3) and § 102.4 of this chapter should be additionally
marked "Mail Stop Ex Parte Reexam."
* * * * *
. 3. Section 1.4 is amended by revising paragraphs (a)(2), (c), and (d)
to read as follows:
§ 1.4 Nature of correspondence and signature requirements.
(a) * * *
(2) Correspondence in and relating to a particular application or
other proceeding in the Office. See particularly the rules relating to
the filing, processing, or other proceedings of national applications
in subpart B, § 1.31 to 1.378; of international applications
in subpart C, § 1.401 to 1.499; of ex parte reexaminations of
patents in subpart D, § 1.501 to 1.570; of supplemental
examination of patents in subpart E, § 1.601 to 1.625; of
extension of patent term in subpart F, § 1.710 to 1.785; of
inter partes reexaminations of patents in subpart H, § 1.902
to 1.997; and of the Patent Trial and Appeal Board in parts 41 and 42
of this chapter.
* * * * *
(c) Since different matters may be considered by different branches
or sections of the Office, each distinct subject, inquiry, or order must
be contained in a separate paper to avoid confusion and delay in
answering papers dealing with different subjects. Subjects provided for
on a single Office or World Intellectual Property Organization form may
be contained in a single paper.
(d)(1) Handwritten signature. Each piece of correspondence, except
as provided in paragraphs (d)(2), (d)(3), (d)(4), (e), and (f) of this
section, filed in an application, patent file, or other proceeding in
the Office which requires a person's signature, must:
(i) Be an original, that is, have an original handwritten signature
personally signed, in permanent dark ink or its equivalent, by that
person; or
(ii) Be a direct or indirect copy, such as a photocopy or facsimile
transmission (§ 1.6(d)), of an original. In the event that a copy
of the original is filed, the original should be retained as evidence
of authenticity. If a question of authenticity arises, the Office may
require submission of the original.
(2) S-signature. An S-signature is a signature inserted between
forward slash marks, but not a handwritten signature as defined by
paragraph (d)(1) of this section. An S-signature includes any signature
made by electronic or mechanical means, and any other mode of making or
applying a signature other than a handwritten signature as provided for
in paragraph (d)(1) of this section. Correspondence being filed in the
Office in paper, by facsimile transmission as provided in § 1.6(d),
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1555 |
or via the Office electronic filing system as an attachment as provided
in § 1.6(a)(4), for a patent application, patent, or a
reexamination or supplemental examination proceeding may be S-signature
signed instead of being personally signed (i.e., with a handwritten
signature) as provided for in paragraph (d)(1) of this section. The
requirements for an S-signature under this paragraph (d)(2) of this
section are as follows.
(i) The S-signature must consist only of letters, or Arabic
numerals, or both, with appropriate spaces and commas, periods,
apostrophes, or hyphens for punctuation, and the person signing the
correspondence must insert his or her own S-signature with a first
single forward slash mark before, and a second single forward slash
mark after, the S-signature (e.g.,/Dr. James T. Jones, Jr./); and
(ii) A patent practitioner (§ 1.32(a)(1)), signing pursuant to
§ 1.33(b)(1) or 1.33(b)(2), must supply his/her registration
number either as part of the S-signature, or immediately below or
adjacent to the S-signature. The number () character may be
used only as part of the S-signature when appearing before a
practitioner's registration number; otherwise the number character may
not be used in an S-signature.
(iii) The signer's name must be:
(A) Presented in printed or typed form preferably immediately below
or adjacent the S-signature, and
(B) Reasonably specific enough so that the identity of the signer
can be readily recognized.
(3) Electronically submitted correspondence. Correspondence
permitted via the Office electronic filing system may be signed by a
graphic representation of a handwritten signature as provided for in
paragraph (d)(1) of this section or a graphic representation of an S-
signature as provided for in paragraph (d)(2) of this section when it
is submitted via the Office electronic filing system.
(4) Certifications-(i) Certification as to the paper presented.
The presentation to the Office (whether by signing, filing, submitting,
or later advocating) of any paper by a party, whether a practitioner or
non-practitioner, constitutes a certification under § 11.18(b) of
this subchapter. Violations of § 11.18(b)(2) of this subchapter by
a party, whether a practitioner or non-practitioner, may result in the
imposition of sanctions under § 11.18(c) of this subchapter. Any
practitioner violating § 11.18(b) of this subchapter may also be
subject to disciplinary action. See § 11.18(d) of this subchapter.
(ii) Certification as to the signature. The person inserting a
signature under paragraph (d)(2) or (d)(3) of this section in a
document submitted to the Office certifies that the inserted signature
appearing in the document is his or her own signature. A person
submitting a document signed by another under paragraph (d)(2) or
(d)(3) of this section is obligated to have a reasonable basis to
believe that the person whose signature is present on the document was
actually inserted by that person, and should retain evidence of
authenticity of the signature. Violations of the certification as to
the signature of another or a person's own signature as set forth in
this paragraph may result in the imposition of sanctions under § 11.18(c)
and (d) of this chapter.
(5) Forms. The Office provides forms for the public to use in
certain situations to assist in the filing of correspondence for a
certain purpose and to meet certain requirements for patent
applications and proceedings. Use of the forms for purposes for which
they were not designed is prohibited. No changes to certification
statements on the Office forms (e.g., oath or declaration forms,
terminal disclaimer forms, petition forms, and nonpublication request
forms) may be made. The existing text of a form, other than a
certification statement, may be modified, deleted, or added to, if all
text identifying the form as an Office form is removed. The
presentation to the Office (whether by signing, filing, submitting, or
later advocating) of any Office form with text identifying the form as
an Office form by a party, whether a practitioner or non-practitioner,
constitutes a certification under § 11.18(b) of this chapter that
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1556 |
the existing text and any certification statements on the form have not
been altered other than permitted by EFS-Web customization.
* * * * *
. 4. Section 1.5 is amended by revising paragraph (d) to read as follows:
§ 1.5 Identification of patent, patent application, or patent-
related proceeding.
* * * * *
(d) A letter relating to a reexamination or supplemental
examination proceeding should identify it as such by the number of the
patent undergoing reexamination or supplemental examination, the
request control number assigned to such proceeding, and, if known, the
group art unit and name of the examiner to which it been assigned.
* * * * *
. 5-6. Section 1.6 is amended by revising paragraph (d) to read as
follows:
§ 1.6 Receipt of correspondence.
* * * * *
(d) Facsimile transmission. Except in the cases enumerated below,
correspondence, including authorizations to charge a deposit account,
may be transmitted by facsimile. The receipt date accorded to the
correspondence will be the date on which the complete transmission is
received in the United States Patent and Trademark Office, unless that
date is a Saturday, Sunday, or Federal holiday within the District of
Columbia. See paragraph (a)(3) of this section. To facilitate proper
processing, each transmission session should be limited to
correspondence to be filed in a single application or other proceeding
before the United States Patent and Trademark Office. The application
number of a patent application, the control number of a reexamination
or supplemental examination proceeding, the interference number of an
interference proceeding, the trial number of a trial proceeding before
the Board, or the patent number of a patent should be entered as a part
of the sender's identification on a facsimile cover sheet. Facsimile
transmissions are not permitted and, if submitted, will not be accorded
a date of receipt in the following situations:
(1) Correspondence as specified in § 1.4(e), requiring an
original signature;
(2) Certified documents as specified in § 1.4(f);
(3) Correspondence which cannot receive the benefit of the
certificate of mailing or transmission as specified in § 1.8(a)(2)(i)(A)
through (D), (F), and (I), and § 1.8(a)(2)(iii)(A), except that a
continued prosecution application under § 1.53(d) may be transmitted to
the Office by facsimile;
(4) Color drawings submitted under § 1.81, 1.83 through
1.85, 1.152, 1.165, 1.173, or 1.437;
(5) A request for reexamination under § 1.510 or § 1.913,
or a request for supplemental examination under § 1.610;
(6) Correspondence to be filed in a patent application subject to a
secrecy order under § 5.1 through 5.5 of this chapter and
directly related to the secrecy order content of the application;
(7) In contested cases and trials before the Patent Trial and
Appeal Board, except as the Board may expressly authorize.
* * * * *
. 7. Section 1.7 is amended by revising paragraph (a) to read as follows:
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1557 |
§ 1.7 Times for taking action; Expiration on Saturday, Sunday or
Federal holiday.
(a) Whenever periods of time are specified in this part in days,
calendar days are intended. When the day, or the last day fixed by
statute or by or under this part for taking any action or paying any
fee in the United States Patent and Trademark Office falls on Saturday,
Sunday, or on a Federal holiday within the District of Columbia, the
action may be taken, or the fee paid, on the next succeeding business
day which is not a Saturday, Sunday, or a Federal holiday. See § 90.3
of this chapter for time for appeal or for commencing civil action.
* * * * *
. 8. Section 1.16 is amended by revising paragraph (f) to read as
follows:
§ 1.16 National application filing, search, and examination fees.
* * * * *
(f) Surcharge for filing the basic filing fee, search fee,
examination fee, or inventor's oath or declaration on a date later than
the filing date of the application, an application that does not
contain at least one claim on the filing date of the application, or an
application filed by reference to a previously filed application under
§ 1.57(a), except provisional applications:
By a micro entity (§ 1.29)............................ $35.00
By a small entity (§ 1.27(a))......................... 70.00
By other than a small or micro entity.................. 140.00
* * * * *
. 9. Section 1.17 is amended by revising paragraphs (f), (g), (m), and
(p), adding new paragraph (o), and removing and reserving paragraphs
(l) and (t) to read as follows:
§ 1.17 Patent application and reexamination processing fees.
* * * * *
(f) For filing a petition under one of the following sections which
refers to this paragraph:
By a micro entity (§ 1.29)............................ $100.00
By a small entity (§ 1.27(a))......................... 200.00
By other than a small or micro entity.................. 400.00
§ 1.36(a)-for revocation of a power of attorney by fewer than
all of the applicants.
§ 1.53(e)-to accord a filing date.
§ 1.182-for decision on a question not specifically provided
for in an application for patent.
§ 1.183-to suspend the rules in an application for patent.
§ 1.741(b)-to accord a filing date to an application under
§ 1.740 for extension of a patent term.
(g) For filing a petition under one of the following sections which
refers to this paragraph: $200.00
§ 1.12-for access to an assignment record.
§ 1.14-for access to an application.
§ 1.46-for filing an application on behalf of an inventor by a
person who otherwise shows sufficient proprietary interest in the
matter.
§ 1.55(f)-for filing a belated certified copy of a foreign
application.
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1558 |
§ 1.57(a)-for filing a belated certified copy of a foreign
application.
§ 1.59-for expungement of information.
§ 1.103(a)-to suspend action in an application.
§ 1.136(b)-for review of a request for extension of time when
the provisions of § 1.136(a) are not available.
§ 1.377-for review of decision refusing to accept and record
payment of a maintenance fee filed prior to expiration of a patent.
§ 1.550(c)-for patent owner requests for extension of time in
ex parte reexamination proceedings.
§ 1.956-for patent owner requests for extension of time in
inter partes reexamination proceedings.
§ 5.12-for expedited handling of a foreign filing license.
§ 5.15-for changing the scope of a license.
§ 5.25-for retroactive license.
* * * * *
(l) [Reserved]
(m) For filing a petition for the revival of an abandoned
application for a patent, for the delayed payment of the fee for
issuing each patent, for the delayed response by the patent owner in
any reexamination proceeding, for the delayed payment of the fee for
maintaining a patent in force, for the delayed submission of a priority
or benefit claim, or for the extension of the twelve-month (six-month
for designs) period for filing a subsequent application (§ 1.55(c),
1.55(e), 1.78(b), 1.78(c), 1.78(e), 1.137, 1.378, and 1.452):
By a small entity (§ 1.27(a)) or micro entity (§ 1.29).... $850.00
By other than a small or micro entity...................... 1,700.00
* * * * *
(o) For every ten items or fraction thereof in a third-party
submission under § 1.290:
By a small entity (§ 1.27(a)) or micro entity (§ 1.29 .. $90.00
By other than a small entity............................. 180.00
(p) For an information disclosure statement under § 1.97(c) or
(d):
By a micro entity (§ 1.29)............................ $45.00
By a small entity (§ 1.27(a))......................... 90.00
By other than a small or micro entity.................. 180.00
* * * * *
(t) [Reserved]
. 10. Section 1.20 is amended by removing and reserving paragraph (i).
§ 1.20 Post issuance fees.
* * * * *
(i) [Reserved]
* * * * *
. 11. Section 1.23 is amended by adding a new paragraph (c) to read as
follows:
§ 1.23 Methods of payment.
* * * * *
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1559 |
(c) A fee transmittal letter may be signed by a juristic applicant
or patent owner.
. 12. Section 1.25 is amended by revising paragraph (b) to read as
follows:
§ 1.25 Deposit accounts.
* * * * *
(b) Filing, issue, appeal, international-type search report,
international application processing, petition, and post-issuance fees
may be charged against these accounts if sufficient funds are on
deposit to cover such fees. A general authorization to charge all fees,
or only certain fees, set forth in § 1.16 to 1.18 to a deposit
account containing sufficient funds may be filed in an individual
application, either for the entire pendency of the application or with
a particular paper filed. An authorization to charge fees under
§ 1.16 in an international application entering the national stage under
35 U.S.C. 371 will be treated as an authorization to charge fees under
§ 1.492. An authorization to charge fees set forth in § 1.18 to
a deposit account is subject to the provisions of § 1.311(b). An
authorization to charge to a deposit account the fee for a request for
reexamination pursuant to § 1.510 or § 1.913 and any other fees
required in a reexamination proceeding in a patent may also be filed
with the request for reexamination, and an authorization to charge to a
deposit account the fee for a request for supplemental examination
pursuant to § 1.610 and any other fees required in a supplemental
examination proceeding in a patent may also be filed with the request
for supplemental examination. An authorization to charge a fee to a
deposit account will not be considered payment of the fee on the date
the authorization to charge the fee is effective unless sufficient
funds are present in the account to cover the fee.
* * * * *
. 13. Section 1.29 is amended by revising paragraphs (e) and (k)(4) to
read as follows:
§ 1.29 Micro entity status.
* * * * *
(e) Micro entity status is established in an application by filing
a micro entity certification in writing complying with the requirements
of either paragraph (a) or paragraph (d) of this section and signed
either in compliance with § 1.33(b) or in an international
application filed in a Receiving Office other than the United States
Receiving Office by a person authorized to represent the applicant
under § 1.455. Status as a micro entity must be specifically
established in each related, continuing and reissue application in
which status is appropriate and desired. Status as a micro entity in
one application or patent does not affect the status of any other
application or patent, regardless of the relationship of the
applications or patents. The refiling of an application under § 1.53
as a continuation, divisional, or continuation-in-part application
(including a continued prosecution application under § 1.53(d)), or
the filing of a reissue application, requires a new certification of
entitlement to micro entity status for the continuing or reissue
application.
* * * * *
(k) * * *
(4) Any deficiency payment (based on a previous erroneous payment
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1560 |
of a micro entity fee) submitted under this paragraph will be treated
as a notification of a loss of entitlement to micro entity status under
paragraph (i) of this section.
. 14. Section 1.33 is amended by revising paragraph (c) to read as
follows:
§ 1.33 Correspondence respecting patent applications,
reexamination proceedings, and other proceedings.
* * * * *
(c) All notices, official letters, and other communications for the
patent owner or owners in a reexamination or supplemental examination
proceeding will be directed to the correspondence address in the patent
file. Amendments filed in a reexamination proceeding, and other papers
filed in a reexamination or supplemental examination proceeding, on
behalf of the patent owner must be signed by the patent owner, or if
there is more than one owner by all the owners, or by an attorney or
agent of record in the patent file, or by a registered attorney or
agent not of record who acts in a representative capacity under the
provisions of § 1.34. Double correspondence with the patent owner
or owners and the patent owner's attorney or agent, or with more than
one attorney or agent, will not be undertaken.
* * * * *
. 15. Section 1.51 is amended by revising paragraph (a) to read as
follows:
§ 1.51 General requisites of an application.
(a) Applications for patents must be made to the Director of the
United States Patent and Trademark Office. An application transmittal
letter limited to the transmittal of the documents and fees comprising
a patent application under this section may be signed by a juristic
applicant or patent owner.
* * * * *
. 16. Section 1.52 is amended by revising paragraphs (a), (b), and (e) to
read as follows:
§ 1.52 Language, paper, writing, margins, compact disc
specifications.
(a) Papers that are to become a part of the permanent United States
Patent and Trademark Office records in the file of a patent
application, or a reexamination or supplemental examination proceeding.
(1) All papers, other than drawings, that are submitted on paper or by
facsimile transmission, and are to become a part of the permanent
United States Patent and Trademark Office records in the file of a
patent application or reexamination or supplemental examination
proceeding, must be on sheets of paper that are the same size, not
permanently bound together, and:
(i) Flexible, strong, smooth, non-shiny, durable, and white;
(ii) 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 each sheet including 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);
(iii) Written on only one side in portrait orientation;
(iv) Plainly and legibly written either by a typewriter or machine
printer in permanent dark ink or its equivalent; and
(v) Presented in a form having sufficient clarity and contrast
between the paper and the writing thereon to permit the direct
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1561 |
reproduction of readily legible copies in any number by use of
photographic, electrostatic, photo-offset, and microfilming processes
and electronic capture by use of digital imaging and optical character
recognition.
(2) All papers that are submitted on paper or by facsimile
transmission and are to become a part of the permanent records of the
United States Patent and Trademark Office should have no holes in the
sheets as submitted.
(3) The provisions of this paragraph and paragraph (b) of this
section do not apply to the pre-printed information on paper forms
provided by the Office, or to the copy of the patent submitted on paper
in double column format as the specification in a reissue application
or request for reexamination.
(4) See § 1.58 for chemical and mathematical formulae and
tables, and § 1.84 for drawings.
(5) Papers that are submitted electronically to the Office must be
formatted and transmitted in compliance with the Office's electronic
filing system requirements.
(b) The application (specification, including the claims, drawings,
and the inventor's oath or declaration) or reexamination or
supplemental examination proceeding, any amendments to the application
or reexamination proceeding, or any corrections to the application, or
reexamination or supplemental examination proceeding. (1) The
application or proceeding and any amendments or corrections to the
application (including any translation submitted pursuant to paragraph (d)
of this section) or proceeding, except as provided for in § 1.69 and
paragraph (d) of this section, must:
(i) Comply with the requirements of paragraph (a) of this section;
and
(ii) Be in the English language or be accompanied by a translation
of the application and a translation of any corrections or amendments
into the English language together with a statement that the
translation is accurate.
(2) The specification (including the abstract and claims) for other
than reissue applications and reexamination or supplemental examination
proceedings, and any amendments for applications (including reissue
applications) and reexamination proceedings to the specification,
except as provided for in § 1.821 through 1.825, must have:
(i) Lines that are 1 1/2 or double spaced;
(ii) Text written in a nonscript type font (e.g., Arial, Times
Roman, or Courier, preferably a font size of 12) lettering style having
capital letters which should be at least 0.3175 cm. (0.125 inch) high,
but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size
of 6); and
(iii) Only a single column of text.
(3) The claim or claims must commence on a separate physical sheet
or electronic page (§ 1.75(h)).
(4) The abstract must commence on a separate physical sheet or
electronic page or be submitted as the first page of the patent in a
reissue application or reexamination or supplemental examination
proceeding (§ 1.72(b)).
(5) Other than in a reissue application or a reexamination or
supplemental examination proceeding, 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.
(6) Other than in a reissue application or reexamination or
supplemental examination proceeding, the paragraphs of the
specification, other than in the claims or abstract, may be numbered at
the time the application is filed, and should be individually and
consecutively numbered using Arabic numerals, so as to unambiguously
identify each paragraph. The number should consist of at least four
numerals enclosed in square brackets, including leading zeros (e.g.,
[0001]). The numbers and enclosing brackets should appear to the right
of the left margin as the first item in each paragraph, before the
first word of the paragraph, and should be highlighted in bold. A gap,
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1562 |
equivalent to approximately four spaces, should follow the number.
Nontext elements (e.g., tables, mathematical or chemical formulae,
chemical structures, and sequence data) are considered part of the
numbered paragraph around or above the elements, and should not be
independently numbered. If a nontext element extends to the left
margin, it should not be numbered as a separate and independent
paragraph. A list is also treated as part of the paragraph around or
above the list, and should not be independently numbered. Paragraph or
section headers (titles), whether abutting the left margin or centered
on the page, are not considered paragraphs and should not be numbered.
* * * * *
(e) Electronic documents that are to become part of the permanent
United States Patent and Trademark Office records in the file of a
patent application, or reexamination or supplemental examination
proceeding. (1) The following documents may be submitted to the Office
on a compact disc in compliance with this paragraph:
(i) A computer program listing (see § 1.96);
(ii) A "Sequence Listing" (submitted under § 1.821(c)); or
(iii) Any individual table (see § 1.58) if the table is more
than 50 pages in length, or if the total number of pages of all the
tables in an application exceeds 100 pages in length, where a table
page is a page printed on paper in conformance with paragraph (b) of
this section and § 1.58(c).
(2) A compact disc as used in this part means a Compact Disc-Read
Only Memory (CD-ROM) or a Compact Disc-Recordable (CD-R) in compliance
with this paragraph. A CD-ROM is a "read-only" medium on which the
data is pressed into the disc so that it cannot be changed or erased. A
CD-R is a "write once" medium on which once the data is recorded, it
is permanent and cannot be changed or erased.
(3)(i) Each compact disc must conform to the International
Organization for Standardization (ISO) 9660 standard, and the contents
of each compact disc must be in compliance with the American Standard
Code for Information Interchange (ASCII).
(ii) Each compact disc must be enclosed in a hard compact disc case
within an unsealed padded and protective mailing envelope and
accompanied by a transmittal letter on paper in accordance with
paragraph (a) of this section. The transmittal letter must list for
each compact disc the machine format (e.g., IBM-PC, Macintosh), the
operating system compatibility (e.g., MS-DOS, MS-Windows, Macintosh,
Unix), a list of files contained on the compact disc including their
names, sizes in bytes, and dates of creation, plus any other special
information that is necessary to identify, maintain, and interpret
(e.g., tables in landscape orientation should be identified as
landscape orientation or be identified when inquired about) the
information on the compact disc. Compact discs submitted to the Office
will not be returned to the applicant.
(4) Any compact disc must be submitted in duplicate unless it
contains only the "Sequence Listing" in computer readable form
required by § 1.821(e). The compact disc and duplicate copy must be
labeled "Copy 1" and "Copy 2," respectively. The transmittal letter
which accompanies the compact disc must include a statement that the
two compact discs are identical. In the event that the two compact
discs are not identical, the Office will use the compact disc labeled
"Copy 1" for further processing. Any amendment to the information on
a compact disc must be by way of a replacement compact disc in
compliance with this paragraph containing the substitute information,
and must be accompanied by a statement that the replacement compact
disc contains no new matter. The compact disc and copy must be labeled
"COPY 1 REPLACEMENT MM/DD/YYYY" (with the month, day and year of
creation indicated), and "COPY 2 REPLACEMENT MM/DD/YYYY,"
respectively.
(5) The specification must contain an incorporation-by-reference of
the material on the compact disc in a separate paragraph (§ 1.77(b)(5)),
identifying each compact disc by the names of the files contained on
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1563 |
each of the compact discs, their date of creation and their sizes in
bytes. The Office may require applicant to amend the specification to
include in the paper portion any part of the specification previously
submitted on compact disc.
(6) A compact disc must also be labeled with the following
information:
(i) The name of each inventor (if known);
(ii) Title of the invention;
(iii) The docket number, or application number if known, used by
the person filing the application to identify the application;
(iv) A creation date of the compact disc;
(v) If multiple compact discs are submitted, the label shall
indicate their order (e.g., "1 of X"); and
(vi) An indication that the disc is "Copy 1" or "Copy 2" of the
submission. See paragraph (b)(4) of this section.
(7) If a file is unreadable on both copies of the disc, the
unreadable file will be treated as not having been submitted. A file is
unreadable if, for example, it is of a format that does not comply with
the requirements of paragraph (e)(3) of this section, it is corrupted
by a computer virus, or it is written onto a defective compact disc.
* * * * *
. 17. Section 1.53 is amended by revising paragraphs (b), (c), and (f) to
read as follows:
§ 1.53 Application number, filing date, and completion of
application.
* * * * *
(b) Application filing requirements-Nonprovisional application.
The filing date of an application for patent filed under this section,
other than an application for a design patent or a provisional
application under paragraph (c) of this section, is the date on which a
specification, with or without claims, is received in the Office. The
filing date of an application for a design patent filed under this
section, except for a continued prosecution application under paragraph
(d) of this section, is the date on which the specification as
prescribed by 35 U.S.C. 112, including at least one claim, and any
required drawings are received in the Office. No new matter may be
introduced into an application after its filing date. A continuing
application, which may be a continuation, divisional, or continuation-
in-part application, may be filed under the conditions specified in 35
U.S.C. 120, 121, or 365(c) and § 1.78(d) and (e).
(1) A continuation or divisional application that names as
inventors the same or fewer than all of the inventors named in the
prior application may be filed under this paragraph or paragraph (d) of
this section.
(2) A continuation-in-part application (which may disclose and
claim subject matter not disclosed in the prior application) or a
continuation or divisional application naming an inventor not named in
the prior application must be filed under this paragraph.
(c) Application filing requirements-Provisional application. The
filing date of a provisional application is the date on which a
specification, with or without claims, is received in the Office. No
amendment, other than to make the provisional application comply with
the patent statute and all applicable regulations, may be made to the
provisional application after the filing date of the provisional
application.
(1) A provisional application must also include the cover sheet
required by § 1.51(c)(1), which may be an application data sheet
(§ 1.76), or a cover letter identifying the application as a
provisional application. Otherwise, the application will be treated as
an application filed under paragraph (b) of this section.
(2) An application for patent filed under paragraph (b) of this
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1564 |
section may be converted to a provisional application and be accorded
the original filing date of the application filed under paragraph (b)
of this section. The grant of such a request for conversion will not
entitle applicant to a refund of the fees that were properly paid in
the application filed under paragraph (b) of this section. Such a
request for conversion must be accompanied by the processing fee set
forth in § 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of
this section;
(ii) Payment of the issue fee on the application filed under
paragraph (b) of this section; or
(iii) Expiration of twelve months after the filing date of the
application filed under paragraph (b) of this section.
(3) A provisional application filed under paragraph (c) of this
section may be converted to a nonprovisional application filed under
paragraph (b) of this section and accorded the original filing date of
the provisional application. The conversion of a provisional
application to a nonprovisional application will not result in either
the refund of any fee properly paid in the provisional application or
the application of any such fee to the filing fee, or any other fee,
for the nonprovisional application. Conversion of a provisional
application to a nonprovisional application under this paragraph will
result in the term of any patent to issue from the application being
measured from at least the filing date of the provisional application
for which conversion is requested. Thus, applicants should consider
avoiding this adverse patent term impact by filing a nonprovisional
application claiming the benefit of the provisional application under
35 U.S.C. 119(e), rather than converting the provisional application
into a nonprovisional application pursuant to this paragraph. A request
to convert a provisional application to a nonprovisional application
must be accompanied by the fee set forth in § 1.17(i) and an
amendment including at least one claim as prescribed by 35 U.S.C.
112(b), unless the provisional application under paragraph (c) of this
section otherwise contains at least one claim as prescribed by 35
U.S.C. 112(b). The nonprovisional application resulting from conversion
of a provisional application must also include the filing fee, search
fee, and examination fee for a nonprovisional application, and the
surcharge required by § 1.16(f) if either the basic filing fee for
a nonprovisional application or the inventor's oath or declaration was
not present on the filing date accorded the resulting nonprovisional
application (i.e., the filing date of the original provisional
application). A request to convert a provisional application to a
nonprovisional application must also be filed prior to the earliest of:
(i) Abandonment of the provisional application filed under
paragraph (c) of this section; or
(ii) Expiration of twelve months after the filing date of the
provisional application filed under paragraph (c) of this section.
(4) A provisional application is not entitled to the right of
priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit
of an earlier filing date under 35 U.S.C. 120, 121, or 365(c) or §
1.78 of any other application. No claim for priority under 35 U.S.C.
119(e) or § 1.78(a) may be made in a design application based on a
provisional application. The requirements of § 1.821 through
1.825 regarding application disclosures containing nucleotide and/or
amino acid sequences are not mandatory for provisional applications.
* * * * *
(f) Completion of application subsequent to filing-Nonprovisional
(including continued prosecution or reissue) application. (1) If an
application which has been accorded a filing date pursuant to paragraph
(b) or (d) of this section does not include the basic filing fee,
search fee, or examination fee, or if an application which has been
accorded a filing date pursuant to paragraph (b) of this section does
not include at least one claim or the inventor's oath or declaration
(§ 1.63, 1.64, 1.162, or 1.175), and the applicant has
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1565 |
provided a correspondence address (§ 1.33(a)), the applicant will
be notified and given a period of time within which to file a claim or
claims, pay the basic filing fee, search fee, and examination fee, and
pay the surcharge if required by § 1.16(f), to avoid abandonment.
(2) If an application which has been accorded a filing date
pursuant to paragraph (b) of this section does not include the basic
filing fee, search fee, examination fee, at least one claim, or the
inventor's oath or declaration, and the applicant has not provided a
correspondence address (§ 1.33(a)), the applicant has three months
from the filing date of the application within which to file a claim or
claims, pay the basic filing fee, search fee, and examination fee, and
pay the surcharge required by § 1.16(f), to avoid abandonment.
(3) The inventor's oath or declaration in an application under
§ 1.53(b) must also be filed within the period specified in
paragraph (f)(1) or (f)(2) of this section, except that the filing of
the inventor's oath or declaration may be postponed until the
application is otherwise in condition for allowance under the
conditions specified in paragraphs (f)(3)(i) and (f)(3)(ii) of this
section.
(i) The application must be an original (non-reissue) application
that contains an application data sheet in accordance with § 1.76
identifying:
(A) Each inventor by his or her legal name;
(B) A mailing address where the inventor customarily receives mail,
and residence, if an inventor lives at a location which is different
from where the inventor customarily receives mail, for each inventor.
(ii) The applicant must file each required oath or declaration in
compliance with § 1.63, or substitute statement in compliance with
§ 1.64, no later than the date on which the issue fee for the
patent is paid. If the applicant is notified in a notice of
allowability that an oath or declaration in compliance with § 1.63,
or substitute statement in compliance with § 1.64, executed by or
with respect to each named inventor has not been filed, the applicant
must file each required oath or declaration in compliance with § 1.63,
or substitute statement in compliance with § 1.64, no later than the
date on which the issue fee is paid to avoid abandonment. This
time period is not extendable under § 1.136 (see § 1.136(c)).
The Office may dispense with the notice provided for in paragraph
(f)(1) of this section if each required oath or declaration in
compliance with § 1.63, or substitute statement in compliance with
§ 1.64, has been filed before the application is in condition for
allowance.
(4) If the excess claims fees required by § 1.16(h) and (i) and
multiple dependent claim fee required by § 1.16(j) are not paid on
filing or on later presentation of the claims for which the excess
claims or multiple dependent claim fees are due, the fees required by
§ 1.16(h), (i), and (j) must be paid or the claims canceled by
amendment prior to the expiration of the time period set for reply by
the Office in any notice of fee deficiency. If the application size fee
required by § 1.16(s) (if any) is not paid on filing or on later
presentation of the amendment necessitating a fee or additional fee
under § 1.16(s), the fee required by § 1.16(s) must be paid
prior to the expiration of the time period set for reply by the Office
in any notice of fee deficiency in order to avoid abandonment.
(5) This paragraph applies to continuation or divisional
applications under paragraphs (b) or (d) of this section and to
continuation-in-part applications under paragraph (b) of this section.
See § 1.63(d) concerning the submission of a copy of the inventor's
oath or declaration from the prior application for a continuing
application under paragraph (b) of this section.
(6) If applicant does not pay the basic filing fee during the
pendency of the application, the Office may dispose of the application.
* * * * *
. 18. Section 1.54 is amended by revising paragraph (b) to read as
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1566 |
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, unless the application is an application
filed under § 1.53(d). A letter limited to a request for a filing
receipt may be signed by a juristic applicant or patent owner.
. 19. Section 1.55 is amended by revising paragraphs (b) through (f) and
(h) to read as follows:
§ 1.55 Claim for foreign priority.
* * * * *
(b) Time for filing subsequent application. The nonprovisional
application must be filed not later than twelve months (six months in
the case of a design application) after the date on which the foreign
application was filed, or be entitled to claim the benefit under 35
U.S.C. 120, 121, or 365(c) of an application that was filed not later
than twelve months (six months in the case of a design application)
after the date on which the foreign application was filed, except as
provided in paragraph (c) of this section. The twelve-month period is
subject to 35 U.S.C. 21(b) (and § 1.7(a)) and PCT Rule 80.5, and
the six-month period is subject to 35 U.S.C. 21(b) (and § 1.7(a)).
(c) Delayed filing of subsequent application. If the subsequent
application has a filing date which is after the expiration of the
period set forth in paragraph (b) of this section, but within two
months from the expiration of the period set forth in paragraph (b) of
this section, the right of priority in the subsequent application may
be restored under PCT Rule 26bis.3 for an international application, or
upon petition pursuant to this paragraph, if the delay in filing the
subsequent application within the period set forth in paragraph (b) of
this section was unintentional. A petition to restore the right of
priority under this paragraph filed in the subsequent application must
include:
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f),
or 365(a) or (b) in an application data sheet (§ 1.76(b)(6)),
identifying the foreign application to which priority is claimed, by
specifying the application number, country (or intellectual property
authority), day, month, and year of its filing, unless previously
submitted;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the delay in filing the subsequent application
within the period set forth in paragraph (b) of this section was
unintentional. The Director may require additional information where
there is a question whether the delay was unintentional.
(d) Time for filing priority claim-(1) Application under 35 U.S.C.
111(a). The claim for priority must be filed within the later of four
months from the actual filing date of the application or sixteen months
from the filing date of the prior foreign application in an original
application filed under 35 U.S.C. 111(a), except as provided in
paragraph (e) of this section. The claim for priority must be presented
in an application data sheet (§ 1.76(b)(6)), and must identify the
foreign application to which priority is claimed, by specifying the
application number, country (or intellectual property authority), day,
month, and year of its filing. The time period in this paragraph does
not apply in a design application.
(2) Application under 35 U.S.C. 371. The claim for priority must be
made within the time limit set forth in the PCT and the Regulations
under the PCT in an international application entering the national
stage under 35 U.S.C. 371, except as provided in paragraph (e) of this
section.
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1567 |
(e) Delayed priority claim. Unless such claim is accepted in
accordance with the provisions of this paragraph, any claim for
priority under 35 U.S.C. 119(a) through (d) or (f), or 365(a) or (b)
not presented in the manner required by paragraph (d) of this section
within the time period provided by paragraph (d) of this section is
considered to have been waived. If a claim for priority is presented
after the time period provided by paragraph (d) of this section, the
claim may be accepted if the priority claim was unintentionally
delayed. A petition to accept a delayed claim for priority under 35
U.S.C. 119(a) through (d) or (f), or 365(a) or (b) must be accompanied
by:
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f),
or 365(a) or (b) in an application data sheet (§ 1.76(b)(6)),
identifying the foreign application to which priority is claimed, by
specifying the application number, country (or intellectual property
authority), day, month, and year of its filing, unless previously
submitted;
(2) A certified copy of the foreign application if required by
paragraph (f) of this section, unless previously submitted;
(3) The petition fee as set forth in § 1.17(m); and
(4) A statement that the entire delay between the date the priority
claim was due under paragraph (d) of this section and the date the
priority claim was filed was unintentional. The Director may require
additional information where there is a question whether the delay was
unintentional.
(f) Time for filing certified copy of foreign application-(1)
Application under 35 U.S.C. 111(a). A certified copy of the foreign
application must be filed within the later of four months from the
actual filing date of the application or sixteen months from the filing
date of the prior foreign application in an original application filed
under 35 U.S.C. 111(a), except as provided in paragraphs (h) and (i) of
this section. The time period in this paragraph does not apply in a
design application.
(2) Application under 35 U.S.C. 371. A certified copy of the
foreign application must be filed within the time limit set forth in
the PCT and the Regulations under the PCT in an international
application entering the national stage under 35 U.S.C. 371. If a
certified copy of the foreign application is not filed during the
international stage, a certified copy of the foreign application must
be filed within four months from the date of entry into the national
stage as set forth in § 1.491 or sixteen months from the filing
date of the prior-filed foreign application, except as provided in
paragraphs (h) and (i) of this section.
(3) If a certified copy of the foreign application is not filed
within the time period specified paragraph (f)(1) of this section in an
application under 35 U.S.C. 111(a) or within the period specified in
paragraph (f)(2) of this section in an international application
entering the national stage under 35 U.S.C. 371, and the exceptions in
paragraphs (h) and (i) of this section are not applicable, the
certified copy of the foreign application must be accompanied by a
petition including a showing of good and sufficient cause for the delay
and the petition fee set forth in § 1.17(g).
* * * * *
(h) Foreign intellectual property office participating in a
priority document exchange agreement. The requirement in paragraphs (f)
and (g) of this section for a certified copy of the foreign application
to be filed within the time limit set forth therein will be considered
satisfied if:
(1) The foreign application was filed in a foreign intellectual
property office participating with the Office in a bilateral or
multilateral priority document exchange agreement (participating
foreign intellectual property office), or a copy of the foreign
application was filed in an application subsequently filed in a
participating foreign intellectual property office that permits the
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1568 |
Office to obtain such a copy;
(2) The claim for priority is presented in an application data
sheet (§ 1.76(b)(6)), identifying the foreign application for which
priority is claimed, by specifying the application number, country (or
intellectual property authority), day, month, and year of its filing,
and the applicant provides the information necessary for the
participating foreign intellectual property office to provide the
Office with access to the foreign application;
(3) The copy of the foreign application is received by the Office
from the participating foreign intellectual property office, or a
certified copy of the foreign application is filed, within the period
specified in paragraph (g)(1) of this section; and
(4) The applicant files a request in a separate document that the
Office obtain a copy of the foreign application from a participating
intellectual property office that permits the Office to obtain such a
copy if the foreign application was not filed in a participating
foreign intellectual property office but a copy of the foreign
application was filed in an application subsequently filed in a
participating foreign intellectual property office that permits the
Office to obtain such a copy. The request must identify the
participating intellectual property office and the subsequent
application by the application number, day, month, and year of its
filing in which a copy of the foreign application was filed. The
request must be filed within the later of sixteen months from the
filing date of the prior foreign application or four months from the
actual filing date of an application under 35 U.S.C. 111(a), within
four months from the later of the date of commencement (§ 1.491(a))
or the date of the initial submission under 35 U.S.C. 371 in an
application entering the national stage under 35 U.S.C. 371, or with a
petition under paragraph (e) of this section.
* * * * *
. 20. Section 1.57 is revised to read as follows:
§ 1.57 Incorporation by reference.
(a) Subject to the conditions and requirements of this paragraph, a
reference made in the English language in an application data sheet in
accordance with § 1.76 upon the filing of an application under 35
U.S.C. 111(a) to a previously filed application, indicating that the
specification and any drawings of the application under 35 U.S.C.
111(a) are replaced by the reference to the previously filed
application, and specifying the previously filed application by
application number, filing date, and the intellectual property
authority or country in which the previously filed application was
filed, shall constitute the specification and any drawings of the
application under 35 U.S.C. 111(a) for purposes of a filing date under
§ 1.53(b).
(1) If the applicant has provided a correspondence address
(§ 1.33(a)), the applicant will be notified and given a period of time
within which to file a copy of the specification and drawings from the
previously filed application, an English language translation of the
previously filed application, and the fee required by § 1.17(i) if
it is in a language other than English, and pay the surcharge required
by § 1.16(f), to avoid abandonment. Such a notice may be combined
with a notice under § 1.53(f).
(2) If the applicant has not provided a correspondence address
(§ 1.33(a)), the applicant has three months from the filing date of
the application to file a copy of the specification and drawings from
the previously filed application, an English language translation of
the previously filed application, and the fee required by § 1.17(i)
if it is in a language other than English, and pay the surcharge
required by § 1.16(f), to avoid abandonment.
(3) An application abandoned under paragraph (a)(1) or (a)(2) of
this section shall be treated as having never been filed, unless:
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1569 |
(i) The application is revived under § 1.137; and
(ii) A copy of the specification and any drawings of the previously
filed application are filed in the Office.
(4) A certified copy of the previously filed application must be
filed in the Office, unless the previously filed application is an
application filed under 35 U.S.C. 111 or 363, or the previously filed
application is a foreign priority application and the conditions set
forth in § 1.55(h) are satisfied with respect to such foreign
priority application. The certified copy of the previously filed
application, if required by this paragraph, must be filed within the
later of four months from the filing date of the application or sixteen
months from the filing date of the previously filed application, or be
accompanied by a petition including a showing of good and sufficient
cause for the delay and the petition fee set forth in § 1.17(g).
(b) Subject to the conditions and requirements of this paragraph,
if all or a portion of the specification or drawing(s) is inadvertently
omitted from an application, but the application contains a claim under
§ 1.55 for priority of a prior-filed foreign application, or a
claim under § 1.78 for the benefit of a prior-filed provisional,
nonprovisional, or international application, that was present on the
filing date of the application, and the inadvertently omitted portion
of the specification or drawing(s) is completely contained in the
prior-filed application, the claim under § 1.55 or § 1.78 shall
also be considered an incorporation by reference of the prior-filed
application as to the inadvertently omitted portion of the
specification or drawing(s).
(1) The application must be amended to include the inadvertently
omitted portion of the specification or drawing(s) within any time
period set by the Office, but in no case later than the close of
prosecution as defined by § 1.114(b), or abandonment of the
application, whichever occurs earlier. The applicant is also required
to:
(i) Supply a copy of the prior-filed application, except where the
prior-filed application is an application filed under 35 U.S.C. 111;
(ii) Supply an English language translation of any prior-filed
application that is in a language other than English; and
(iii) Identify where the inadvertently omitted portion of the
specification or drawings can be found in the prior-filed application.
(2) Any amendment to an international application pursuant to
paragraph (b)(1) of this section shall be effective only as to the
United States, and shall have no effect on the international filing
date of the application. In addition, no request under this section to
add the inadvertently omitted portion of the specification or drawings
in an international application designating the United States will be
acted upon by the Office prior to the entry and commencement of the
national stage (§ 1.491) or the filing of an application under 35
U.S.C. 111(a) which claims benefit of the international application.
Any omitted portion of the international application which applicant
desires to be effective as to all designated States, subject to PCT
Rule 20.8(b), must be submitted in accordance with PCT Rule 20.
(3) If an application is not otherwise entitled to a filing date
under § 1.53(b), the amendment must be by way of a petition
pursuant to § 1.53(e) accompanied by the fee set forth in §
1.17(f).
(c) Except as provided in paragraph (a) or (b) of this section, an
incorporation by reference must be set forth in the specification and
must:
(1) Express a clear intent to incorporate by reference by using the
root words "incorporat(e)" and "reference" (e.g., "incorporate by
reference"); and
(2) Clearly identify the referenced patent, application, or
publication.
(d) "Essential material" may be incorporated by reference, but
only by way of an incorporation by reference to a U.S. patent or U.S.
patent application publication, which patent or patent application
publication does not itself incorporate such essential material by
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1570 |
reference. "Essential material" is material that is necessary to:
(1) Provide a written description of the claimed invention, and of
the manner and process of making and using it, in such full, clear,
concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make
and use the same, and set forth the best mode contemplated by the
inventor of carrying out the invention as required by 35 U.S.C. 112(a);
(2) Describe the claimed invention in terms that particularly point
out and distinctly claim the invention as required by 35 U.S.C. 112(b);
or
(3) Describe the structure, material, or acts that correspond to a
claimed means or step for performing a specified function as required
by 35 U.S.C. 112(f).
(e) Other material ("Nonessential material") may be incorporated
by reference to U.S. patents, U.S. patent application publications,
foreign patents, foreign published applications, prior and concurrently
filed commonly owned U.S. applications, or non-patent publications. An
incorporation by reference by hyperlink or other form of browser
executable code is not permitted.
(f) The examiner may require the applicant to supply a copy of the
material incorporated by reference. If the Office requires the
applicant to supply a copy of material incorporated by reference, the
material must be accompanied by a statement that the copy supplied
consists of the same material incorporated by reference in the
referencing application.
(g) Any insertion of material incorporated by reference into the
specification or drawings of an application must be by way of an
amendment to the specification or drawings. Such an amendment must be
accompanied by a statement that the material being inserted is the
material previously incorporated by reference and that the amendment
contains no new matter.
(h) An incorporation of material by reference that does not comply
with paragraphs (c), (d), or (e) of this section is not effective to
incorporate such material unless corrected within any time period set
by the Office, but in no case later than the close of prosecution as
defined by § 1.114(b), or abandonment of the application, whichever
occurs earlier. In addition:
(1) A correction to comply with paragraph (c)(1) of this section is
permitted only if the application as filed clearly conveys an intent to
incorporate the material by reference. A mere reference to material
does not convey an intent to incorporate the material by reference.
(2) A correction to comply with paragraph (c)(2) of this section is
only permitted for material that was sufficiently described to uniquely
identify the document.
(i) An application transmittal letter limited to the transmittal of
a copy of the specification and drawings from a previously filed
application submitted under paragraph (a) or (b) of this section may be
signed by a juristic applicant or patent owner.
. 21. Section 1.58 is amended by revising paragraph (a) to read as
follows:
§ 1.58 Chemical and mathematical formulae and tables.
(a) The specification, including the claims, may contain chemical
and mathematical formulae, but shall not contain drawings or flow
diagrams. The description portion of the specification may contain
tables, but the same tables should not be included in both the drawings
and description portion of the specification. Claims may contain tables
either if necessary to conform to 35 U.S.C. 112 or if otherwise found to
be desirable.
* * * * *
. 22. Section 1.72 is amended by revising paragraph (b) to read as
follows:
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1571 |
§ 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" or "Abstract of the
Disclosure." The sheet or sheets presenting the abstract may not
include other parts of the application or other material. The abstract
must be as concise as the disclosure permits, preferably not exceeding
150 words in length. The purpose of the abstract is to enable the
Office and the public generally to determine quickly from a cursory
inspection the nature and gist of the technical disclosure.
. 23. Section 1.76 is amended by revising paragraph (b)(3) and (d)(2) and
adding new paragraphs (f) and (g) to read as follows:
§ 1.76 Application data sheet.
* * * * *
(b) * * *
(3) Application information. This information includes the title of
the invention, the total number of drawing sheets, a suggested drawing
figure for publication (in a nonprovisional application), any docket
number assigned to the application, the type of application (e.g.,
utility, plant, design, reissue, provisional), whether the application
discloses any significant part of the subject matter of an application
under a secrecy order pursuant to § 5.2 of this chapter (see §
5.2(c)), and, for plant applications, the Latin name of the genus and
species of the plant claimed, as well as the variety denomination. When
information concerning the previously filed application is required
under § 1.57(a), application information also includes the
reference to the previously filed application, indicating that the
specification and any drawings of the application are replaced by the
reference to the previously filed application, and specifying the
previously filed application by application number, filing date, and
the intellectual property authority or country in which the previously
filed application was filed.
* * * * *
(d) * * *
(2) The information in the application data sheet will govern when
inconsistent with the information supplied at the same time by a
designation of correspondence address or the inventor's oath or
declaration. The information in the application data sheet will govern
when inconsistent with the information supplied at any time in a Patent
Cooperation Treaty Request Form, Patent Law Treaty Model International
Request Form, Patent Law Treaty Model International Request for
Recordation of Change in Name or Address Form, or Patent Law Treaty
Model International Request for Recordation of Change in Applicant or
Owner Form.
* * * * *
(f) Patent Law Treaty Model International Forms. The requirement in
§ 1.55 or § 1.78 for the presentation of a priority or benefit
claim under 35 U.S.C. 119, 120, 121, or 365 in an application data
sheet will be satisfied by the presentation of such priority or benefit
claim in the Patent Law Treaty Model International Request Form, and
the requirement in § 1.57(a) for a reference to the previously
filed application in an application data sheet will be satisfied by the
presentation of such reference to the previously filed application in
the Patent Law Treaty Model International Request Form. The requirement
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1572 |
in § 1.46 for the presentation of the name of the applicant under
35 U.S.C. 118 in an application data sheet will be satisfied by the
presentation of the name of the applicant in the Patent Law Treaty
Model International Request Form, Patent Law Treaty Model International
Request for Recordation of Change in Name or Address Form, or Patent
Law Treaty Model International Request for Recordation of Change in
Applicant or Owner Form, as applicable.
(g) Patent Cooperation Treaty Request Form. The requirement in
§ 1.78 for the presentation of a benefit claim under 35 U.S.C. 119,
120, 121, or 365 in an application data sheet will be satisfied in a
national stage application under 35 U.S.C. 371 by the presentation of
such benefit claim in the Patent Cooperation Treaty Request Form
contained in the international application or the presence of such
benefit claim on the front page of the publication of the international
application under PCT Article 21(2). The requirement in § 1.55 or
§ 1.78 for the presentation of a priority or benefit claim under 35
U.S.C. 119, 120, 121, or 365 in an application data sheet and the
requirement in § 1.46 for the presentation of the name of the
applicant under 35 U.S.C. 118 in an application data sheet will be
satisfied in an application under 35 U.S.C. 111 by the presentation of
such priority or benefit claim and presentation of the name of the
applicant in a Patent Cooperation Treaty Request Form. If a Patent
Cooperation Treaty Request Form is submitted in an application under 35
U.S.C. 111, the Patent Cooperation Treaty Request Form must be
accompanied by a clear indication that treatment of the application as
an application under 35 U.S.C. 111 is desired.
. 24. Section 1.78 is revised to read as follows:
§ 1.78 Claiming benefit of earlier filing date and cross-
references to other applications.
(a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed
provisional application. An applicant in a nonprovisional application,
other than for a design patent, or an international application
designating the United States of America may claim the benefit of one
or more prior-filed provisional applications under the conditions set
forth in 35 U.S.C. 119(e) and this section.
(1) Except as provided in paragraph (b) of this section, the
nonprovisional application or international application designating the
United States of America must be filed not later than twelve months
after the date on which the provisional application was filed, or be
entitled to claim the benefit under 35 U.S.C. 120, 121, or 365(c) of an
application that was filed not later than twelve months after the date
on which the provisional application was filed. This twelve-month
period is subject to 35 U.S.C. 21(b) (and § 1.7(a)) and PCT Rule
80.5.
(2) Each prior-filed provisional application must name the inventor
or a joint inventor named in the later-filed application as the
inventor or a joint inventor. In addition, each prior-filed provisional
application must be entitled to a filing date as set forth in § 1.53(c),
and the basic filing fee set forth in § 1.16(d) must have been paid for
such provisional application within the time period set forth in § 1.53(g).
(3) Any nonprovisional application or international application
designating the United States of America that claims the benefit of one
or more prior-filed provisional applications must contain, or be
amended to contain, a reference to each such prior-filed provisional
application, identifying it by the provisional application number
(consisting of series code and serial number). If the later-filed
application is a nonprovisional application, the reference required by this
paragraph must be included in an application data sheet (§ 1.76(b)(5)).
(4) The reference required by paragraph (a)(3) of this section must
be submitted during the pendency of the later-filed application. If the
later-filed application is an application filed under 35 U.S.C. 111(a),
this reference must also be submitted within the later of four months
from the actual filing date of the later-filed application or sixteen
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1573 |
months from the filing date of the prior-filed provisional application.
If the later-filed application is a national stage application under 35
U.S.C. 371, this reference must also be submitted within the later of
four months from the date on which the national stage commenced under
35 U.S.C. 371(b) or (f), four months from the date of the initial
submission under 35 U.S.C. 371 to enter the national stage, or sixteen
months from the filing date of the prior-filed provisional application.
Except as provided in paragraph (c) of this section, failure to timely
submit the reference is considered a waiver of any benefit under 35
U.S.C. 119(e) of the prior-filed provisional application.
(5) If the prior-filed provisional application was filed in a
language other than English and both an English-language translation of
the prior-filed provisional application and a statement that the
translation is accurate were not previously filed in the prior-filed
provisional application, the applicant will be notified and given a
period of time within which to file, in the prior-filed provisional
application, the translation and the statement. If the notice is mailed
in a pending nonprovisional application, a timely reply to such a
notice must include the filing in the nonprovisional application of
either a confirmation that the translation and statement were filed in
the provisional application, or an application data sheet eliminating
the reference under paragraph (a)(3) of this section to the prior-filed
provisional application, or the nonprovisional application will be
abandoned. The translation and statement may be filed in the
provisional application, even if the provisional application has become
abandoned.
(6) If a nonprovisional application filed on or after March 16,
2013, claims the benefit of the filing date of a provisional
application filed prior to March 16, 2013, and also contains, or
contained at any time, a claim to a claimed invention that has an
effective filing date on or after March 16, 2013, the applicant must
provide a statement to that effect within the later of four months from
the actual filing date of the nonprovisional application, four months
from the date of entry into the national stage as set forth in
§ 1.491 in an international application, sixteen months from the filing
date of the prior-filed provisional application, or the date that a
first claim to a claimed invention that has an effective filing date on
or after March 16, 2013, is presented in the nonprovisional
application. An applicant is not required to provide such a statement
if the applicant reasonably believes on the basis of information
already known to the individuals designated in § 1.56(c) that the
nonprovisional application does not, and did not at any time, contain a
claim to a claimed invention that has an effective filing date on or
after March 16, 2013.
(b) Delayed filing of the nonprovisional application or
international application designating the United States of America. If
the nonprovisional application or international application designating
the United States of America has a filing date which is after the
expiration of the twelve-month period set forth in paragraph (a)(1) of
this section but within two months from the expiration of the period
set forth in paragraph (a)(1) of this section, the benefit of the
provisional application may be restored under PCT Rule 26bis.3 for an
international application, or upon petition pursuant to this paragraph,
if the delay in filing the nonprovisional application or international
application designating the United States of America within the period
set forth in paragraph (a)(1) of this section was unintentional.
(1) A petition to restore the benefit of the provisional
application under this paragraph filed in the nonprovisional
application or international application designating the United States
of America must include:
(i) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3)
of this section to the prior-filed provisional application, unless
previously submitted;
(ii) The petition fee as set forth in § 1.17(m); and
(iii) A statement that the delay in filing the nonprovisional
application or international application designating the United States
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1574 |
of America within the twelve-month period set forth in paragraph (a)(1)
of this section was unintentional. The Director may require additional
information where there is a question whether the delay was
unintentional.
(2) The restoration of the right of priority under PCT Rule 26bis.3
to a provisional application does not affect the requirement to include
the reference required by paragraph (a)(3) of this section to the
provisional application in a national stage application under 35 U.S.C.
371 within the time period provided by paragraph (a)(4) of this section
to avoid the benefit claim being considered waived.
(c) Delayed claims under 35 U.S.C. 119(e) for the benefit of a
prior-filed provisional application. If the reference required by 35
U.S.C. 119(e) and paragraph (a)(3) of this section is presented in an
application after the time period provided by paragraph (a)(4) of this
section, the claim under 35 U.S.C. 119(e) for the benefit of a prior-
filed provisional application may be accepted if the reference
identifying the prior-filed application by provisional application
number was unintentionally delayed. A petition to accept an
unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of
a prior-filed provisional application must be accompanied by:
(1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3)
of this section to the prior-filed provisional application, unless
previously submitted;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the entire delay between the date the benefit
claim was due under paragraph (a)(4) of this section and the date the
benefit claim was filed was unintentional. The Director may require
additional information where there is a question whether the delay was
unintentional.
(d) Claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a
prior-filed nonprovisional or international application. An applicant
in a nonprovisional application (including an international application
entering the national stage under 35 U.S.C. 371) or an international
application designating the United States of America may claim the
benefit of one or more prior-filed copending nonprovisional
applications or international applications designating the United
States of America under the conditions set forth in 35 U.S.C. 120, 121,
or 365(c) and this section.
(1) Each prior-filed application must name the inventor or a joint
inventor named in the later-filed application as the inventor or a
joint inventor. In addition, each prior-filed application must either
be:
(i) An international application entitled to a filing date in
accordance with PCT Article 11 and designating the United States of
America; or
(ii) A nonprovisional application under 35 U.S.C. 111(a) that is
entitled to a filing date as set forth in § 1.53(b) or §
1.53(d) for which the basic filing fee set forth in § 1.16 has been
paid within the pendency of the application.
(2) Except for a continued prosecution application filed under
§ 1.53(d), any nonprovisional application, or international
application designating the United States of America, that claims the
benefit of one or more prior-filed nonprovisional applications or
international applications designating the United States of America
must contain or be amended to contain a reference to each such prior-
filed application, identifying it by application number (consisting of
the series code and serial number) or international application number
and international filing date. If the later-filed application is a
nonprovisional application, the reference required by this paragraph
must be included in an application data sheet (§ 1.76(b)(5)). The
reference also must identify the relationship of the applications,
namely, whether the later-filed application is a continuation,
divisional, or continuation-in-part of the prior-filed nonprovisional
application or international application.
(3) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of
this section must be submitted during the pendency of the later-filed
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1575 |
application. If the later-filed application is an application filed
under 35 U.S.C. 111(a), this reference must also be submitted within
the later of four months from the actual filing date of the later-filed
application or sixteen months from the filing date of the prior-filed
application. If the later-filed application is a nonprovisional
application entering the national stage from an international
application under 35 U.S.C. 371, this reference must also be submitted
within the later of four months from the date on which the national
stage commenced under 35 U.S.C. 371(b) or (f) in the later-filed
international application, four months from the date of the initial
submission under 35 U.S.C. 371 to enter the national stage, or sixteen
months from the filing date of the prior-filed application. Except as
provided in paragraph (e) of this section, failure to timely submit the
reference required by 35 U.S.C. 120 and paragraph (d)(2) of this
section is considered a waiver of any benefit under 35 U.S.C. 120, 121,
or 365(c) to the prior-filed application. The time periods in this
paragraph do not apply in a design application.
(4) The request for a continued prosecution application under § 1.53(d)
is the specific reference required by 35 U.S.C. 120 to the prior-filed
application. The identification of an application by application number
under this section is the identification of every application assigned
that application number necessary for a specific reference required by 35
U.S.C. 120 to every such application assigned that application number.
(5) Cross-references to other related applications may be made when
appropriate (see § 1.14), but cross-references to applications for
which a benefit is not claimed under title 35, United States Code, must
not be included in an application data sheet (§ 1.76(b)(5)).
(6) If a nonprovisional application filed on or after March 16,
2013, claims the benefit of the filing date of a nonprovisional
application or an international application designating the United
States of America filed prior to March 16, 2013, and also contains, or
contained at any time, a claim to a claimed invention that has an
effective filing date on or after March 16, 2013, the applicant must
provide a statement to that effect within the later of four months from
the actual filing date of the later-filed application, four months from
the date of entry into the national stage as set forth in § 1.491
in an international application, sixteen months from the filing date of
the prior-filed application, or the date that a first claim to a
claimed invention that has an effective filing date on or after March
16, 2013, is presented in the later-filed application. An applicant is
not required to provide such a statement if either:
(i) The application claims the benefit of a nonprovisional
application in which a statement under § 1.55(j), paragraph (a)(6)
of this section, or this paragraph that the application contains, or
contained at any time, a claim to a claimed invention that has an
effective filing date on or after March 16, 2013 has been filed; or
(ii) The applicant reasonably believes on the basis of information
already known to the individuals designated in § 1.56(c) that the
later filed application does not, and did not at any time, contain a
claim to a claimed invention that has an effective filing date on or
after March 16, 2013.
(e) Delayed claims under 35 U.S.C. 120, 121, or 365(c) for the
benefit of a prior-filed nonprovisional application or international
application. If the reference required by 35 U.S.C. 120 and paragraph
(d)(2) of this section is presented after the time period provided by
paragraph (d)(3) of this section, the claim under 35 U.S.C. 120, 121,
or 365(c) for the benefit of a prior-filed copending nonprovisional
application or international application designating the United States
of America may be accepted if the reference identifying the prior-filed
application by application number or international application number
and international filing date was unintentionally delayed. A petition
to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or
365(c) for the benefit of a prior-filed application must be accompanied
by:
(1) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of
this section to the prior-filed application, unless previously
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1576 |
submitted;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the entire delay between the date the benefit
claim was due under paragraph (d)(3) of this section and the date the
benefit claim was filed was unintentional. The Director may require
additional information where there is a question whether the delay was
unintentional.
(f) Applications containing patentably indistinct claims. Where two
or more applications filed by the same applicant contain patentably
indistinct claims, elimination of such claims from all but one
application may be required in the absence of good and sufficient
reason for their retention during pendency in more than one
application.
(g) Applications or patents under reexamination naming different
inventors and containing patentably indistinct claims. If an
application or a patent under reexamination and at least one other
application naming different inventors are owned by the same person and
contain patentably indistinct claims, and there is no statement of
record indicating that the claimed inventions were commonly owned or
subject to an obligation of assignment to the same person on the
effective filing date (as defined in § 1.109), or on the date of
the invention, as applicable, of the later claimed invention, the
Office may require the applicant to state whether the claimed
inventions were commonly owned or subject to an obligation of
assignment to the same person on such date. Even if the claimed
inventions were commonly owned, or subject to an obligation of
assignment to the same person on the effective filing date (as defined
in § 1.109), or on the date of the invention, as applicable, of the
later claimed invention, the patentably indistinct claims may be
rejected under the doctrine of double patenting in view of such
commonly owned or assigned applications or patents under reexamination.
(h) Time periods not extendable. The time periods set forth in this
section are not extendable.
. 25. Section 1.81 is amended by revising paragraph (a) to read as
follows:
§ 1.81 Drawings required in patent application.
(a) The applicant for a patent is required to furnish a drawing of
the invention where necessary for the understanding of the subject matter
sought to be patented. Since corrections are the responsibility of the
applicant, the original drawing(s) should be retained by the applicant
for any necessary future correction.
* * * * *
. 26. Section 1.83 is amended by revising paragraph (a) to read as
follows:
§ 1.83 Content of drawing.
(a) The drawing in a nonprovisional application must show every
feature of the invention specified in the claims. However, conventional
features disclosed in the description and claims, where their detailed
illustration is not essential for a proper understanding of the
invention, should be illustrated in the drawing in the form of a
graphical drawing symbol or a labeled representation (e.g., a labeled
rectangular box). In addition, tables that are included in the
specification and sequences that are included in sequence listings
should not be duplicated in the drawings.
* * * * *
. 27. Section 1.85 is amended by revising paragraph (c) to read as
follows:
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1577 |
§ 1.85 Corrections to drawings.
* * * * *
(c) If a corrected drawing is required or if a drawing does not
comply with § 1.84 at or after the time an application is allowed,
the Office may notify the applicant in a notice of allowability and set
a three-month period of time from the mailing date of the notice of
allowability within which the applicant must file a corrected drawing
in compliance with § 1.84 to avoid abandonment. This time period is
not extendable under § 1.136 (see § 1.136(c)).
. 28. Section 1.131 is amended by revising paragraph (a) to read as
follows:
§ 1.131 Affidavit or declaration of prior invention or to
disqualify commonly owned patent or published application as prior art.
(a) When any claim of an application or a patent under
reexamination is rejected, the applicant or patent owner may submit an
appropriate oath or declaration to establish invention of the subject
matter of the rejected claim prior to the effective date of the
reference or activity on which the rejection is based. The effective
date of a U.S. patent, U.S. patent application publication, or
international application publication under PCT Article 21(2) is the
earlier of its publication date or the date that it is effective as a
reference under 35 U.S.C. 102(e) as in effect on March 15, 2013. Prior
invention may not be established under this section in any country
other than the United States, a NAFTA country, or a WTO member country.
Prior invention may not be established under this section before
December 8, 1993, in a NAFTA country other than the United States, or
before January 1, 1996, in a WTO member country other than a NAFTA
country. Prior invention may not be established under this section if
either:
(1) The rejection is based upon a U.S. patent or U.S. patent
application publication of a pending or patented application naming
another inventor which claims interfering subject matter as defined in
§ 41.203(a) of this chapter, in which case an applicant may suggest
an interference pursuant to § 41.202(a) of this chapter; or
(2) The rejection is based upon a statutory bar.
* * * * *
. 29. Section 1.136 is amended by revising paragraphs (a)(1)(iv), (a)(2),
and (b), and by adding paragraph (d), to read as follows:
§ 1.136 Extensions of time.
(a)(1) * * *
(iv) The reply is to a decision by the Patent Trial and Appeal
Board pursuant to § 41.50 or § 41.52 of this chapter or to
§ 90.3 of this chapter; or
* * * * *
(2) The date on which the petition and the fee have been filed is
the date for purposes of determining the period of extension and the
corresponding amount of the fee. The expiration of the time period is
determined by the amount of the fee paid. A reply must be filed prior
to the expiration of the period of extension to avoid abandonment of
the application (§ 1.135), but in no situation may an applicant
reply later than the maximum time period set by statute, or be granted
an extension of time under paragraph (b) of this section when the
provisions of paragraph (a) of this section are available.
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1578 |
* * * * *
(b) When a reply cannot be filed within the time period set for
such reply and the provisions of paragraph (a) of this section are not
available, the period for reply will be extended only for sufficient
cause and for a reasonable time specified. Any request for an extension
of time under this paragraph must be filed on or before the day on
which such reply is due, but the mere filing of such a request will not
effect any extension under this paragraph. In no situation can any
extension carry the date on which reply is due beyond the maximum time
period set by statute. Any request under this paragraph must be
accompanied by the petition fee set forth in § 1.17(g).
* * * * *
(d) See § 1.550(c) for extensions of time in ex parte
reexamination proceedings, § 1.956 for extensions of time in inter
partes reexamination proceedings; § 41.4(a) and 41.121(a)(3)
of this chapter for extensions of time in contested cases before the
Patent Trial and Appeal Board; § 42.5(c) of this chapter for
extensions of time in trials before the Patent Trial and Appeal Board;
and § 90.3 of this chapter for extensions of time to appeal to the
U.S. Court of Appeals for the Federal Circuit or to commence a civil
action.
. 30. Section 1.137 is revised to read as follows:
§ 1.137 Revival of abandoned application, or terminated or limited
reexamination prosecution.
(a) Revival on the basis of unintentional delay. If the delay in
reply by applicant or patent owner was unintentional, a petition may be
filed pursuant to this section to revive an abandoned application or a
reexamination prosecution terminated under § 1.550(d) or § 1.957(b) or
limited under § 1.957(c).
(b) Petition requirements. A grantable petition pursuant to this
section must be accompanied by:
(1) The reply required to the outstanding Office action or notice,
unless previously filed;
(2) The petition fee as set forth in § 1.17(m);
(3) Any terminal disclaimer (and fee as set forth in § 1.20(d))
required pursuant to paragraph (d) of this section; and
(4) A statement that the entire delay in filing the required reply
from the due date for the reply until the filing of a grantable
petition pursuant to this section was unintentional. The Director may
require additional information where there is a question whether the
delay was unintentional.
(c) Reply. In an application abandoned under § 1.57(a), the
reply must include a copy of the specification and any drawings of the
previously filed application. In an application or patent abandoned for
failure to pay the issue fee or any portion thereof, the required reply
must include payment of the issue fee or any outstanding balance. In an
application abandoned for failure to pay the publication fee, the
required reply must include payment of the publication fee. In a
nonprovisional application abandoned for failure to prosecute, the
required reply may be met by the filing of a continuing application. In a
nonprovisional utility or plant application filed on or after June 8,
1995, abandoned after the close of prosecution as defined in §
1.114(b), the required reply may also be met by the filing of a request
for continued examination in compliance with § 1.114.
(d) Terminal disclaimer. (1) Any petition to revive pursuant to
this section in a design application must be accompanied by a terminal
disclaimer and fee as set forth in § 1.321 dedicating to the public
a terminal part of the term of any patent granted thereon equivalent to
the period of abandonment of the application. Any petition to revive
pursuant to this section in either a utility or plant application filed
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1579 |
before June 8, 1995, must be accompanied by a terminal disclaimer and
fee as set forth in § 1.321 dedicating to the public a terminal
part of the term of any patent granted thereon equivalent to the lesser
of:
(i) The period of abandonment of the application; or
(ii) The period extending beyond twenty years from the date on
which the application for the patent was filed in the United States or,
if the application contains a specific reference to an earlier filed
application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on
which the earliest such application was filed.
(2) Any terminal disclaimer pursuant to paragraph (d)(1) of this
section must also apply to any patent granted on a continuing utility
or plant application filed before June 8, 1995, or a continuing design
application, that contains a specific reference under 35 U.S.C. 120,
121, or 365(c) to the application for which revival is sought.
(3) The provisions of paragraph (d)(1) of this section do not apply
to applications for which revival is sought solely for purposes of
copendency with a utility or plant application filed on or after June
8, 1995, to reissue applications, or to reexamination proceedings.
(e) Request for reconsideration. Any request for reconsideration or
review of a decision refusing to revive an abandoned application, or a
terminated or limited reexamination prosecution, upon petition filed
pursuant to this section, to be considered timely, must be filed within
two months of the decision refusing to revive or within such time as
set in the decision. Unless a decision indicates otherwise, this time
period may be extended under:
(1) The provisions of § 1.136 for an abandoned application;
(2) The provisions of § 1.550(c) for a terminated ex parte
reexamination prosecution, where the ex parte reexamination was filed
under § 1.510; or
(3) The provisions of § 1.956 for a terminated inter partes
reexamination prosecution or an inter partes reexamination limited as
to further prosecution, where the inter partes reexamination was filed
under § 1.913.
(f) Abandonment for failure to notify the Office of a foreign
filing. A nonprovisional application abandoned pursuant to 35 U.S.C.
122(b)(2)(B)(iii) for failure to timely notify the Office of the filing
of an application in a foreign country or under a multinational treaty
that requires publication of applications eighteen months after filing,
may be revived pursuant to this section. The reply requirement of
paragraph (c) of this section is met by the notification of such filing
in a foreign country or under a multinational treaty, but the filing of
a petition under this section will not operate to stay any period for
reply that may be running against the application.
(g) Provisional applications. A provisional application, abandoned
for failure to timely respond to an Office requirement, may be revived
pursuant to this section. Subject to the provisions of 35 U.S.C.
119(e)(3) and § 1.7(b), a provisional application will not be
regarded as pending after twelve months from its filing date under any
circumstances.
. 31. Section 1.138 is amended by revising paragraph (b) to read as
follows:
§ 1.138 Express abandonment.
* * * * *
(b) A written declaration of abandonment must be signed by a party
authorized under § 1.33(b)(1) or (b)(3) to sign a paper in the
application, except as otherwise provided in this paragraph. A
registered attorney or agent, not of record, who acts in a
representative capacity under the provisions of § 1.34 when filing
a continuing application, may expressly abandon the prior application
as of the filing date granted to the continuing application.
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1580 |
* * * * *
. 32. Section 1.197 is revised to read as follows:
§ 1.197 Termination of proceedings.
(a) Proceedings on an application are considered terminated by the
dismissal of an appeal or the failure to timely file an appeal to the
court or a civil action (§ 1.304) except:
(1) Where claims stand allowed in an application; or
(2) Where the nature of the decision requires further action by the
examiner.
(b) The date of termination of proceedings on an application is the
date on which the appeal is dismissed or the date on which the time for
appeal to the U.S. Court of Appeals for the Federal Circuit or review
by civil action (§ 90.3 of this chapter) expires in the absence of
further appeal or review. If an appeal to the U.S. Court of Appeals for
the Federal Circuit or a civil action has been filed, proceedings on an
application are considered terminated when the appeal or civil action
is terminated. A civil action is terminated when the time to appeal the
judgment expires. An appeal to the U.S. Court of Appeals for the
Federal Circuit, whether from a decision of the Board or a judgment in
a civil action, is terminated when the mandate is issued by the Court.
. 33. Section 1.290 is amended by revising paragraph (f) to read as
follows:
§ 1.290 Submissions by third parties in applications.
* * * * *
(f) Any third-party submission under this section must be
accompanied by the fee set forth in § 1.17(o) for every ten items
or fraction thereof identified in the document list.
* * * * *
. 34. Section 1.311 is amended by revising paragraph (a) to read as
follows:
§ 1.311 Notice of allowance.
(a) If, on examination, it appears that the applicant is entitled
to a patent under the law, a notice of allowance will be sent to the
applicant at the correspondence address indicated in § 1.33. The
notice of allowance shall specify a sum constituting the issue fee and
any required publication fee (§ 1.211(e)), which issue fee and any
required publication fee must both be paid within three months from the
date of mailing of the notice of allowance to avoid abandonment of the
application. This three-month period is not extendable.
* * * * *
§ 1.317 [Removed and Reserved]
. 35. Section 1.317 is removed and reserved.
. 36. Section 1.366 is amended by revising paragraphs (a) and (b) to read
as follows:
§ 1.366 Submission of maintenance fees.
(a) The patentee may pay maintenance fees and any necessary
surcharges, or any person or organization may pay maintenance fees and
any necessary surcharges on behalf of a patentee. A maintenance fee
transmittal letter may be signed by a juristic applicant or patent
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1581 |
owner. A patentee need not file authorization to enable any person or
organization to pay maintenance fees and any necessary surcharges on
behalf of the patentee.
(b) A maintenance fee and any necessary surcharge submitted for a
patent must be submitted in the amount due on the date the maintenance
fee and any necessary surcharge are paid. A maintenance fee or
surcharge may be paid in the manner set forth in § 1.23 or by an
authorization to charge a deposit account established pursuant to
§ 1.25. Payment of a maintenance fee and any necessary surcharge or the
authorization to charge a deposit account must be submitted within the
periods set forth in § 1.362 (d), (e), or (f). Any payment or
authorization of maintenance fees and surcharges filed at any other
time will not be accepted and will not serve as a payment of the
maintenance fee except insofar as a delayed payment of the maintenance
fee is accepted by the Director in an expired patent pursuant to a
petition filed under § 1.378. Any authorization to charge a deposit
account must authorize the immediate charging of the maintenance fee
and any necessary surcharge to the deposit account. Payment of less
than the required amount, payment in a manner other than that set forth
in § 1.23, or in the filing of an authorization to charge a deposit
account having insufficient funds will not constitute payment of a
maintenance fee or surcharge on a patent. The procedures set forth in
§ 1.8 or § 1.10 may be utilized in paying maintenance fees and
any necessary surcharges.
* * * * *
. 37. Section 1.378 is revised to read as follows:
§ 1.378 Acceptance of delayed payment of maintenance fee in
expired patent to reinstate patent.
(a) The Director may accept the payment of any maintenance fee due
on a patent after expiration of the patent if, upon petition, the delay
in payment of the maintenance fee is shown to the satisfaction of the
Director to have been unintentional. If the Director accepts payment of
the maintenance fee upon petition, the patent shall be considered as
not having expired, but will be subject to the conditions set forth in
35 U.S.C. 41(c)(2).
(b) Any petition to accept an unintentionally delayed payment of a
maintenance fee must include:
(1) The required maintenance fee set forth in § 1.20(e) through
(g);
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the delay in payment of the maintenance fee
was unintentional. The Director may require additional information
where there is a question whether the delay was unintentional.
(c) Any petition under this section must be signed in compliance
with § 1.33(b).
(d) Reconsideration of a decision refusing to accept a delayed
maintenance fee may be obtained by filing a petition for
reconsideration within two months of the decision, or such other time
as set in the decision refusing to accept the delayed payment of the
maintenance fee.
(e) If the delayed payment of the maintenance fee is not accepted,
the maintenance fee will be refunded following the decision on the
petition for reconsideration, or after the expiration of the time for
filing such a petition for reconsideration, if none is filed.
. 38. Section 1.452 is amended by removing paragraph (d) and revising
paragraph (b)(2) to read as follows:
§ 1.452 Restoration of right of priority.
* * * * *
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1582 |
(b) * * *
(2) The petition fee as set forth in § 1.17(m); and
* * * * *
. 39. Section 1.495 is amended by revising paragraph (c)(3)(ii) to read
as follows:
§ 1.495 Entering the national stage in the United States of
America.
* * * * *
(c) * * *
(3) * * *
(ii) The applicant must file each required oath or declaration in
compliance with § 1.63, or substitute statement in compliance with
§ 1.64, no later than the date on which the issue fee for the
patent is paid. If the applicant is notified in a notice of
allowability that an oath or declaration in compliance with § 1.63,
or substitute statement in compliance with § 1.64, executed by or
with respect to each named inventor has not been filed, the applicant
must file each required oath or declaration in compliance with
§ 1.63, or substitute statement in compliance with § 1.64, no later
than the date on which the issue fee is paid to avoid abandonment. This
time period is not extendable under § 1.136 (see § 1.136(c)).
The Office may dispense with the notice provided for in paragraph
(c)(1) of this section if each required oath or declaration in
compliance with § 1.63, or substitute statement in compliance with
§ 1.64, has been filed before the application is in condition for
allowance.
* * * * *
. 40. Section 1.550 is amended by revising paragraphs (c) and (e) to read
as follows:
§ 1.550 Conduct of ex parte reexamination proceedings.
* * * * *
(c) The time for taking any action by a patent owner in an ex parte
reexamination proceeding may be extended as provided in this paragraph.
(1) Any request for such an extension must specify the requested
period of extension and be accompanied by the petition fee set forth in
§ 1.17(g).
(2) Any request for an extension in a third party requested ex
parte reexamination must be filed on or before the day on which action
by the patent owner is due, and the mere filing of such a request for
extension will not effect the extension. A request for an extension in
a third party requested ex parte reexamination will not be granted in
the absence of sufficient cause or for more than a reasonable time.
(3) Any request for an extension in a patent owner requested or
Director ordered ex parte reexamination for up to two months from the
time period set in the Office action must be filed no later than two
months from the expiration of the time period set in the Office action.
A request for an extension in a patent owner requested or Director
ordered ex parte reexamination for more than two months from the time
period set in the Office action must be filed on or before the day on
which action by the patent owner is due, and the mere filing of a
request for an extension for more than two months from the time period
set in the Office action will not effect the extension. The time for
taking action in a patent owner requested or Director ordered ex parte
reexamination will not be extended for more than two months from the
time period set in the Office action in the absence of sufficient cause
or for more than a reasonable time.
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1583 |
(4) The reply or other action must in any event be filed prior to
the expiration of the period of extension, but in no situation may a
reply or other action be filed later than the maximum time period set
by statute.
(5) See § 90.3(c) of this title for extensions of time for
filing a notice of appeal to the U.S. Court of Appeals for the Federal
Circuit or for commencing a civil action.
* * * * *
(e) If a response by the patent owner is not timely filed in the
Office, a petition may be filed pursuant to § 1.137
to revive a reexamination prosecution terminated under paragraph (d) of
this section if the delay in response was unintentional.
* * * * *
. 41. Section 1.704 is amended by revising paragraphs (c)(11) and
(c)(12), and adding new paragraphs (c)(13) and (f) to read as follows:
§ 1.704 Reduction of period of adjustment of patent term.
* * * * *
(c) * * *
(11) Failure to file an appeal brief in compliance with § 41.37
of this chapter within three months from the date on which a notice of
appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C.
134 and § 41.31 of this chapter, in which case the period of
adjustment set forth in § 1.703 shall be reduced by the number of
days, if any, beginning on the day after the date three months from the
date on which a notice of appeal to the Patent Trial and Appeal Board
was filed under 35 U.S.C. 134 and § 41.31 of this chapter, and
ending on the date an appeal brief in compliance with § 41.37 of
this chapter or a request for continued examination in compliance with
§ 1.114 was filed;
(12) Failure to provide an application in condition for examination
as defined in paragraph (f) of this section within eight months from
either the date on which the application was filed under 35 U.S.C.
111(a) or the date of commencement of the national stage under 35
U.S.C. 371(b) or (f) in an international application, in which case the
period of adjustment set forth in § 1.703 shall be reduced by the
number of days, if any, beginning on the day after the date that is
eight months from either the date on which the application was filed
under 35 U.S.C. 111(a) or the date of commencement of the national
stage under 35 U.S.C. 371(b) or (f) in an international application and
ending on the date the application is in condition for examination as
defined in paragraph (f) of this section; and
(13) Further prosecution via a continuing application, in which
case the period of adjustment set forth in § 1.703 shall not
include any period that is prior to the actual filing date of the
application that resulted in the patent.
* * * * *
(f) An application filed under 35 U.S.C. 111(a) is in condition for
examination when the application includes a specification, including at
least one claim and an abstract (§ 1.72(b)), and has papers in
compliance with § 1.52, drawings (if any) in compliance with § 1.84, any
English translation required by § 1.52(d) or § 1.57(a), a sequence
listing in compliance with § 1.821 through § 1.825 (if applicable), the
inventor's oath or declaration or an application data sheet containing
the information specified in § 1.63(b), the basic filing fee (§ 1.16(a) or
§ 1.16(c)), the search fee (§ 1.16(k) or § 1.16(m)), the examination fee
(§ 1.16(o) or § 1.16(q)), any certified copy of the previously filed
application required by § 1.57(a), and any application size fee required
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1584 |
by the Office under § 1.16(s). An international application is in condition
for examination when the application has entered the national stage as
defined in § 1.491(b), and includes a specification, including at least one
claim and an abstract (§ 1.72(b)), and has papers in compliance with
§ 1.52, drawings (if any) in compliance with § 1.84, a sequence listing in
compliance with § 1.821 through § 1.825 (if applicable), the inventor's
oath or declaration or an application data sheet containing the
information specified in § 1.63(b), the search fee (§ 1.492(b)), the
examination fee (§ 1.492(c)), and any application size fee required by the
Office under § 1.492(j). An application shall be considered as having
papers in compliance with § 1.52, drawings (if any) in compliance with
§ 1.84, and a sequence listing in compliance with § 1.821 through § 1.825
(if applicable) for purposes of this paragraph on the filing date of the
latest reply (if any) correcting the papers, drawings, or sequence listing
that is prior to the date of mailing of either an action under 35 U.S.C.
132 or a notice of allowance under 35 U.S.C. 151, whichever occurs first.
. 42. Section 1.809 is amended by revising paragraph (c) to read as
follows:
§ 1.809 Examination procedures.
* * * * *
(c) If an application for patent is otherwise in condition for
allowance except for a needed deposit and the Office has received a
written assurance that an acceptable deposit will be made, the Office
may notify the applicant in a notice of allowability and set a three-
month period of time from the mailing date of the notice of
allowability within which the deposit must be made in order to avoid
abandonment. This time period is not extendable under § 1.136 (see
§ 1.136(c)).
* * * * *
. 3. Section 1.958 is revised to read as follows:
§ 1.958 Petition to revive inter partes reexamination prosecution
terminated for lack of patent owner response.
If a response by the patent owner is not timely filed in the
Office, a petition may be filed pursuant to § 1.137 to revive a
reexamination prosecution terminated under § 1.957(b) or limited
under § 1.957(c) if the delay in response was unintentional.
PART 3-ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
. 44. The authority citation for part 3 continues to read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).
. 45. Section 3.11 is amended by revising paragraph (a) to read as
follows:
§ 3.11 Documents which will be recorded.
(a) Assignments of applications, patents, and registrations, and
other documents relating to interests in patent applications and
patents, accompanied by completed cover sheets as specified in § 3.28
and § 3.31, will be recorded in the Office. Other documents, accompanied
by completed cover sheets as specified in § 3.28 and § 3.31, affecting
title to applications, patents, or registrations, will be recorded as
provided in this part or at the discretion of the Director.
* * * * *
| Top of Notices (273) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 1585 |
. 46. Section 3.31 is amended by revising paragraph (h) to read as
follows:
§ 3.31 Cover sheet content.
* * * * *
(h) The assignment cover sheet required by § 3.28 for a patent
application or patent will be satisfied by the Patent Law Treaty Model
International Request for Recordation of Change in Applicant or Owner
Form, Patent Law Treaty Model International Request for Recordation of
a License/Cancellation of the Recordation of a License Form, Patent Law
Treaty Model Certificate of Transfer Form or Patent Law Treaty Model
International Request for Recordation of a Security Interest/
Cancellation of the Recordation of a Security Interest Form, as
applicable, except where the assignment is also an oath or declaration
under § 1.63 of this chapter. An assignment cover sheet required by
§ 3.28 must contain a conspicuous indication of an intent to
utilize the assignment as an oath or declaration under § 1.63 of
this chapter.
PART 11-REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT
AND TRADEMARK OFFICE
. 47. The authority citation for 37 CFR part 11 continues to read as
follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 32,
41.
. 48. Section 11.18 is amended by revising paragraph (a) to read as
follows:
§ 11.18 Signature and certificate for correspondence filed in the
Office.
(a) For all documents filed in the Office in patent, trademark, and
other non-patent matters, and all documents filed with a hearing
officer in a disciplinary proceeding, except for correspondence that is
required to be signed by the applicant or party, each piece of
correspondence filed by a practitioner in the Office must bear a
signature, personally signed or inserted by such practitioner, in
compliance with § 1.4(d) or § 2.193(a) of this chapter.
* * * * *
October 7, 2013 TERESA STANEK REA
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of
the United States Patent and Trademark Office
[1397 OG 42]