| 21st Century Strategic Plan, Patent Business Goals |
Referenced Items (334, 335, 336, 337, 338) |
(334) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 5, 10, 41, and 104
[Docket No.: 2003-P-020]
RIN 0651-AB64
Changes to Support Implementation of the
United States Patent and Trademark Office
21st Century Strategic Plan
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) has
established a 21st Century Strategic Plan to transform the Office into
a quality-focused, highly productive, responsive organization
supporting a market-driven intellectual property system. The noteworthy
changes in this final rule are: Providing for an alternative signature
on a number of submissions; adjusting the fees for a number of patent-
related petitions to reflect the actual cost of processing these
petitions; codifying the current incorporation by reference practice
and also providing the conditions under which a claim for priority or
benefit of a prior-filed application would be considered an
incorporation by reference of the prior-filed application; expanding
the submissions that can be filed on a compact disc; eliminating the
requirement for copies of U.S. patents or U.S. patent application
publications cited in an information disclosure statement for all
applications; providing that a request for information may contain
interrogatories or requests for stipulations seeking technical factual
information actually known by the applicant; providing that
supplemental replies will no longer be entered as a matter of right;
providing for the treatment of preliminary amendments present as of the
filing date of an application as part of the original disclosure; and
eliminating the requirement in a reissue application for the actual
physical surrender by applicant of the original Letters Patent.
DATES: Effective October 21, 2004, except that: The changes to 37 CFR
1.4, 1.6, 1.10, 1.27, 1.57(a), 1.78, 1.84, 1.115, 1.137, 1.178, and
1.311, and new 37 CFR 1.57(a)(1) and (a)(2) are effective September 21,
2004; and the changes to 37 CFR 1.12, 1.14, 1.17, 1.19, 1.47, 1.53,
1.57(a)(3), 1.59, 1.84(a)(2), 1.103, 1.136, 1.182, 1.183, 1.291, 1.295,
1.296, 1.377, 1.378, 1.550, 1.741, 1.956, 5.12, 5.15, 5.25, and 41.20
are effective November 22, 2004.
FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein, Senior Legal
Advisor, by telephone at (703) 305-8713 or Robert J. Spar, Director,
Office of Patent Legal Administration (OPLA), at (703) 308-5107, or by
facsimile to (703) 305-1013, marked to the attention of Mr. Bernstein,
or by mail addressed to: Mail Stop Comments - Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: The Office has conducted a "top to bottom"
review of the patent application and examination process (among other
processes) as part of the 21st Century Strategic Plan. The 21st Century
Strategic Plan is available on the Office's Internet Web site
(www.uspto.gov>). While many of the changes to the patent application and
examination process necessary to support the 21st Century Strategic Plan
require enabling legislation (and implementing rule changes), the Office
has determined that a number of initiatives can be implemented under the
Office's current rulemaking and patent examination authority set forth in
35 U.S.C. 2(b)(2), 131, and 132. This final rule revises the rules of
practice in title 37 of the Code of Federal Regulations (CFR) to improve
the patent application and examination process by promoting quality
enhancement, reducing patent pendency, and using information technology
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to simplify the patent application process.
This final rule specifically makes changes to the following
sections of title 37 CFR: 1.4, 1.6, 1.8, 1.10, 1.12, 1.14, 1.17, 1.19,
1.27, 1.47, 1.52, 1.53, 1.57, 1.58, 1.59, 1.63, 1.69, 1.76, 1.78, 1.83,
1.84, 1.85, 1.91, 1.94, 1.98, 1.102, 1.103, 1.105, 1.111, 1.115, 1.121,
1.131, 1.136, 1.137, 1.165, 1.173, 1.175, 1.178, 1.179, 1.182, 1.183,
1.215, 1.291, 1.295, 1.296, 1.311, 1.324, 1.377, 1.378, 1.550, 1.741,
1.956, 5.12, 5.15, 5.25, 10.18, 41.20, and 104.3. This final rule also
amends title 37 CFR by adding new Sec. 1.57 and removing Sec. 1.179.
The Office is not proceeding with the proposed changes to Secs.
1.55, 1.116, 1.138, 1.502, 1.530, 1.570, 1.902, 1.953, 1.957, 1.958,
1.979, and 1.997 in this final rule. In addition, the Office adopted
proposed changes Secs. 1.704 and 1.705 in a separate rule making.
See Revision of Patent Term Extension and Patent Term Adjustment
Provisions, 69 FR 21704 (Apr. 22, 2004), 1282 Off. Gaz. Pat. Office 100
(May 19, 2004) (final rule).
The following legal advisors and staff of the Office of Patent
Legal Administration may be contacted directly for the matters
indicated:
Hiram Bernstein (703) 305-8713: Secs. 1.136 and 1.324.
Joni Chang (703) 308-3858: Secs. 1.8, 1.10, 1.91, 1.94, 1.98
and 1.111.
Jeanne Clark (703) 306-5603: Secs. 1.55 and 1.98.
Terry Dey (703) 308-1201: Sec. 1.178.
Elizabeth Dougherty (703) 306-3156: Sec. 1.121.
James Engel (703) 308-5106: Secs. 1.12, 1.14, 1.17, 1.53,
1.59, 1.102, 1.103, 1.131, 1.182, 1.183, 1.291, 1.295, 1.296, 1.377,
1.378, 1.741, 5.12, 5.15, 5.25, 41.20, 104.3.
Karin Ferriter (703) 306-3159: Secs. 1.6, 1.19, 1.47, 1.52
(other than (e)(1)(iii) and (e)(3)), 1.58(a) and (c) (other than
landscape), 1.63, 1.69, 1.83, 1.84, 1.85, and 1.165.
Anton Fetting (703) 305-8449: Secs. 1.17, 1.53, 1.59, 1.103,
1.105, 1.182, 1.183, 1.295, 1.296, 1.377, 1.378, 1.741, 5.12, 5.15,
5.25, 41.20, 104.3.
Kery Fries (703) 308-0687: Secs. 1.76, 1.704, and 1.705.
Eugenia Jones (703) 306-5586: Secs. 1.8, 1.10, 1.27, 1.55,
1.57(a), 1.78, 1.91, and 1.94.
Michael Lewis (703) 306-5585: Secs. 1.4, 1.19, 1.52(e)(1)(iii)
and (e)(3), 1.57(b)-(f), 1.58(b) and (c) (landscape), and 10.18.
Cynthia Nessler (703) 305-0271: Sec. 1.311.
Mark Polutta (703) 308-8122: Secs. 1.213, and 1.215.
Kenneth Schor (703) 308-6710: Secs. 1.137, 1.173, 1.175,
1.179, 1.550, and 1.956.
Fred Silverberg (703) 305-8986: Sec. 1.115.
The Office published a proposed rule proposing changes to the rules
of practice to improve the patent application and examination process
by promoting quality enhancement, reducing patent pendency, and using
information technology to simplify the patent application process. See
Changes to Support Implementation of the United States Patent and
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Trademark Office 21st Century Strategic Plan, 68 FR 53816 (Sept. 12,
2003), 1275 Off. Gaz. Pat. Office 23 (Oct. 7, 2003) (proposed rule).
The Office received thirty written comments (from intellectual property
organizations, law firms, businesses, and patent practitioners) in
response to this notice of proposed rule making. The comments and the
Office's responses to those comments are included in the discussion of
the specific rule to which the comment relates. Comments generally in
support of a change are not discussed.
Discussion of Specific Rules
Section 1.4: Existing Sec. 1.4(d)(1) sets forth the requirements
for personal signatures (meaning handwritten signatures) for most
correspondence with the Office and indicates that original signatures,
or direct or indirect copies of such signatures, are permitted.
Section 1.4(d)(1) is amended to specifically indicate that the
signatures covered under Sec. 1.4(d)(1) are all handwritten signatures
(except for the type of correspondence submitted pursuant to paragraph
(e) of Sec. 1.4) and that dark ink or its equivalent must be used.
Section 1.4(d)(2) is rewritten to provide for the signing of
correspondence by use of an S-signature, which is defined as a
signature between forward slash marks, but not a handwritten signature
as defined in Secs. 1.4(d)(1) or (e) depending on the type of
correspondence the signature is applied to. An S-signature includes any
signature made by electronic or mechanical means, and any mode of
making or applying a signature not covered by either a personally
signed handwritten signature permitted under Secs. 1.4(d)(1) or
(e), or an Electronic Filing System (EFS) character coded signature
permitted under Sec. 1.4(d)(3). The S-signature of Sec. 1.4(d)(2) can
be utilized with correspondence filed in the Office in paper, by
facsimile transmission as provided in Sec. 1.6(d), or via the Office
Electronic Filing System as an EFS Tag(ged) Image File Format (TIFF)
attachment, for a patent application, patent, or a reexamination
proceeding. Paragraphs (d)(2)(i) through (d)(2)(iii) of Sec. 1.4 set
forth the specific requirements for S-signatures. Paragraph (d)(3) of
Sec. 1.4 sets forth the requirements for electronic signatures on
correspondence filed via the Office Electronic Filing System in
character coded form. Thus, any signature other than a personally
applied handwritten signature (which is covered by paragraphs (d)(1) or
(e) of this section) is covered by the provisions of (d)(2) and (d)(3)
of Sec. 1.4. Former paragraph (d)(2) has been redesignated as new
paragraph (d)(4)(i) of Sec. 1.4 in view of the provision of new
paragraphs (d)(2) and (d)(3) of Sec. 1.4 for S-signature and EFS
character coded signature signed documents. Paragraph (d)(4)(ii),
certifications as to the signature, has been added to include
paragraphs (d)(4)(ii)(A) (Of another), (d)(4)(ii)(B) (Self
certification), and (d)(4)(ii)(C) (Sanctions). Paragraph (d)(4)(ii)(A)
requires that a person submitting a document signed by another under
paragraphs (d)(2) or (d)(3) of this section is obligated to have a
reasonable basis to believe that the signature of the person present on
the document was actually inserted by that person, and should retain
evidence of authenticity of the signature. Paragraph (d)(4)(ii)(B)
requires that a person inserting a signature under paragraphs (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. Paragraph (d)(4)(ii)(C) provides that violations of the
certifications as to the signature of another or a person's own
signature, set forth in paragraphs (d)(4)(ii)(A) and (B) of this
section, may result in the imposition of sanctions under Secs.
10.18(c) and (d). Section 1.4(e) has a conforming amendment based on
the changes made for Sec. 1.4(d)(1) regarding a signature that is
handwritten and the use of permanent ink that is dark or its
equivalent. Provision is also made, Sec. 1.4(h), for the requirement
of ratification or confirmation (which includes submission of a
duplicate document) or evidence of authenticity of a signature where
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the Office has reasonable doubt as to its authenticity or where it does
not clearly identify the person signing.
Requirements of Signatures: Section 1.4(d)(1) has always been
defined to cover all handwritten signatures, except for the signatures
on the type of correspondence submitted under paragraph (e) of Sec.
1.4. See Changes in Signature and Filing Requirements for
Correspondence Filed in the Patent and Trademark Office, 57 FR 36034,
36035 (Aug. 12, 1992), 1142 Off. Gaz. Pat. Office 8, 9 (Sept. 1, 1992).
Section 1.4(d)(1) has been amended to confirm this definition and to
make it clear that handwritten signatures are not covered by Secs.
1.4(d)(2) or (d)(3). The term "handwritten" has been added both as a
title for, and in the text of, Sec. 1.4(d)(1) to specifically indicate
the type of signature covered by the paragraph. Additionally, the
permanent ink requirement of the paragraph has been clarified by
reference to "dark ink or its equivalent" in accord with Sec.
1.52(a)(1)(iv). Section 1.4(d)(1) has additionally been amended to
indicate (by specifically excluding Secs. 1.4(d)(2) and (d)(3))
that a handwritten signature may not be provided under the S-signature
provisions of new paragraph (d)(2) of Sec. 1.4 and the EFS character
coded signature provisions of new paragraph (d)(3) of Sec. 1.4.
Section 1.4(d)(2) creates an S-signature, which is defined as a
signature inserted between forward slash marks, but not a handwritten
signature as defined by Secs. 1.4(d)(1) or (e). An S-signature
includes any signature made by electronic or mechanical means, and any
other mode of making or applying a signature not covered by either a
personally signed handwritten signature permitted under Secs.
1.4(d)(1) or (e), or an Electronic Filing System (EFS) character coded
signature permitted under Sec. 1.4(d)(3). The S-signature of Sec.
1.4(d)(2) can be utilized with correspondence filed in the Office in
paper, by facsimile transmission as provided in Sec. 1.6(d), or via
the Office Electronic Filing System as an EFS Tag(ged) Image File
Format (TIFF) attachment, for a patent application, patent, or a
reexamination proceeding. The S-signature must be in permanent dark ink
or its equivalent.
Section 1.4(d)(2)(i) requires that an S-signature must be in
letters, or Arabic numerals, or both. Appropriate spaces and
punctuation (i.e., commas, periods, apostrophes, or hyphens) may be
used with the letters and numbers. The person signing must personally
insert the S-signature between two forward slashes (/* * */).
Section 1.4(d)(2)(ii) requires that if the S-signature is that of a
registered practitioner of record signing pursuant to Sec. 1.33(b)(1),
or a registered practitioner not of record signing pursuant to Sec.
1.33(b)(2), the practitioner must provide his or her registration
number as part of, or adjacent to, the S-signature. A number character
() may only be used 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.
Section 1.4(d)(2)(iii)(A) requires that in addition to the S-
signature, a printed or typed name of a signer must be provided
preferably immediately below or adjacent to the person's S-signature.
Section 1.4(d)(2)(iii)(B) requires that the printed or typed name
must be reasonably specific enough so it can readily be ascertained who
has made the S-signature.
Section 1.4(d)(3) establishes the use of an EFS character coded
signature, which is an electronic signature, for correspondence
submitted via EFS in character coded form for a patent application, or
an assignment cover sheet signed consistent with Sec. 3.31. The
electronic signature must consist only of letters of the English
alphabet, or Arabic numerals, or both, with appropriate spaces and
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commas, periods, apostrophes, and hyphens as punctuation. Letters of
the English alphabet are the upper and lower case letters A through Z.
Section 1.4(d)(4)(i) establishes that 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 Sec. 10.18(b) of this
chapter.
Section 1.4(d)(4)(ii)(A) establishes certifications as to the
signature of another for a person submitting a document signed by
another under paragraphs (d)(2) or (d)(3) of this section. Thus, the
submitting person is obligated to have a reasonable basis to believe
that the person whose signature is present on the document actually
inserted the signature on the document, and the submitting person
should retain evidence of authenticity of the signature.
Section 1.4(d)(4)(ii)(B) establishes that a person inserting a
signature under paragraphs (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.
Section 1.4(d)(4)(ii)(C) establishes that violations of the
certifications as to the signature of another or a person's own
signature, set forth in paragraphs (d)(4)(ii)(A) and (B) of this
section, may result in the imposition of sanctions under Secs.
10.18(c) and (d).
Section 1.4(e) has been amended to clarify that "personally
signed" refers to a handwritten signature and that permanent dark ink
or its equivalent is required.
Paragraph 1.4(h) provides for a ratification, confirmation, or
evidence of authenticity of a signature handwritten pursuant to
Secs. 1.4(d)(1) and (e), and S-signature pursuant to Sec.
1.4(d)(2) and an EFS character coded signature pursuant to Sec.
1.4(d)(3)), such as where the Office has reasonable doubt as to the
authenticity (veracity) of the signature.
Correspondence which is filed using the EFS TIFF image form is
defined to be a black and white image at 300 dots per inch (dpi),
either uncompressed or with CCITT Group 4 compression.
Discussion of signature requirements: The rule change is intended
to facilitate movement of documents between practitioners, applicants,
and the Office. The rule change does not create the ability to file
Official correspondence by electronic mail messages (e.g., e-mail) over
the Internet to the Office. Pilot programs such as the program at the
Board of Patent Appeals and Interferences (BPAI) are not affected by
this rule change (see standing orders at the URL:
<http://www.uspto.gov/web/offices/dcom/bpai/standing2003May.pdf).
Although the Office will now accept correspondence with S-
signatures or EFS character coded signatures, the Office can only
authenticate what is in the Office records. Applicants and
practitioners must be cognizant of the issues of changed document
appearance and content and take appropriate steps to ensure that their
records, if in electronic form, can be rendered and authenticated at
some later time as being the unaltered S-signature or EFS character
coded signed original document.
Section 1.4(d)(1) covers all handwritten signatures, except for the
handwritten signatures on the types of correspondence covered by Sec.
1.4(e). The requirement in Sec. 1.4(d)(1) of permanent dark ink or its
equivalent relates to whether a handwritten signature is compliant and
is not limiting on the type of handwritten signature that is covered by
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Sec. 1.4(d)(1). Thus, Sec. 1.4(d)(1) would cover handwritten
signatures in red ink or in pencil; although, under Sec. 1.4(d)(1)
neither would be acceptable since red ink is not dark, and pencil is
not permanent. A scanned image of a handwritten signature filed via the
Office's EFS is permitted as a copy under Sec. 1.4(d)(1)(ii).
A signature applied by an electric or mechanical typewriter
directly to paper is not a handwritten signature, which is applied by
hand. Accordingly, if a typewriter applied signature is used, it must
meet the requirements of Sec. 1.4(d)(2). Adding forward slashes to a
handwritten (or hand-printed) ink signature that is personally applied
will not cause the signature to be treated under Sec. 1.4(d)(2). Thus,
such a signature will be treated under Secs. 1.4(d)(1) or (e) with
the slashes ignored. The end product from a manually applied hand stamp
or from a signature replication or transfer means (such as by pen or by
screen) appears to be a handwritten signature, but is not actually
handwritten, and would therefore be treated under Sec. 1.4(d)(2).
Paragraph 1.4(d)(2)(i) defines the content of an S-signature for
correspondence submitted to the Office in paper or by facsimile
transmission or via the Office EFS as a TIFF attachment. The Office is
adopting a standard of only letters, Arabic numerals, or both, with
appropriate spaces and punctuation (i.e., commas, periods, apostrophes,
or hyphens) as the S-signature. "Letters" include English and non-
English alphabet letters, and text characters (e.g., Kanji). Non-text,
graphic characters (e.g., a smiley face created in the True Type Wing
Dings font) are not permitted. "Arabic numerals" are the numerals 0,
1, 2, 3, 4, 5, 6, 7, 8, and 9, which are the standard numerals used in
the United States.
The Office recognizes that commas, periods, apostrophes, and
hyphens are often found in names and will therefore be found in many S-
signatures. These punctuation marks and appropriate spaces may be used
with letters and Arabic numerals in an S-signature. A sample S-
signature including punctuation marks and spaces, between two forward
slashes, is: /John P. Doe/. Punctuation marks, per se, are not
punctuation and are not permitted without proper association with
letters and Arabic numerals. An S-signature of only punctuation marks
would be improper (e.g., / - - -/). In addition, punctuation marks, such
as question marks (e.g., /???/), are often utilized to represent an
intent not to sign a document and may be interpreted to be a non-bona
fide attempt at a signature, in addition to being improper.
The S-signature must be placed between two forward slashes. This is
consistent with the rule adopted in the Trademark Office, and the
international standard. See PCT Annex F, section 3.3.2. The S-signature
between two forward slashes cannot contain any additional forward
slashes. The presentation of just letters and Arabic numerals as an S-
signature without the S-signature being placed between two forward
slashes will be treated as an unsigned document. Script fonts are not
permitted for any portion of a document except the S-signature. See
Sec. 1.52(b)(2)(ii). Presentation of a typed name in a script font
without the typed name being placed between the required slashes does
not present the proper indicia manifesting an intent to sign and will
be treated as an unsigned document.
To avoid processing delays, the Office needs to readily determine
whether a document has been signed. The filing of a document does not
imply that the document has been signed. The Office does not want to
investigate as to whether a mark (e.g., extraneous marks or a non-
permanent ink presentation of a name) comprises a signature. Therefore,
the Office will only interpret the data presented between two forward
slashes as an S-signature. Hence, documents intended to be unsigned
should be very clear that any data presented between forward slashes is
not intended to be a signature and must avoid placement of any letters
or Arabic numerals between two forward slashes in a signature area.
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To accommodate as many varieties of names as possible, a signer may
select any combination of letters, Arabic numerals, or both, for his or
her S-signature under Sec. 1.4(d)(2)(i).
Paragraph 1.4(d)(2)(i) also defines who can insert an S-signature
into a document. Section 1.4(d)(2)(i) requires that a person, which
includes a practitioner, must insert his or her own signature using
letters and/or Arabic numerals, with appropriate commas, periods,
apostrophes, or hyphens as punctuation and spaces. The "must insert
his or her own signature" requirement is met by the signer directly
typing his or her own signature on a keyboard. The requirement does not
permit one person (e.g., a secretary) to type in the signature of a
second person (e.g., a practitioner) even if the second person directs
the first person to do so. A person physically unable to use a
keyboard, however, may, while simultaneously reviewing the document for
signature, direct another person to press the appropriate keys to form
the S-signature.
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. John P.
Doe, Jr./). Additional forward slashes are not permitted as part of the
S-signature.
For consistency purposes, and to avoid raising a doubt as to who
has signed, the same S-signature should be utilized each time, with
variations of the signature being avoided. The signer should review any
indicia of identity of the signer in the body of the document,
including any printed or typed name and registration number, to ensure
that the indicia of identity in the body of the document is consistent
with how the document is S-signed. Knowingly adopting an S-signature of
another is not permitted.
While an S-signature need not be the name of the signer of the
document, the Office strongly suggests that each signer use an S-
signature that has his or her full name. The Office expects that where
persons do not sign with their name it will be because they are using
an S-signature that is the usual S-signature for that person, which is
his or her own signature, and not something that is employed to
obfuscate or misidentify the signer. Titles may be used with the
signer's S-signature and must be placed between the slash marks (e.g.,
/Dr. John Doe/), or with the printed or typed version of the name.
Paragraph 1.4(d)(2)(ii) requires that a practitioner signing
pursuant to Secs. 1.33(b)(1) or 1.33(b)(2) of this part must place
his or her registration number, either as part of, or adjacent, his or
her S-signature. A number character () may only be used in an
S-signature if it is prior to a practitioner's registration number that
is part of the S-signature. When a practitioner is signing as an
assignee, or as an applicant (inventor) pursuant to Secs.
1.33(b)(3) or 1.33(b)(4), a registration number is not required and
should not be supplied to avoid confusion as to which basis the
practitioner is signing, e.g., as a practitioner or as the assignee.
The requirement that an S-signature for practitioners be
accompanied by a registration number is consistent with Article 9(1) of
the Patent Law Treaty (June 1, 2000) (PLT) and Sec. 1.34.
The space provided for a registration number and a printed/typed
signer's name on some Office (fillable) forms is above the space
provided for a signature. The space provided for the registration
number and printed/typed signer's name is compliant with the
"adjacent" requirements of Sec. 1.4(d)(2)(ii) discussed above, and
Sec. 1.4(d)(2)(iii) discussed below.
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To ensure that it will always be clear who has made the S-
signature, Sec. 1.4(d)(2)(iii) requires that the signer's printed or
typed name (i.e., William Jones) always must be presented adjacent or
below (preferred) the S-signature (Sec. 1.4(d)(2)(iii)(A)), and that
it be reasonably specific enough so that the identity of the signer can
be readily recognized (Sec. 1.4(d)(2)(iii)(B)).
Paragraph 1.4(d)(2)(iii)(A) sets forth the requirement that the
signer's name must be presented in printed or typed form either
immediately below (preferred) or adjacent to the S-signature. The
printed or typed name requirement is intended to describe any manner of
applying the signer's name to the document, including by a typewriter
or machine printer. It could include a printer (mechanical, electrical,
optical, etc.) associated with a computer or a facsimile machine but
would not include manual or hand printing. See Sec. 1.52(a)(1)(iv).
The printed or typed name may be inserted before or after the S-
signature is applied, and it does not have to be inserted by the S-
signer.
A printed or typed name appearing in the letterhead or body of a
document is not acceptable as the presentation of the name of the S-
signer. To accommodate as many S-signatures as possible, a signer may
select any combination of letters, Arabic numerals, or both for his or
her signature. The flexibility in selecting combinations of letters
and/or Arabic numerals for S-signatures means that the identity of the
signer may not be clear from the S-signature if it is not a name. For
example, a collection of letters/numbers when presented for the first
time without a full printed or typed name that does not appear to be a
person's name (e.g., /123456XYZ/) does not identify any person as the
signer. This is so even where the signer has submitted a previous
document with such S-signature and an identification of the name of the
signer. Similarly, where the S-signature, if it is not the signer's
name, appears to represent an identifiable person with a name different
in some respect from the signer, the identity of the signer would not
be known. For example, a practitioner named "William Jones" S-signs
an amendment "/B. Jones/" which also has a certificate of
transmission signed by a paralegal with the name and signature "Bob
Jones." In this situation, the S-signature on the amendment would not
clearly identify "William Jones" as the S-signer.
In view of the flexibility allowed by the S-signature, the
requirement of Sec. 1.4(d)(2)(iii)(B), that the printed or typed name
of Sec. 1.4(d)(iii)(A) must be reasonably specific enough so that the
identity of the signer can be readily recognized, becomes very
significant. While the Sec. 1.4(d)(2)(iii)(B) requirement is also
intended to provide some flexibility (e.g., Bob may possibly be used
instead of Robert), the ultimate issue is whether the Office can
clearly identify who S-signed the document and, if not, Sec. 1.4(h)
may be triggered.
The proposed requirements relating to the usage of a signer's
actual name, or complete name, or the capitalization of only the family
name have not been included in the final rule because the underlying
requirement relating to the presentation of a name is already addressed
in the existing rules dealing with the document that is being signed,
and therefore, such requirements are not necessary in Sec. 1.4. For
example, the requirements for a declaration under Sec. 1.63 have not
been changed, nor are any changes in Sec. 1.4 intended to supersede
the requirements of Sec. 1.63. An S-signature may be used to sign a
declaration under Sec. 1.63 if all of the requirements of Sec. 1.63
are met.
As with signatures to be treated under Sec. 1.4(d)(2), signatures
to be treated under Sec. 1.4(d)(3) must be placed within forward slash
marks.
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In Sec. 1.4(d)(3), the "Character coded" form is the terminology
of PCT Annex F used to describe an EXtensible Markup Language (XML)
document created by filling in an EFS menu. The reason that the Office
is limiting the electronic signature for correspondence in character
coded text form submitted via the EFS to only letters of the English
alphabet, or Arabic numerals, or both (with appropriate spaces and
commas, periods, apostrophes, and hyphens as punctuation) is that if
the correspondence containing non-English letters or characters is
opened by the Office, these non-English letters or characters when
rendered may appear as a "box" or translated to a character in a
different font and language if the character setting used by the author
of the correspondence is not compatible with the character setting used
by the Office.
Thus, the content requirements that letters in an electronic
signature for correspondence submitted via the EFS in character coded
text form under Sec. 1.4(d)(3) (must be in the English language) is
more stringent than the letter requirements (letters in any language
are permitted) under Sec. 1.4(d)(2). Note that S-signatures on
attachments in TIFF images submitted via the EFS are governed by Sec.
1.4(d)(2) rather than Sec. 1.4(d)(3).
The electronic signature permitted for EFS in Sec. 1.4(d)(3),
however, does not have a requirement for the presentment of the
signer's name in printed or typed form as set forth in Sec.
1.4(d)(2)(iii)(A) and is therefore less stringent in that respect. This
is because the EFS preparation protocol for creating a document in EFS
requires one to insert information (an electronic signature) into a
data field on a screen but there may be no accompanying data field for
inserting a name either "adjacent or immediately below" the
electronic signature, and therefore such a requirement has not been
made. There is a field in a screen in EFS, however, for typing in the
name of the electronic signature signer so it is not necessary to
include a separate requirement for it in the rule.
Documentation about the EFS and a description of electronically
signing an EFS document is in the EFS Submission User Manual - ePAVE for
New Utility which is available at: http://www.uspto.gov/ebc/efs/
downloads/document.htm.
Section 1.4(d)(4)(i) contains the previous reference to Sec. 10.18
certifications regarding certifications made on presenting a paper to
the Office.
For paper documents utilizing an S-signature, the previous mode of
authenticating handwritten signatures, such as by comparing handwritten
signatures, is not available.
The question may be raised as to whether a person's S-signature was
in fact inserted in a document by that person or some other person. To
address this authentication concern, the rule has been revised to
include Secs. 1.4(d)(4)(ii)(A) and (B) which set out
certifications that apply to persons inserting an S-signature, or an
EFS character coded signature, as well as to persons who submit
documents with such signatures inserted by another person. Section
1.4(d)(4)(ii)(A) also includes a provision for retention of evidence of
authenticity.
Section 1.4(d)(4)(ii)(A) adds the requirement that a person
submitting a document signed by another under Secs. 1.4(d)(2) and
(3) 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. Such reasonable basis does not require an actual knowledge
but does require some reason to believe the signature is appropriate.
For example, where a practitioner e-mails a Sec. 1.63 declaration to
an inventor for signature by the inventor and receives an executed
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declaration by the inventor in return from the inventor, reasonable
basis would exist. Where an assignee was involved in the transmission
of the declaration form and/or the executed declaration, an additional
showing of chain of custody (e.g., e-mail chain with attached documents
from the inventor to the assignee to the practitioner filing the
declaration) involving the assignee would be required. Additionally,
evidence of authenticity should be retained. This may involve retaining
the e-mails sent to the inventor and any cover letter or e-mail (with
the signed document as an attachment) back to the practitioner from the
inventor in the example relating to execution of a Sec. 1.63
declaration.
Section 1.4(d)(4)(ii)(B) adds the requirement that the person
inserting a signature under paragraphs (d)(2) or (d)(3) certifies that
the inserted signature appearing in the document is his or her own
signature. This is meant to prohibit a first person from requesting a
second person to insert the first person's signature in a document.
While the certification is directed at the person inserting another's
signature, the person requesting the inappropriate insertion may also
be subject to sanctions.
Section 1.4(d)(4)(ii)(C) provides that violations of the
certification as to the signature set forth in paragraphs (d)(4)(ii)(A)
and (B) of this section, may result in the imposition of sanctions
under Secs. 10.18(c) and (d).
Section 1.4(e) has been amended to conform to the changes made to
Sec. 1.4(d)(1) in regard to the signature being handwritten and the
permanent ink being a dark ink or its equivalent.
Pursuant to Sec. 1.4(h), the Office may additionally inquire in
regard to a signature so as to identify the signer and clarify the
record where the identity of the signer is unclear. The inquiries
concerning evidence of authenticity (veracity) of a signature are
consistent with PLT Article 8(4)(c) and Rules 7(4), 15(4), 16(6),
17(6), and 18(4). An example of when ratification or confirmation of a
signature may be required is when there are variations in a signature
or whenever a name in an S-signature is not exactly the same as the
name indicated as an inventor, or a practitioner of record. Hence,
whatever signature is adopted by a signer, that signature should be
consistently used on all documents. Also addressed is the treatment of
variations in a signature or where a printed or typed name accompanies
the S-signature or the EFS character coded signature but the identity
of the signer is unclear. In such cases, the Office may require
ratification or confirmation of a signature. Ratification requires the
person ratifying to state he/she personally signed the previously
submitted document as well as, if needed, the submission of a compliant
format of the signature. Confirmation includes submitting a duplicate
document, which is compliantly signed if the previous signature was
noncompliant (as opposed to unclear).
In lieu of ratification, the Office may require a resubmission of a
properly signed duplicate document. Resubmission of a document may be
required, for example, where ratification alone is inappropriate, such
as where the image of the signature is of such poor quality (e.g.,
illegible font) that the Office is unable to store or reproduce the
document with the signature image.
Ratification or confirmation alone does not provide a means for
changing the name of a signer. For example, when an inventor changes
her/his name and the inventor desires to change her/his name in the
application, such change must be accompanied by a petition under Sec.
1.182 and, preferably, an Application Data Sheet (ADS). See Manual of
Patent Examining Procedure Sec. 605.04(c)(8th. ed. 2001) (Rev. 2, May
2004) (MPEP) and Advance Notice of Change to MPEP 605.04(b), (c) and
(f) - Application Data Sheets Are Strongly Recommended When Inventor
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Information is Changed, 1281 Off. Gaz. Pat. Office 54 (Apr. 13, 2004).
In addition, the Office may require evidence of authenticity where
the Office has reasonable doubt as to the authenticity (veracity) of
the signature. Evidence of authenticity may include evidence
establishing a chain of custody of a document from the person signing
the document to the person filing the document. Proper evidence of a
chain of custody will aid in avoiding the impact of repudiation of a
signature.
Where there has been a bona fide attempt to follow the rule, but
where there is some doubt as to the identity of
the signer of a signed document, the Office may require ratification of
the signature. Note, ratification would only be an effective remedy if
the signer was a proper party to have executed the document to be
ratified. For example, a practitioner of record may ratify his or her
signature on an amendment, but not the signature of a secretary who is
not a practitioner or inventor in the application. A registered
practitioner may, however, ratify the amendment made by another
registered practitioner but may not ratify a document required to be
signed by an inventor, such as a Sec. 1.63 declaration. Similarly, an
inadvertent typographical error or simple misspelling of a name will be
treated as a bona fide attempt to follow the rule, which would require
ratification only where there is some doubt as to the identity of the
signer rather than be treated as an unsigned paper requiring
resubmission. Where there is an obvious typographical error so that the
Office does not have some doubt as to the identity of the signer (and
therefore notification to applicant is not needed), further action by
applicant would not be required and, where appropriate, the obvious
error will be noted in the record.
The inadvertent failure to follow the format and content of an S-
signature will be treated as a bona fide attempt at a signature but the
paper will be considered as being unsigned correspondence. Examples of
correspondence that will be treated as unsigned are: (1) the S-
signature is not enclosed in forward slashes; (2) the S-signature is
composed of non-text graphic characters (e.g., a smiley face) and not
letters and numerals; and (3) the S-signature is not a name and there
is no other accompanying name adjacent or below the S-signature so that
the identity of the signer cannot be readily recognized.
Treating the document as being unsigned could have varying results
dependent on the nature of the document. For example, in new
applications, treating an improperly signed Sec. 1.63 oath or
declaration as a missing part could result in the imposition of a
surcharge and a two-month period for reply (with extensions of time
possible) to supply a properly signed new oath or declaration.
Ratification, in this instance, would not be appropriate. See Sec.
1.53(f)(1). Other correspondence, such as amendments, could be treated
under the procedures for unsigned amendment documents set forth in MPEP
Secs. 714.01 and 714.01(a) and a one-month time period for reply
be given for either ratification or submission of a duplicate amendment
which is properly signed.
If the signer, after being required to ratify or resubmit a
document with a compliant signature, repeats the same S-signature in
reply without appropriate correction, the reply will not be considered
to be a bona fide attempt to reply, and no additional time period will
be given to submit a properly signed document.
Existing Sec. 10.18(a) directed towards certifications made upon
the signing of a document submitted to the Office is focused narrowly
on the "personally signed" documents containing the handwritten
signature defined in Sec. 1.4(d)(1). As the intent of the Office is to
provide an equivalent alternative means for signing a document by the
use of S-signatures and EFS character coded signatures, the Office is
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herein promulgating a conforming change to Sec. 10.18(a) to cover S-
signatures.
Comment 1: One comment suggested broadening the rule to permit
additional documents to be electronically signed.
Response: The comment is not adopted. The comment is interpreted to
mean that electronic mail messages should be permitted as a mode of
correspondence with the Office, which is not a signature issue.
Electronic mail messages are not generally permitted, but this is for a
number of reasons, with the requirement for signature not being a
significant factor. Among the issues which remain unresolved with
respect to accepting electronic mail messages are secure transmission,
compatible character/font sets and file formats for proper rendering of
the message and receipt of documents infected with a virus. Documents
that are required by statute to be in a particular form, such as an
oath, cannot be authorized by a rule change to be in a different form,
e.g., a notarized oath changed to an electronic signature. Because
Sec. 1.4 makes no provision for an electronic notarization, an oath
will not be able to be executed as a result of these changes to Sec.
1.4. A declaration that does not require notarization, however, can be
electronically signed.
Comment 2: One comment suggests that the Office allow for
electronic mail message submissions with simultaneous verification by
postal mail.
Response: The comment is not adopted. The manner of submitting
correspondence such as by electronic mail message, is not addressed by
this rule. Electronic submission of documents is being addressed in
guidelines related to the electronic filing system. In any event,
having to match and compare duplicate submissions (paper and electronic
mail) would create a significant processing and analysis burden on the
Office.
Comment 3: One comment suggests clear demarcation of electronic
signature (now referred to as an S-signature) by statement rather than
use of back-slashes, etc.
Response: The comment is not adopted. The comment proposal requires
analysis of text beyond simple inspection of a document for the
presence or absence of a signature. It is not clear from the comment
what is a "clear" statement of signature or how typing a statement
that a typed name is a signature can be less burdensome than typing
slashes. Further, the signature format employing slash characters is
the standard adopted by the PCT and the Office intends to be consistent
with international standards.
Comment 4: One comment suggests the Office should afford the public
more flexibility with respect to the format and content of an
electronic signature (now referred to as an S-signature).
Response: The comment is adopted in-part. The comments requested
more flexibility in the format (e.g., not being limited to slashes,
capitalization), and less onerous consequences for deviations from the
specified format. The Office will not adopt any changes with respect to
permitting a format that does not include slashes so as to be
consistent with the PCT standard for electronic signatures and which
can be readily identified as an S-signature. The final rule, however,
does not contain a requirement for the identification of first and
family names, and capitalization will not be required to indicate the
family name, even though what is a family name may vary in different
cultures. Also, the format of providing the signer's name is made less
restrictive (e.g., there will not be a requirement to separately
indicate the actual name when typed or printed) to also reduce the
possibility for format errors.
The final rule also adopts a more flexible approach that allows
both practitioners and non-practitioners to sign any combination of
letters and Arabic numerals. The flexibility for practitioners to
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deviate from their registered name will be permitted. Similarly, the
requirement for the signature to contain an actual complete name has
not been adopted, just like there will not be a requirement to identify
the first and family names by capitalization as discussed for format in
the previous comment. The less restrictive content requirements reduce
the possibility for content errors.
Comment 5: One comment suggests the Office should allow a time
period to correct an in correct electronic signature (now referred to as
a S-signature) without penalty. There is a concern that failure to adhere
to an electronic signature format will result in treatment as an
unsigned paper.
Response: The comment is adopted in-part. The comments expressed
the concern that an S-signature that was made with a good faith effort
but fails to conform to an actual or complete name may be treated as
unsigned with significant adverse consequences. The final rule has been
modified to permit deviations from an actual or complete name where the
identity of the signer can still be readily determined. Examples of
such deviations are where a first name of "Bob" is substituted for an
actual name of "Robert," "Peggy" for an actual name of
"Margaret," "Mike" for an actual name of "Michael." In the
absence of some other source of confusion, the mere transposition of
letters, or the presence or absence of a letter in a name will not be
treated as a nonconforming signature. Similarly, where a practitioner's
registration number contains a transposition of numerals or a single
erroneous digit, and the identity of the practitioner can be determined
from the name and the balance of the registration number, the S-
signature will not be treated as an improper S-signature.
Where a document is treated as being unsigned, the granting of any
period for curing the defect will be handled under existing Office
practices for unsigned documents.
Comment 6: One comment suggests that "actual name" versus
"complete name" in proposed Sec. 1.4(d)(1)(iv)(A) is confusing.
Response: The comment is adopted. The rule is clarified by removing
"actual" and "complete" from the name requirement. Any special
requirements for the presentation of a name are already addressed by
the underlying document and rules pertaining thereto, e.g., oath or
declaration, see Sec. 1.63(a)(2).
Comment 7: One comment suggests the requirement to "personally
insert" electronic signature (now referred to as an S-signature)
should permit insertion under practitioner's direction/control.
Response: The comment is not adopted. The requirement that the
person signing must insert his or her own S-signature is essentially
the same as the "personally insert" requirement of Rule 10.18 (which
is not being amended by this rule making) and Sec. 1.4(d)(1) for
handwritten signatures.
Comment 8: One comment suggests that the USPTO should dictate order
of names not capitalization. Another comment suggests that the USPTO
should set a standard for the presentation of a name as a preference
not a requirement.
Response: The comment is adopted in part. The capitalization
requirement is not included in the final rule and any requirement for
the order of names is addressed by the rules pertaining to the
underlying document, e.g., oath or declaration under Sec. 1.63.
Comment 9: One comment suggests that the proposed rule is detailed,
burdensome, and easily inadvertently violated, having draconian
penalties. The rule should merely require applicant to make certain
that the document has been signed.
Response: The comment is adopted in part. As explained in the
response to the comments above, the detailed requirements for family
name and capitalization have not been included in the final rule to
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reduce the possibility of inadvertent violation. The signature is not
required to be the signer's name and the printed or typed name need
only be reasonably specific enough to identify the signer. The comment
that "applicant make certain that the document has been signed" is
more burdensome on an applicant than the proposed rule and final rule.
The final rule includes certification requirements as to the signature
but does not require an investigation as to the actual signing where
there is reasonable basis to believe the document has been signed
appropriately by the person whose signature is on the document. For
example, a practitioner receiving an electronic mail message from an
inventor with a declaration S-signed by the inventor attached to the
e-mail may satisfy the certification requirements in the final rule,
whereas if the comment were adopted (in whole), the attorney would have
needed to investigate further before it could be submitted.
Comment 10: One comment suggests that in some countries individuals
do not have both a family and a given name, e.g., India.
Response: The comment is adopted. The requirements with respect to
specifying the first and family names is not included in the final
rule. Any special requirements for the presentation of a name are
already addressed by the underlying document and rules pertaining
thereto, e.g., oath or declaration, see Sec. 1.63(a)(2).
Comment 11: One comment suggests a more detailed procedure is
necessary for the inventor to change his/her name on the record.
Response: The comment is not adopted. The rule change does not
affect current practice with respect to name changes, which are
addressed in MPEP Secs. 605.04(c), 719.02(b).
Comment 12: One comment suggests opposition to all e-initiatives.
Response: The comment is not adopted. The change is in support of
the Administration's e-government initiatives and principles espoused
in the Government Paperwork Elimination Act (GPEA) to promulgate
procedures for electronic signatures. See Pub. L. 105-277, Secs.
1701 through 1710, 112 Stat. 2681, 2681-749 through 2681-751 (1998).
Section 1.6: Section 1.6(d)(4) is amended to provide that black and
white drawings in patent applications may be transmitted to the Office
by facsimile in order to provide more flexibility to applicants for
filing individual papers in applications that contain drawings.
Although the rules of practice will now permit the submission of black
and white drawings by facsimile, photographs or drawings with detail
should not be transmitted by facsimile. Furthermore, color drawings
must continue to be hand-carried or mailed to the Office instead of
being submitted by facsimile. In addition, the Office will publish
drawings that are received as long as they can be scanned, and will
not, in general, require replacement drawings to replace drawings
transmitted by facsimile, even if the facsimile transmission process
results in the drawings being less sharp than the original drawings.
Applicants should note that the use of facsimile submission of drawings
will not cause the submission to be processed faster than the Office
would process a paper drawing received on the same day as the facsimile
submission. The facsimile submission must first be rendered into paper
form and then processed as would a submission initially made in paper.
Section 1.6(e) is removed and reserved because the provisions of
Sec. 1.6(e) are deemed more appropriately placed in Sec. 1.10. This
is because the "Express Mail" provisions of Sec. 1.10 are the only
means by which correspondence can be accorded a filing date other than
the actual date of receipt in the Office. Thus, the provisions of Sec.
1.6(e) have been transferred to Sec. 1.10 along with some changes.
Situations in which "Express Mail" is returned or refused by the
United States Postal Service (USPS) have been specifically addressed in
Sec. 1.10(g) and (h). Section 1.10(i) is similar to Sec. 1.6(e) and
addresses situations where there is a designated interruption or
emergency in "Express Mail" service.
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Comment 13: Several comments asked the Office to identify what
drawings would be acceptable when transmitted
by facsimile, whether applicants would be informed when a facsimile
transmission of a drawing was unacceptable, and whether there would be
any adverse term adjustment consequences of transmitting a drawing with
too much detail to the Office.
Response: The Office cannot predict what drawings will be
acceptable when transmitted by facsimile, but can provide applicants
with a simple self test. If an applicant is not certain that a drawing
submitted by facsimile will be of an acceptable quality, the applicant
can test the quality of the drawing either by transmitting by facsimile
the drawing to themselves, or by photocopying the drawing. If the
facsimile-transmitted or copier drawing looks the same as the original,
and the original was legible, then the drawing is extremely likely to
be acceptable when transmitted by facsimile to the Office. Facsimile-
transmitted and photocopied photographs generally bear little
resemblance to the document intended to be submitted, and transmitting
photographs by facsimile should be avoided. Drawings such as flow
charts, on the other hand, generally do reproduce well, and may be
accurately transmitted by facsimile.
If the Office receives drawings that do not have satisfactory
reproduction characteristics (Sec. 1.84(l)), or that are illegible
once scanned, the Office will inform the applicant that the drawings do
not comply with Sec. 1.84. If the Office action in which applicant is
required to supply corrected drawings is a Notice of Allowability, and
drawings are filed after the mailing date of the Notice of Allowance
(which is generally mailed with the Notice of Allowability), any patent
term adjustment will be reduced pursuant to Sec. 1.704(c)(10).
Comment 14: One comment noted that the proposed rule contained text
that had been previously removed from Sec. 1.6(d)(4) (Reorganization
of Correspondence and Other Provisions, 68 FR 48286 (Aug. 13, 2003),
1274 Off. Gaz. Pat. Office 59 (Sept. 9, 2003) (final rule)), and
suggested that "Drawings submitted under Secs. 2.51, 2.52, or
2.72 and" be deleted.
Response: The suggestion has been adopted.
Section 1.8: Section 1.8(a) is amended to clarify that the
provisions of this section do not apply to time periods or situations
set forth in sections that have been expressly excluded from Sec. 1.8
as well as situations enumerated in Sec. 1.8(a)(2). The amendment to
Sec. 1.8(a) clarifies that the list enumerated in Sec. 1.8(a)(2) is
not exhaustive, and the provisions of Sec. 1.8 do not apply to the
time periods or situations that have been explicitly excluded from
Sec. 1.8. For example, provisions of Sec. 1.8(a) do not apply to time
periods and situations set forth in Secs. 1.217(e) and 1.703(f)
because the exceptions are provided explicitly in Sec. 1.217(e),
"[t]he provisions of Sec. 1.8 do not apply to the time periods set
forth in this section" and Sec. 1.703(f), "[t]he date indicated on
any certificate of mailing or transmission under Sec. 1.8 shall not be
taken into account in [patent term adjustment] calculation."
Section 1.8(b) is also amended to permit notifying the Office of a
previous mailing, or transmitting, of correspondence, when "a
reasonable amount of time has elapsed from the time of mailing or
transmitting of the correspondence." Recently, many applicants
experienced substantial delays in delivery of their correspondence by
the USPS to the Office. These applicants did not wish to wait until the
application was held to be abandoned before notifying the Office of the
previous mailing of the correspondence and supplying a duplicate copy
of the correspondence and requisite statement in accordance with Sec.
1.8(b)(3).
With the amendment to Sec. 1.8(b), in the event that
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correspondence may be considered timely filed because it was mailed or
transmitted in accordance with Sec. 1.8(a), but was not received in
the Office after a reasonable amount of time had elapsed (e.g., more
than one month from the time the correspondence was mailed), applicants
would not be required to wait until the end of the maximum extendable
period for reply set in a prior Office action (for the Office to hold
the application to be abandoned) before informing the Office of the
previously submitted correspondence, and supplying a duplicate copy and
requisite statement attesting on a personal knowledge basis or to the
satisfaction of the Director to the previous timely mailing or
transmission. If the person signing the statement did not sign the
certificate of mailing, then the person signing the statement should
explain how they have firsthand knowledge of the previous timely
mailing or transmission. Such a statement should be filed promptly
after the person becomes aware that the Office has not received the
correspondence. Thus, although a statement attesting to the previous
timely mailing or transmission of the correspondence is required,
filing a petition to withdraw the holding of abandonment would not be
necessary in such circumstance. The amendment to Sec. 1.8(b) provides
applicants an expedited procedure to resolve delayed mail problems.
Before notifying the Office of a previously submitted
correspondence that appears not to have been received by the Office,
applicants are encouraged to check the private Patent Application
Information Retrieval (PAIR) System (which can be accessed over the
Office's Internet Web site) to see if the correspondence has been
entered into the application file. The private PAIR system is a system
which enables applicants to read the Office's electronic records,
including the Image File Wrapper (IFW), for a patent application or
patent. Private PAIR is available to applicants who have a customer
number associated with the correspondence address for an application
and who have acquired the access software (Entrust Direct Software and
a PKI certificate). Applicants may contact the Electronic Business
Center (EBC) at (703) 305-3028 for more information on private PAIR.
The Office proposed to amend Secs. 1.8(b), 1.17, 1.116, 1.137,
1.502, 1.570, 1.902, 1.953, 1.957, 1.958, 1.979, and 1.997 (and
relevant subheadings) to make clear the distinction between termination
of a reexamination proceeding and the conclusion or limiting of
prosecution in a reexamination proceeding and to make other technical
changes to the reexamination rules. The Office is not proceeding with
these changes in this final rule; however, these changes continue to be
considered as to a future final rule making directed to miscellaneous
technical reexamination rule changes.
Comment 15: One comment asked what date would be used as the date
of receipt, when a duplicate copy of the paper was filed with a showing
under Sec. 1.8. The comment continued to ask what date would be used
if the original paper was subsequently found. In addition, the Office
was asked how the applicant would know whether the paper was received.
Response: The date of receipt that would be entered into Office
records would be the actual date of receipt of the duplicate paper,
unless applicant established that the papers were actually received on
an earlier date with a post card receipt or other evidence. If the
Office accepts a paper pursuant to Sec. 1.8, and the original paper
later is located (as where the original paper was originally placed in
the wrong application file), then the original paper will be treated as
a duplicate paper and will not control the timing of subsequent actions
such as the timing of the filing of an appeal brief. Any applicant
having a doubt about the due date of an appeal brief should either
assume that the brief is due on the earlier date, or confirm with the
examiner that a later date is appropriate. When applicants use private
PAIR to view the image file wrapper, applicants will have generally the
same information about the patent application that the examiner has.
Accordingly, an applicant can know about the same time as an examiner
when a paper has been received. Applicants can also include post card
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receipts or use facsimile transmissions in order to obtain additional
information about when a paper is received by the Office. The procedure
of Sec. 1.8 is available not just when the Office did not receive a paper,
but when the paper has not been received in the appropriate location (e.g.,
where applicant transposes digits in the application number on the
application papers, and the Office does not recognize the error).
Section 1.10: Section 1.10 is amended to add paragraphs (g), (h),
and (i) to address the effects of interruptions or emergencies in USPS
"Express Mail" service. For example, Friday, November 16, 2001, the
USPS issued a memorandum temporarily and immediately suspending
"Express Mail" service to Washington, DC zip codes 202xx through
205xx. The suspension included service to the zip code for certain
correspondence mailed to the Office (20231).
Applicants frequently rely on the benefits under Sec. 1.10 to
obtain a particular filing date for a new application. The filing date
accorded to an application is often critical. For example, applicants
who do not file their applications in the United States within one year
from when their invention was first described in a printed publication
or in public use or on sale in this country are not entitled to a
patent. See 35 U.S.C. 102(b). Furthermore, to be able to claim the
benefit of a provisional application or to claim priority to a foreign
application, the nonprovisional application claiming benefit or
priority must be filed within one year from the filing of the
provisional application or foreign application. Therefore, the
procedures by which applicants may remedy the effects of an
interruption or emergency in USPS "Express Mail" service, which has
been so designated by the Director, should be specifically addressed in
the rules of practice.
The Office published a notice on October 9, 2001, that provides
procedures for the situation in which a post office refuses to accept
the deposit of mail for delivery by "Express Mail" Service and the
situation in which "Express Mail" is deposited into an "Express
Mail" drop box and given an incorrect "date-in." See United States
Postal Service Interruption and Emergency, 1251 Off. Gaz. Pat. Office
55 (Oct. 9, 2001). The procedure for remedying the situation where the
United States Postal Service (USPS) refuses to accept the deposit of
mail for delivery by "Express Mail" as contained in the notice has
now been incorporated into Sec. 1.10(h).
The Office's prior framework to address postal emergencies was
detailed in Sec. 1.6(e), "Interruptions in U.S. Postal Service."
Section 1.6(e) provided that if interruptions or emergencies in the
USPS which have been so designated by the Director occur, the Office
will consider as filed on a particular date in the Office any
correspondence which is: (1) promptly filed after the ending of the
interruption or emergency; and (2) accompanied by a statement
indicating that the correspondence would have been filed on that
particular date if it were not for the designated interruption or
emergency in the USPS.
The provisions of Sec. 1.6(e) are more appropriate in Sec. 1.10
since "Express Mail" is the only means by which correspondence filed
in accordance with Sec. 1.1(a) can be accorded a filing date other
than the actual date of receipt in the Office. Thus, the provisions of
Sec. 1.6(e) are transferred to Sec. 1.10 along with some changes.
Sections 1.10(g) and (h) specifically address situations in which
"Express Mail" is returned or refused by the USPS due to an
interruption or emergency in "Express Mail." Section 1.10(i), as
revised, is similar to Sec. 1.6(e) and addresses situations where
there is a Director designated interruption or emergency in "Express
Mail" service.
Section 1.10(g) is added to provide that any person who mails
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correspondence addressed as set out in Sec. 1.1(a) to the Office with
sufficient postage utilizing the "Express Mail Post Office to
Addressee" service of the USPS, but has the correspondence returned by
the USPS due to an interruption or emergency in "Express Mail"
service, may petition the Director to consider the correspondence as
filed on a particular date in the Office. This procedure does not apply
where the USPS returned the "Express Mail" for a reason other than an
interruption or emergency in "Express Mail" service such as the
address was incomplete or the correspondence included insufficient
payment for the "Express Mail" service. The petition must be filed
promptly after the person becomes aware of the return of the
correspondence and the number of the "Express Mail" mailing label
must have been placed on the paper(s) or fee(s) that constitute the
correspondence prior to the original mailing by "Express Mail." The
petition must also include the original correspondence or a copy of the
original correspondence showing the number of the "Express Mail"
mailing label thereon and a copy of the "Express Mail" mailing label
showing the "date-in." Furthermore, the petition must include a
statement, which establishes to the satisfaction of the Director, the
original deposit of the correspondence and that the correspondence or
the copy is the original correspondence or a true copy of the
correspondence originally deposited with the USPS on the requested
filing date. The Office may require additional evidence to determine if
the correspondence was returned by the USPS due to an interruption or
emergency in "Express Mail" service. For example, the Office may
require a letter from the USPS confirming that the return was due to an
interruption or emergency in the "Express Mail" service.
Section 1.10(h) is added to provide that any person who attempts to
mail correspondence addressed as set out in Sec. 1.1(a) to the Office
with sufficient postage utilizing the "Express Mail Post Office to
Addressee" service of the USPS, but has the correspondence refused by
an employee of the USPS due to an interruption or emergency in
"Express Mail" service, may petition the Director to consider the
correspondence as filed on a particular date in the Office. This
procedure does not apply where the USPS refused the "Express Mail"
for a reason other than an interruption or emergency in "Express
Mail" service such as the address was incomplete or the correspondence
included insufficient payment for the "Express Mail" service. In
addition, this procedure does not apply because an "Express Mail"
drop box is unavailable or a Post Office facility is closed. The
petition must be filed promptly after the person becomes aware of the
refusal of the correspondence and the number of the "Express Mail"
mailing label must have been placed on the paper(s) or fee document(s)
that constitute the correspondence prior to the attempted mailing by
"Express Mail." The petition must also include the original
correspondence or a copy of the original correspondence showing the
number of the "Express Mail" mailing label thereon. In addition, the
petition must include a statement by the person who originally
attempted to deposit the correspondence with the USPS which
establishes, to the satisfaction of the Director, the original attempt
to deposit the correspondence and that the correspondence or the copy is
the original correspondence or a true copy of the correspondence originally
attempted to be deposited with the USPS on the requested filing date. The
Office may require additional evidence to determine if the correspondence
was refused by an employee of the USPS due to an interruption or emergency
in "Express Mail" service. For example, the Office may require a letter
from the USPS confirming that the refusal was due to an interruption or
emergency in the "Express Mail" service.
Section 1.10(i) is added to provide that any person attempting to
file correspondence by "Express Mail" that was unable to be deposited
with the USPS due to an interruption or emergency in "Express Mail"
service which has been so designated by the Director may petition the
Director to consider such correspondence as filed on a particular date
in the Office. This material is transferred from Sec. 1.6. The
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petition must be filed in a manner designated by the Director promptly
after the person becomes aware of the designated interruption or
emergency in "Express Mail" service. The petition must also include
the original correspondence or a copy of the original correspondence,
and a statement which establishes, to the satisfaction of the Director,
that the correspondence would have been deposited with the USPS but for
the designated interruption or emergency in "Express Mail" service.
In addition, the petition must indicate that the correspondence or copy
of the correspondence is the original correspondence or a true copy of
the correspondence originally attempted to be deposited with the USPS
on the requested filing date.
Section 1.10(i) applies only when the Director designates an
interruption or emergency in "Express Mail" service. It is envisioned
that in the notice designating the interruption or emergency the
Director would provide guidance on the manner in which petitions under
Sec. 1.10(i) should be filed. When "Express Mail" was suspended in
November of 2001, applicants were advised that if the USPS refused to
accept correspondence for delivery to the Office by "Express Mail"
they should mail the correspondence by registered or first class mail
with a statement by the person who originally attempted to deposit the
correspondence with the USPS by "Express Mail" and any future postal
emergencies will be handled similarly, with the Office providing
procedures for applicants to follow.
Comment 16: One comment suggested that the Office amend Sec.
1.10(i) to read "Any person attempting to file correspondence by
Express Mail who was unable to deposit the correspondence due to any
emergency or interruption of "Express Mail" service may petition the
Director to consider such correspondence as filed on the date applicant
attempted to file."
Response: The suggestion has not been adopted. 35 U.S.C. 21(a)
provides that the "Director may by rule prescribe that any paper or
fee required to be filed in the Patent and Trademark Office will be
considered filed in the Office on the date on which it would have been
deposited with the United States Postal Service but for postal service
interruptions or emergencies designated by the Director." The Director
previously designated an emergency or interruption in the "Express
Mail" service by publishing a notice in the Official Gazette Notices,
and by posting the announcement on the Office's Internet Web site
(www.uspto.gov). See, e.g., United States Postal
Service Interruption and Emergency Terminated, 1274 Off. Gaz. Pat. Office
105 (Sept. 16, 2003), United States Postal Service Interruptions, 1251 Off.
Gaz. Pat. Office 55 (Oct. 9, 2001), United States Postal Service
Interruption and Emergency in Connecticut, 1245 Off. Gaz. Pat. Office 16
(Apr. 13, 2001), United States Postal Service Interruption and Emergency
in the State of California, 1176 Off. Gaz. Pat. Office 74 (July 18, 1995),
and United States Postal Service Interruption and Emergency in Los Angeles,
1160 Off. Gaz. Pat. Office 39 (Mar. 8, 1994). The Office is amending
Sec. 1.10 to provide that the Director is designating certain events
as a postal service interruption or emergency by rule (Sec. 1.10(g) or
(h)). The Director will also continue to designate any other emergency
or interruption in the "Express Mail" service on a case-by-case basis
by publishing a notice in the Official Gazette Notices (Sec. 1.10(i)),
and by posting the announcement on the Office's Internet Web site
(www.uspto.gov). The Office does not consider amending the rule as
suggested to be appropriate because 35 U.S.C. 21(a) requires that the
postal service interruption or emergency be designated by the Director.
Section 1.12: Section 1.12(c)(1) is amended to refer to the
petition fee set forth in Sec. 1.17(g) for consistency with the change
to Sec. 1.17. See discussion of Sec. 1.17. This amendment to Sec.
1.12 was omitted from the notice of proposed rule making; however, the
Office proposed to amend Sec. 1.17 to make the petition fee specified
in Sec. 1.17(g) applicable to petitions under Sec. 1.12 for access to
an assignment record in the notice of proposed rule making. See Changes
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to Support Implementation of the United States Patent and Trademark
Office 21st Century Strategic Plan, 68 FR at 53822, 53847, 1275 Off.
Gaz. Pat. Office at 28, 50.
Section 1.14: Section 1.14(h)(1) is amended to refer to the
petition fee set forth in Sec. 1.17(g) for consistency with the change
to Sec. 1.17. See discussion of Sec. 1.17 for comments related to the
increase of the petition fees.
Comment 17: One comment did not respond to the change proposed for
Sec. 1.14, but instead proposed that the rule be amended to provide
that an application that is incorporated by reference be available to
the public rather than become available to the public only once
abandoned.
Response: A copy of the originally filed application papers of a
pending application that has been incorporated by reference is
available to the public pursuant to Sec. 1.14(a)(1)(vi), although the
file contents of such an application are not available to the public.
The Office currently has systems that permit a copy of the application
as originally filed to be made available to the Office of Public
Records for sale to the public without interference with the
examination of the patent application. Copying of the entire
application file contents will, unless the application has an image
file, interfere with examination or printing of the application as a
patent, unless the application has become abandoned. As a result, the
Office does not permit the file of an application that has been
incorporated by reference to be made available to the public. Once the
Office's computer systems provide for access to the public at the same
time that the patent application is being examined, the Office may
provide access to the entire application file, however, the Office does
not currently have a mechanism to provide the public with access to the
image file wrapper of an application that has been incorporated by
reference.
Section 1.17: Section 1.17 is amended to adjust petition fees
required to be established under 35 U.S.C. 41(d) to more accurately
reflect the Office's cost of treating petitions. The Office is directed
by 35 U.S.C. 41(d) to set fees for services not set under 35 U.S.C.
41(a) or (b) so as to recover the average costs of performing the
processing or service. Under amended Sec. 1.17, petition fees
established pursuant to 35 U.S.C. 41(d) are provided for in new Sec.
1.17(f) ($400) and (g) ($200) and amended Sec. 1.17(h) ($130).
Paragraphs (f), (g) and (h) of amended Sec. 1.17 replace former Sec.
1.17(h).
The Office conducted an activity-based-accounting cost (ABC)
analysis of the Office's cost of treating the various petitions previously
enumerated in former Sec. 1.17(h), which petitions are now enumerated
in Sec. 1.17(f) through (h). The Office determined that a single
$130.00 petition fee does not recover the Office's costs of treating
many of these types of petitions. The Office also determined that there
is a significant difference in the Office's costs for treating these
types of petitions. Therefore, Sec. 1.17(f) through (h) separate
petition types into three groups, and provide separate petition fees
for each of the three groups to more accurately reflect the cost of
treating petitions within these three groups. In those instances in
which a petition seeks action under more than one rule, the petition
fee will be that of the rule with the highest fee under which the
petition seeks action.
The highest cost group of petitions is covered by new Sec.
1.17(f), which specifies a petition fee of $400. The petitions in this
group are: (1) Petitions under Sec. 1.53(e) to accord a filing date;
(2) petitions under Sec. 1.57(a) to accord a filing date; (3)
petitions under Sec. 1.182 for decision on a question not specifically
provided for; (4) petitions under Sec. 1.183 to suspend the rules; (5)
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petitions under Sec. 1.378(e) for reconsideration of decision on
petition refusing to accept delayed payment of maintenance fee in an
expired patent; (6) petitions under former Sec. 1.644(e) in an
interference; (7) petitions under former Sec. 1.644(f) for requesting
reconsideration of a decision on petition in an interference; (8)
petitions under former Sec. 1.666(b) for access to an interference
settlement agreement; (9) petitions under former Sec. 1.666(c) for
late filing of an interference settlement agreement; and (10) petitions
under Sec. 1.741(b) to accord a filing date to an application under
Sec. 1.740 for extension of a patent term. Petitions in this first
group incur the highest costs because they require analysis of complex
and unique factual situations and evidentiary showings. Often a
petition in this group will involve an issue of first impression
requiring review and approval of a course of action by senior Office
officials.
The intermediate cost group of petitions is covered by new Sec.
1.17(g), which specifies a petition fee of $200. The petitions in this
group are: (1) Petitions under Sec. 1.12 for access to an assignment
record; (2) petitions under Sec. 1.14 for access to an application;
(3) petitions under Sec. 1.47 for filing by persons other than all the
inventors or a person not the inventor; (4) petitions under Sec. 1.59
for expungement of information; (5) petitions under Sec. 1.103(a) to
suspend action in an application; (6) petitions under Sec. 1.136(b) to
review requests for extension of time when the provisions of Sec.
1.136(a) are not available; (7) petitions under Sec. 1.295 for review
of a refusal to publish a statutory invention registration; (8)
petitions under Sec. 1.296 to withdraw a request for publication of a
statutory invention registration filed on or after the date the notice
of intent to publish issued; (9) petitions under Sec. 1.377 for review
of a decision refusing to accept and record payment of a maintenance
fee filed prior to expiration of a patent; (10) petitions under Sec.
1.550(c) for patent owner requests for extension of time in ex parte
reexamination proceedings; (11) petitions under Sec. 1.956 for patent
owner requests for extension of time in inter partes reexamination
proceedings; (12) petitions under Sec. 5.12 for expedited handling of
a foreign filing license; (13) petitions under Sec. 5.15 for changing
the scope of a license; and (14) petitions under Sec. 5.25 for a
retroactive license. Petitions in this second group incur intermediate
costs because, although they also require analysis of factual
situations and evidentiary showings, the factual situations and
evidentiary showings for this second group of petitions often fall into
recognizable patterns. On occasion, however, a petition in this second
group will involve an issue of first impression requiring review and
approval of a course of action by senior Office officials.
The remaining group of petitions is covered by Sec. 1.17(h), which
continues to specify the current petition fee of $130. The petitions in
this group are: (1) Petitions under Sec. 1.19(g) to request documents
in a form other than that provided in this part; (2) petitions under
Sec. 1.84 for accepting color drawings or photographs; (3) petitions
under Sec. 1.91 for entry of a model or exhibit; (4) petitions under
Sec. 1.102(d) to make an application special; (5) petitions under
Sec. 1.138(c) to expressly abandon an application to avoid publication
(6) petitions under Sec. 1.313 to withdraw an application from issue;
and (7) petitions under Sec. 1.314 to defer issuance of a patent.
Petitions in this third group incur the least costs, as they require
review for compliance with the applicable procedural requirements, but
do not often require analysis of varied factual situations or
evidentiary showings.
Section 1.17(i) is also amended to reflect the required processing
fee of Sec. 1.291(c)(5) for a second or subsequent protest by the same
real party in interest.
Comment 18: One comment objected to the proposed change in that
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switching from one petition fee to three petition fees under Sec.
1.17(f), (g) and (h) will cause applicants unfamiliar with the three
new petition fees to make petition fee payment errors that will lead to
additional work.
Response: The Office has determined that the benefits of recovering
the costs of responding to petitions, in a stratified scheme, outweigh
the costs of potential errors in administration of the fees. The fees
for the petitions grouped under Sec. 1.17(f) through (h) are not set
by 35 U.S.C. 41(a) and (b). Rather, the fees for these petitions are
among the fees required to be established under 35 U.S.C. 41(d) in
order to recover the estimated average cost to the Office. The Office
conducted an activity-based-accounting cost (ABC) analysis of the
Office's cost of treating the petitions grouped under Sec. 1.17(f)
through (h) and determined that there is a significant difference in
the Office's costs for treating these petitions. A less
administratively burdensome approach would have been for the Office to
have simply raised the fee under former Sec. 1.17(h) based on a lump
sum average cost of treating all the petition fees which must be
established pursuant to 35 U.S.C. 41(d). The Office decided against
lumping all these petitions together due to the significant cost
difference for treating these petitions. The Office determined that
actual costs could be fairly recovered based on three groups of
petition fees without overly complicating petition fee payment and
processing, particularly because each rule section for which a petition
fee is associated has a single fee assigned. It is noted that 35 U.S.C.
41(a) and (b) set different fees for various other types of petitions
including three groups of petition fees for extensions of time.
Furthermore, the various patent fees specified in 35 U.S.C. 41(a) and
(b) are generally changed each fiscal year. The Office minimizes any
confusion resulting from fee changes and fee groupings by publishing
fee changes under 35 U.S.C. 41(a) and (b) in the Official Gazette for
Patents, on the Office's Internet Web site, and in various
communications sent to practitioners and applicants. In keeping with
this practice, the Office will similarly publish the petition fees
under Sec. 1.17(f) through (h) which have been established pursuant to
35 U.S.C. 41(d).
Comment 19: Some comments argued that the $400 fee for petitions
under Sec. 1.17(f) is excessive, noting that this amount is comparable
to the basic small entity patent application filing fee.
Response: The $400 fee is based on an activity-based-accounting
cost analysis of the Office's cost of treating the petitions grouped
under new Sec. 1.17(f). The argument that comparing the basic small
entity filing fee to the Sec. 1.17(f) petition fee suggests the Sec.
1.17(f) petition fee to be excessive fails to recognize that filing
fees set under 35 U.S.C. 41(a) do not recover the cost of patent
application processing and examination. A larger portion of this cost
recovery is attributable to patent maintenance fees, as well as the
other fees provided under 35 U.S.C. 41, rather than the filing fee
alone.
Comment 20: One comment stated that the fee under new Sec. 1.17(f)
is satisfactory for petitions to accord a filing date provided the
Office will refund the fee when the failure to originally accord the
requested filing date was the result of Office error (e.g., lost papers
in the Office). Another comment which argued that the fee under new
Sec. 1.17(f) is excessive, also stated that the petition fee should be
refunded when a granted petition was required to correct an Office
error.
Response: In keeping with Office practice when former Sec. 1.17(h)
applied to filing date petitions, the petition fee under new Sec.
1.17(f) will be refunded where a petition to accord an application
filing date was required to correct solely an Office error. In
addition, for an application filed in accordance with Sec. 1.10, there
is no fee required to accord the application a filing date under Sec.
1.10(c), (d) or (e).
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Comment 21: One comment suggested that the petition fees under
Sec. 1.17(f) through (h) apply only to large entities and that no
petition fee be charged to any small entity.
Response: This suggestion cannot be adopted. As set forth in 35
U.S.C. 41(h), small entity fee reduction only applies to fees charged
under 35 U.S.C. 41(a) or (b). As the petition fees under Sec. 1.17(f)
through (h) are required to be established under 35 U.S.C. 41(d), small
entity fee reduction does not apply. Further, where small entity fee
reduction is available, it is only available for a fifty percent
reduction of fees.
Comment 22: One comment suggested that petitions for express
abandonment to avoid patent application publication under Sec.
1.138(c) should fall under Sec. 1.17(h) where the petition fee is
$130.00, rather than under Sec. 1.17(g) where the petition fee is
$200.00.
Response: The suggested change has been adopted.
Section 1.19: Section 1.19 is amended to rewrite former paragraph
(b) in order to provide for different fees for copies of patent
application documents, according to the medium or means by which the
copy is provided. In paragraph (b) of Sec. 1.19, "certified and
uncertified" has been removed as unnecessary since all copies provided
under this paragraph will be certified. Lastly, paragraph (g) is added
to require a petition to obtain copies of documents in a form other
than provided for in the patent rules. Such a petition was originally
proposed as paragraph (h), and paragraph (g) was proposed to provide
for at cost copies of documents. The previously proposed paragraph (g)
has been determined to be unnecessary in view of Sec. 1.21(k).
Accordingly, the paragraph proposed as (h) will be designated as
paragraph (g).
Section 1.19 is amended to clarify that copies of documents may be
provided to the public in whole, or in part, in electronic image form
at the Office's option. In view of the ever-increasing size of
submissions, many of the Office official records need to, and will, be
received, stored and maintained in electronic form. As a result of the
Office's migration to electronic storage of documents and the IFW
system, Sec. 1.19 has been amended to reflect that the Office may, at
its option, provide copies of documents in an electronic form (e.g., on
compact disc, or other physical electronic medium, or by electronic
mail, if an electronic mail address is given). A request for a document
in another form (e.g., a voluminous document on paper) that would
impair service to other users would be complied with on a case-by-case
basis as provided in new Sec. 1.19(g). Hence, although the rule
provides a fee for ordering copies of Office documents in various
forms, the Office, at its option, may elect to supply the requested
copies on paper, or in an electronic form, as determined to be
appropriate by the Director, depending upon which is most expedient and
cost-effective from an Office perspective.
In amending Sec. 1.19(b), former paragraphs (b)(1) through (b)(3)
have been rewritten as paragraphs (b)(1) and (b)(2), while removing the
seven-day requirement of former Sec. 1.19(b)(1) for processing copy
requests.
Paragraph (b)(1) of Sec. 1.19 sets forth the fees for a copy of a
patent application as filed, or a patent-related file wrapper and
contents, that is stored in paper in a paper file wrapper, or in an
image format in an image file wrapper. In paragraph (b)(1) of Sec.
1.19, three sets of fees are set forth. Paragraph Sec. 1.19(b)(1)(i)
sets forth the fees for documents supplied on paper, with different
fees for an application as filed, a file wrapper and contents of a
patent application up to 400 pages, an additional fee for each set of
additional pages of a file wrapper and contents, and an individual
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document. Paragraph 1.19(b)(1)(ii) sets forth the fees for documents
supplied on compact disc, or on another physical electronic medium,
with different fees for an application as filed, and for a file wrapper
and contents of a patent application. Pursuant to Sec.
1.19(b)(1)(ii)(C), if the file wrapper and contents or the individual
document requires more than a single electronic medium (e.g., a compact
disc) to hold all the pages in a single order, then a fee of $15.00
will be required for each continuing electronic medium. Paragraph
1.19(b)(1)(iii) sets forth the fees for documents supplied
electronically other than on compact disc or other physical electronic
medium. Paragraph 1.19(b)(1)(iii) fees would apply to copies supplied
by electronic mail, or otherwise over the Internet. Lengthy documents,
however, will not be transmitted electronically. For example, a
document over one hundred megabytes, or a document that will take
longer than twenty minutes to transmit over a slow speed transfer, will
not be transmitted, but will, instead, be provided on physical
electronic media, by mail.
The addition of Sec. 1.19(b)(1)(ii)(B) permits the Office to
supply the file wrapper and contents including the prosecution history
of an application on a compact disc for $55 rather than on paper for
the paper rate of $200 for the first 400 pages and additional amounts
for extra pages.
A "document" according to paragraph 1.19(b)(1)(i)(D) would
include the transmittal paper for an Information Disclosure Statement
(IDS) and the list of references cited (e.g., PTO-SB08 or 1449 form),
but the individual references included with the IDS would be separate
documents. Also, each individual volume of a multi-volume reference
would be a separate document. U.S. patent and U.S. patent application
publication references are not stored in the IFW as part of the
application file and would not be included with an order for a copy of
the file contents, but can be purchased separately, with the fee set
forth in Sec. 1.19(a). Individual documents maintained in the
electronic file, other than the patent application as filed, are not
available to be purchased electronically because individual documents
in the electronic file may be different, and much smaller, documents
than in the paper file (an amendment would be one document in paper,
but separated into different documents, "Remarks", "spec" and "claims",
e.g., in the electronic file), and the different definition of the
documents would lead to confusion. In addition, since the fees charged
for electronic documents are much smaller than for paper documents,
requiring the entire file wrapper to be purchased for $55.00 is more
efficient than allowing one or two documents to be purchased from a
large file.
Paragraph 1.19(b)(2) sets forth the fees for patent-related file
wrapper contents that were submitted on compact disc, or in electronic
form, and not stored in paper in a paper file wrapper, or in an image
format in an IFW. Such patent-related file wrapper contents that are
not stored in paper, or in an image format, include a Computer Readable
Form (CRF) of a Sequence Listing, a table, or a computer program
listing submitted on a compact disc pursuant to Sec. 1.52(e)(1). Such
items are stored in an Artifact Folder which is associated with a
patent application. In paragraph 1.19(b)(2)(i) a fee is set forth for a
copy of such an item if provided on a compact disc, and in paragraph
1.19(b)(2)(ii) a fee is set forth for a copy of such an item is
provided electronically (e.g., by electronic mail) other than on a
physical electronic medium. Paragraph 1.19(b)(2) does not apply to
other documents that are stored in an Artifact Folder, and not stored
in an IFW in image form, such as documents (blueprints and other
oversized documents, or documents that are illegible) that could not be
scanned. The fee for such documents is set forth in Sec. 1.21(k).
Prior Secs. 1.19(b)(1) and (2) did not provide for supplying
copies of the non-paper (or image) portion of a file wrapper (e.g.,
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compact discs or electronically filed applications). Under prior
practice, for example, copies of compact discs associated with a file
wrapper would have been ordered under prior Sec. 1.19(b)(3) and were
not provided with an order for the paper portion of a file wrapper
under prior Secs. 1.19(b)(1) or 1.19(b)(2). Nothing in these rule
changes will change the practice of a separate order being required for
documents or materials not maintained in the paper file wrapper or IFW,
except that the fee is now set forth in Sec. 1.19(b)(2). Paragraph (D)
is added to Sec. 1.19(b)(1)(i) to provide for copies of an individual
document instead of an entire file wrapper. The fee for copies of other
items not in the IFW portion of a file wrapper (e.g., blueprints or
documents that cannot be scanned, microfiche, and video cassettes) is
an at-cost fee as set forth in Sec. 1.21(k). In the event the Office
cannot fill an order solely from the IFW, and must complete an order in
part by copying a document in an Artifact Folder or paper file, the fee
under Sec. 1.21(k) (e.g., at cost for blueprints) will apply, except
that the fee for compact disc copies under Sec. 1.19(b)(2) will apply
to any copies of compact discs maintained in the Artifact Folder
corresponding to the IFW, or paper application file.
Patent applications and patents should reference any compact discs
that are a part of the application specification. The public should
therefore review the specification to determine if an order for compact
discs should be included with an order to obtain the contents of an
application or file wrapper. Other items or materials associated with a
file wrapper (e.g., blueprints, video cassettes, compact discs, or
exhibits which are not part of the specification) may not be referenced
in the specification of an application or patent. Apart from an
Artifact Sheet, the Office does not maintain an index of other items or
materials associated with any specific file wrapper. Accordingly, the
public should carefully review the contents of a file wrapper to
determine if other items or materials associated with a file wrapper
need to be separately ordered. If the application is maintained in the
IFW system, then documents that cannot be scanned will be maintained in
an Artifact Folder, and the fee for obtaining copies of such documents
is set forth in either Sec. 1.19(b)(2) (copies of compact discs) or
Sec. 1.21(k). For example, an application that is not filed on the
appropriate size paper, or that cannot be scanned, will not be added to
the IFW and will be treated as an artifact, and maintained in a
separate "Artifact Folder." The fee for obtaining a copy of such a
document that could not be scanned is set forth in Sec. 1.21(k) (at
cost). In order to avoid significant delays and expense in obtaining a
certified copy of an application as originally filed, applicants should
ensure that application papers are legible and may be accurately
reproduced.
Although neither paragraph (b)(1)(iii) nor paragraph (b)(2)(ii) of
Sec. 1.19 expressly contains a size limitation for high speed
transmission, e.g., DSL or cable connectivity, or a time limitation for
slower connectivity, the Office is concerned about the ability to
maintain a connection for a larger file size or longer transmission
period. Currently, 100 MB is the limit adopted for the Office's EFS
software. Accordingly, if the document has a file size of, for example,
100 MB or greater, the document will not be transmitted electronically,
and instead will be copied onto a compact disc or other physical
electronic media and mailed to the requester. The Office does not want
to tie up Office resources for long unreliable file transfer
transmissions.
The subject matter of former paragraph 1.19(b)(3) has been moved to
paragraph (b)(2)(i), except that a copy provided on a physical medium
such as a compact disc is no longer limited to information that was
originally submitted on a compact disc. Former paragraph 1.19(b)(4) has
been reworded as "Copy of Office records, except copies available
under (1) or (2) of this paragraph" to clarify that records such as a
part of an application's image file wrapper that can be purchased
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pursuant to paragraph 1.19(b)(1) or (2) must be ordered pursuant to
those paragraphs, and renumbered as paragraph 1.19(b)(3). Paragraph
1.19(b)(5) has been renumbered as paragraph 1.19(b)(4).
Section 1.19(g) had been proposed to be added to provide for
copying items or material that is not image scanned, but the new
paragraph has not been added because the fee has been determined to
already be set forth in Sec. 1.21(k). Items such as large blueprints,
microfiche, and video cassettes cannot be scanned as electronic image
equivalents, and an average cost for pricing cannot be computed in
advance, because the demand for such copies is so infrequent.
Furthermore, documents that were too light to be scanned or that
provide insufficient contrast to be scanned will not be added to the
IFW system because they would not be useful in the IFW system. In
addition, the Office will not conduct special processing of documents
to put the documents into IFW, but will instead require applicants to
resubmit the documents in compliance with Office rules. The Office will
charge the actual cost of the special processing required to copy these
items or materials pursuant to Sec. 1.21(k).
Section 1.19(g) provides for a mechanism for requesting copies of
documents in a form other than that normally provided by the Office.
The copies are provided at cost. For example, the Office will normally
provide copies of documents that are over 20 pages, if the application
has an IFW, on an electronic medium such as a compact disc, even if
paper was requested. If the Office-stored documents are in paper,
rather than image form, paper will generally be provided unless the
document is voluminous. A petition would be required for the order to
be filled in paper, and in such an instance either an at cost fee, or
the fee set forth in 35 U.S.C. 41(d)(2), would be required, as
appropriate. Another example is the instance where a copy of an application
is so voluminous that many boxes of compact discs are required to fill
the order. If compact discs are the normal electronic medium in which
such an order would be filled, a requester could petition that the
order be filled on another media such as a DVD media. Such petitions
would be decided under Sec. 1.19(g) based upon the ability of the
Office to provide the requested service and the adverse impact to the
Office and the public from diverting resources to fulfilling the order.
Comment 23: A comment noted that the rule change preamble indicates
that this is a clarification that the Office will provide copies of
documents in electronic image form at the Office's option but that the
rule itself fails to reflect this.
Response: The comment has been adopted and Sec. 1.19(b) now
explicitly provides that documents are to be provided in paper or in
electronic form as determined by the Director.
Comment 24: A comment noted that the Office was considering
eliminating additional page fees and adopting a single fee concept for
copies but the comment refused to endorse the idea without a numerical
analysis of the costs and fees.
Response: Since the Office did not receive support for eliminating
the additional page fees for copies of application files provided on
paper that exceed 400 pages, the additional fee was retained.
Comment 25: One comment requests that the contents of applications
be available on the Office's Internet Web site at no cost.
Response: The Office now provides free electronic access to many
electronic records for published applications, and applications that
have issued as patents through the public PAIR system. In the summer of
2004, this access will be expanded to include access to the IFW
(excluding non-patent literature) of any application that is available
through public PAIR. A private version of this tool already provides
access to IFW applications.
Comment 26: One comment observes that the rule making does not
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provide the cost basis for the fees and contends that fees should be
lower for making copies from IFW.
Response: The fee provisions have been revised to base the fee on
how the copy is supplied instead of how the copy is obtained from
Office records. Thus, the provisions of Sec. 1.19(b) are linked to
supplying copies on paper (Sec. 1.19(b)(1)(i)), or electronically
(Secs. 1.19(b)(1)(ii) or 1.19(b)(1)(iii)). This is because the
Office expects to have converted most of its pending paper application
files to IFW by September 2004. As indicated, the Office intends to
supply a copy in electronic or paper form based upon the factors of
expediency and cost-effectiveness, and applicants are expected to, on
the whole, be paying lower fees for copies as copies will generally be
supplied in electronic form, which have lower fees than paper copies.
In addition, since the fee for certification of a document has been
eliminated, customers will be spared that fee as well. All documents
provided pursuant to Sec. 1.19(b) will be certified.
Comment 27: One comment urged a trial period for the electronic
form of documents and methods of reducing costs by changing the way
documents are stored.
Response: The comment was not adopted. As the Office becomes more
experienced with the IFW system, and accustomed to providing documents
electronically, the Office does not object to revising the rules and
practices to reflect any reduced costs.
Comment 28: One comment stated that electronic files are unusable.
Response: The Office experience is that electronic image files are
usable provided that the user employs appropriate hardware and software
which is readily available in the marketplace. Users who attempt to use
electronic files with hardware and software not adapted to the task of
viewing electronic image files will of course have difficulty.
Section 1.27: Section 1.27 is amended to make certain clarifying
changes. The changes clarify that: (1) a security interest held by a
large entity is not a sufficient interest to bar entitlement to small
entity status unless the security interest is defaulted upon; (2) the
requirements for small business concerns regarding non-transfer of
rights and the size standards of the Small Business Administration are
additive; and (3) business concerns are not precluded from claiming
small entity status merely because they are located in or operate
primarily in a foreign country.
Section 1.27(a) is amended to add a new paragraph (a)(5) which
states that a security interest does not involve an obligation to
transfer rights in the invention unless the security interest is
defaulted upon. Questions have arisen as to whether a security interest
held by a large entity in a small entity's application or patent is a
sufficient interest to prohibit claiming small entity status. For
example, an applicant or patentee may take out a loan from a large
entity banking institution and the loan may be secured with rights in a
patent application or patent of the applicant or patentee,
respectively. The granting of such a security interest to the banking
institution is not a currently enforceable obligation to assign, grant,
convey, or license any rights in the invention to the banking
institution. Only if the loan is defaulted upon will the security
interest permit a transfer of rights in the application or patent to
the banking institution. Thus, where the banking institution is a large
entity, the applicant or patentee would not be prohibited from claiming
small entity status merely because the banking institution has been
granted a security interest, but if the loan is defaulted upon, there
would be a loss of entitlement to small entity status. Pursuant to
Sec. 1.27(g), notification of the loss of entitlement due to default
on the terms of the security interest would need to be filed in the
application or patent prior to paying, or at the time of paying, the
earliest of the issue fee or any maintenance fee due after the date on
which small entity status is no longer appropriate.
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Section 1.27 was proposed to be amended to revise paragraphs
(a)(1), (a)(2)(i), and (a)(3)(i) to change "obligation" to
"currently enforceable obligation." In view of a comment that was
received, Sec. 1.27 is not being amended to revise paragraphs (a)(1),
(a)(2)(i), and (a)(3)(i) to change "obligation" to "currently
enforceable obligation." Instead, Sec. 1.27(a) is amended to add new
paragraph (a)(5) which states that a security interest does not involve
an obligation to transfer rights in the invention unless the security
interest is defaulted upon. The addition of paragraph (a)(5) is
intended to clarify that a security interest in an application or
patent held by a large entity would not be a sufficient interest to bar
entitlement to small entity status unless the security interest is
defaulted upon. The change does not result in any change to the
standards for determining entitlement to small entity status.
A few additional examples will further clarify when small entity
status is or is not appropriate.
Example 1: On January 2, 2002, an application is filed with a
written assertion of small entity status and the small entity filing
fee is paid. Applicant is entitled to claim small entity status when
the application is filed. Thereafter, the application is allowed and
the small entity issue fee is timely paid on October 1, 2002. On
October 2, 2002, applicant signs a license agreement licensing rights
in the invention to a large entity. On October 1, 2002, applicant had
not transferred any rights in the invention, and was
under no obligation to transfer any rights in the invention, to any
other party who would not qualify for small entity status.
Analysis: The payment of the small entity issue fee would be proper
as long as the applicant was under no obligation on October 1, 2002, to
sign the license agreement with the large entity.
Example 2: An applicant, who would otherwise qualify for small
entity status, executes an agreement with a large entity. The agreement
requires the applicant to assign a patent application to the large
entity sixty days after the application is filed. Thereafter, the
application is filed.
Analysis: Since the applicant is under an existing obligation to
assign the application to a large entity, the applicant would not be
entitled to claim small entity status. The applicant would need to pay
the large entity filing fee even though the actual assignment of the
application to the large entity may not occur until after the date of
payment of the filing fee.
Section 1.27(a)(1) is amended to omit the comma after
"invention)" in the first sentence. The second sentence of Sec.
1.27(a)(1) has been amended to add the phrase "in the invention to one
or more parties" after the first occurrence of "rights."
Furthermore, Sec. 1.27 is amended to change the period at the end
of paragraph (a)(2)(i) to "; and" to clarify that paragraphs
(a)(2)(i) and (a)(2)(ii) are additive requirements and a party seeking
to qualify as a small business must meet the requirement as to transfer
of rights as well as the Small Business Administration size standards.
Section 1.27(a)(2)(ii) is amended to change "[m]eets the standards
set forth in 13 CFR part 121" to "[m]eets the size standards set
forth in 13 CFR 121.801 through 121.805 to be eligible for reduced
patent fees."
Questions have also arisen as to whether a small business concern
must have a place of business located in the United States, and operate
primarily within the United States, or make a significant contribution
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to the United States economy through the payment of taxes or use of
American products, materials or labor (13 CFR 121.105) to be eligible
to pay reduced patent fees under 35 U.S.C. 41(h). When the provisions
of 35 U.S.C. 41(h) (Public Law 97-247, 96 Stat. 317 (1982)) were
implemented in 1982, a suggestion that foreign concerns not be eligible
to pay reduced patent fees under 35 U.S.C. 41(h) was considered and
rejected because excluding foreign concerns would violate United States
treaties in the patent area. See Definition of Small Business for
Paying Reduced Patent Fees Under Title 35, United States Code, 47 FR
43272 (Sept. 30, 1982), 1023 Off. Gaz. Pat. Office 27 (Oct. 19, 1982)
(final rule). Specifically, a provision that foreign concerns are not
eligible to pay reduced patent fees under 35 U.S.C. 41(h) would violate
Article 2 of the Paris Convention for the Protection of Industrial
Property, which provides that nationals of any Paris Convention country
shall, as regards the protection of industrial property, enjoy in all
the other Paris Convention countries the advantages that their
respective laws grant to nationals of that country. Therefore, a
business concern which meets the small business size standards set
forth in 13 CFR 121.801 through 121.805 and complies with applicable
Office procedures is and continues to be eligible to pay reduced patent
fees under 35 U.S.C. 41(h), even if the business concern is located in
or operates primarily in a foreign country.
Comment 29: One comment stated that the Office should draft its own
rules for small business concerns so that they would be easier to find
and follow and thus allow for a clearer understanding of the
qualifications and standards that are required.
Response: Public Law 97-247 gave the Small Business Administration
(SBA) the authority to establish the definition of a small business
concern. 35 U.S.C. 41(h)(1) states that "[f]ees charged under
subsection (a) or (b) shall be reduced by 50 percent with respect to
their application to any small business concern as defined under
section 3 of the Small Business Act, and to any independent inventor or
nonprofit organization as defined in regulations issued by the
Director." Thus, the Office does not have the statutory authority to
draft its own rules for small business concerns. Reproducing the
pertinent SBA regulations in patent materials would be unduly
burdensome upon the Office, particularly as it would need to constantly
monitor SBA rule changes.
Comment 30: One comment stated that the change from "standards"
to "size standards" should be made retroactive to the effective date
of the first small entity regulations. The comment stated that if the
amendment is not made retroactive, "it would imply that the amendment
is a change of law, not a clarification of the existing law."
Response: This rule change is a clarification of existing practice
regarding the requirements to claim small entity status, and is not a
change in practice.
Comment 31: One comment requested that the Office explicitly
confirm that it is not necessary for a business entity that does not
operate primarily within the United States to make a significant
contribution to the U.S. economy through payment of taxes or use of
American products, materials or labor as set forth in 13 CFR 121.105(a)
in order to be considered a small business concern.
Response: As indicated above, a business concern only has to meet
the small business requirements set forth in 13 CFR 121.801 through
121.805 and comply with applicable Office procedures. Therefore, it is
not necessary for a business entity that does not operate primarily
within the United States to make a significant contribution to the U.S.
economy through payment of taxes or use of American products, materials
or labor as set forth in 13 CFR 121.105(a) in order to be considered a
small business concern.
Comment 32: One comment stated that the Office should waive for a
limited time the three-month time limit in Sec. 1.28(a) for refund
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requests made by an applicant who transferred U.S. rights to a foreign
business entity that met the size standards in 13 CFR 121.801 through
121.805, but who did not claim small entity status because the foreign
business entity was not a business concern as defined in 13 CFR
121.105(a). The waiver is deemed justified since whether a foreign
business concern made a significant contribution to the U.S. economy
never did affect eligibility to pay reduced patent fees and applicants
may have been misled by previous statements by the Office to the
contrary. See Changes to Implement the Patent Business Goals, 65 FR
54603, 54612 (Sept. 8, 2000), 1238 Off. Gaz. Pat. Office 77, 85 (Sept.
19, 2000) (final rule).
Response: The suggestion is not adopted. If an applicant disagreed
with the Office's interpretation of the small business provisions, the
applicant should have challenged it at the time of fee payment. By
paying the fees in the large entity amount, applicant acquiesced in the
position that was held by the Office at that time.
Comment 33: One comment stated that adding the phrase "currently
enforceable obligation" appears to have consequences beyond removing a
security interest from being an obligation to transfer rights. As an
example, the comment stated that an agreement that provided that an
employee was obligated to assign the entire right, title and interest
in the invention to an employer on or after the date of issue of the
patent would not be enforceable before the patent was issued, and thus
the inventor would be able to claim small entity status regardless of
whether the employer was a small business concern.
Response: The comment has been adopted. The Office only intends to
address the issue of security interests and does not want to
unintentionally cover other situations. Therefore, as indicated above,
Sec. 1.27(a) has not been amended to include the phrase "currently
enforceable obligation" as was originally proposed. Instead, a new
paragraph (a)(5) has been added which states that a security interest
does not involve an obligation to transfer rights in the invention for
the purposes of paragraphs (a)(1) through (a)(3) unless the security
interest is defaulted upon. In the example provided in the comment, the
inventor would not be able to claim small entity status if the employer
was a large business concern. This is because the employee would be
under an existing obligation to assign the entire right, title and
interest in the invention to the employer, even though the employee
would not have to do so until after the patent has issued.
Comment 34: One comment suggested that the comma after
"invention)" in the first sentence of Sec. 1.27(a)(1) should be
omitted since the comma appears out of place.
Response: The suggestion has been adopted.
Comment 35: One comment stated that the punctuation of the second
sentence of proposed Sec. 1.27(a)(1) seems awkward. Alternative
suggestions to reword the sentence were made. One suggestion was to
place the second comma after the second occurrence of "rights." The
other suggestion was to add the phrase "in the invention to one or
more parties" after the first occurrence of "rights."
Response: The suggestion to reword the second sentence has been
adopted. The phrase "in the invention to one or more parties" has
been added after the first occurrence of "rights" in the second
sentence.
Comment 36: Two comments requested that the Office clarify whether
or not an applicant is entitled to small entity status where the
invention is software and applicant licenses the software to a large
entity through shrink-wrap licenses or otherwise. One of these comments
also asked whether "rights in the invention" only constitute the
exclusionary rights that a patent provides or whether it also includes
a right to use the embodiments of the invention.
Response: As stated in MPEP Sec. 509.02, "[r]ights in the
invention include the right to exclude others from making, using,
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offering for sale, or selling the invention throughout the United
States or importing the invention into the United States." MPEP Sec.
509.02 also states that "[i]mplied licenses to use and resell patented
articles purchased from a small entity * * * will not preclude the
proper claiming of small entity status." Thus, a distinction exists
between rights in the application or patent and the use of the patented
product. The use of a patented product by a large entity does not
affect small entity status. On the other hand, rights in an application
or patent by a large entity would preclude the claiming of small entity
status. If the shrink-wrap license only licenses the use of a patented
product by a large entity and does not grant any ownership rights in
the patent to the large entity, then it would not preclude the claiming
of small entity status.
Section 1.47: Section 1.47(a) and (b) are amended to refer to the
petition fee set forth in Sec. 1.17(g) for consistency with the change
to Sec. 1.17. See discussion of Sec. 1.17 for comments related to the
changes in the petition fees.
Section 1.52: Section 1.52, paragraphs (b)(2)(ii) and (e), are
amended.
Section 1.52, paragraphs (b)(1)(ii) and (d)(1) were proposed to be
amended to require that the statement that the translation is accurate
be signed by the individual who made the translation, but these
proposed changes have not been included in the final rule as the
changes are not deemed to be necessary in view of the requirements of
Sec. 10.18, as explained below. See also Secs. 1.55(a)(4),
1.69(b) and 1.78(a)(5)(iv).
Section 1.52(e)(1)(iii) is amended to allow greater flexibility in
filing tables on compact disc, so that compact disc files may be used
instead of paper where the total number of pages collectively occupied
by all the tables in an application exceeds one hundred. Also, Sec.
1.52(e)(1)(iii) is clarified to be consistent with tables submitted on
paper as to what constitutes a page. Section 1.52(e)(3)(i) is
amended to recite that CD-R discs should be finalized so that they are
closed to further writing. Finally, Sec. 1.52(e)(3)(ii) is clarified
to indicate that landscape orientation of a table is an example of
special information needed to interpret a table that is to be provided
on a transmittal letter.
Section 1.52(b)(2)(ii) is revised to recommend that the font size
of text be at least a font size of 12, which is approximately 0.166
inches or 0.422 cm. high. Section 1.52(b)(2)(ii) requires that the text
be in a lettering style that is at least 0.08 inches high, which is the
font size set forth in Patent Cooperation Treaty (PCT) Rule 11.09. A
font size of only 0.08 inches, however, leads to difficulty in
capturing text with optical character recognition technology and may
not be reproducible as required by Sec. 1.52(a)(1)(v) (and PCT Rule
11.2(a)). A font size of 12 (0.422 cm. or 0.166 inch high) is
significantly more reproducible. Accordingly, Sec. 1.52(b)(2)(ii) is
amended to indicate a preference for a larger font size. See Sec.
1.58(c) for a similar change.
Section 1.52(e)(1)(iii) is amended to allow tables of any size when
there are multiple tables on compact disc if the total number of pages
of tables exceeds one hundred pages. Since permitting the filing of
tables on compact disc, the Office has received voluminous applications
having large numbers of tables, each of which are under 50 pages in
length. Applicants have indicated that it would be less burdensome
filing these small tables on compact disc (CD). Accordingly, the rule
is being liberalized while balancing the convenience of the Office and
the public to view the document with the least burden imposed by dual
media (i.e., paper specification and tables on compact disc). The extra
bulk of a few extra pages of paper specification is usually less burden
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than having to go to a CD for the additional pages.
Section 1.52(e)(1)(iii) is also amended to clarify what constitutes
an electronic page so as to determine compliance with the fifty- and
one hundred-page requirement for submission of tables on compact disc.
Further clarification is provided in Sec. 1.52(e)(3)(i) as to what
is a permanent CD. Recordable CDS can be made for recording in a single
recording session or in multiple recording sessions. To further assure
the archival nature of the discs, the requirement that recordable CDS
be finalized so that they are closed to further recording is added to
Sec. 1.52(e)(3)(i). Further, many older CD-ROM drives and audio CD
players have compatibility problems with un-finalized CDS. This change
will ensure that the public and the Office will be able to use
identical copies of any CDS filed with older CD-ROM drives.
The Office is actively investigating allowing the submission of
other file formats, such as the Continuous Acquisition and Life-Cycle
Support (CALS) XML format, in addition to the current ASCII format.
Before allowing the use of a particular file format, the Office must
verify that applicants will have the tools to create files easily that
are of archival format and quality, and can be rendered to be viewable
both by the Office users and later by the public when the application
is published. Problems involving file size limitations,
software display, and availability of adequate table creation software
are delaying implementation at this time. The Office intends to broaden
Sec. 1.52 to allow at least CALS format tables when these problems are
resolved. Technical specifications and a discussion of operability
issues for the CALS table format may be found at the OASIS, i.e.,
Organization for the Advancement of Structured Information Standards,
Web site pages http://www.oasis-open.org/cover/tr9502.html and
http://www.oasis-open.org/specs/a501.htm.
The Office is also reviewing the acceptability of DVD media. At
present, there are several different types of recordable DVD media and
it is unclear which, if any, will become a standard archival format.
Also, the Office is upgrading its capabilities to include the ability
to read at least some types of DVD media. It does not appear, however,
that any DVD readers can be procured that will be able to read all of
the different types of DVD media that are now in the marketplace. The
Office is considering allowing submissions on at least some types of
DVD media when it becomes clear which types of DVD media are to be
recognized as being an archival quality and are compatible with Office
hardware and software.
Section Sec. 1.52(e)(3)(ii) is clarified to indicate that
landscape orientation of a table is an example of special information
needed to interpret a table that should be provided on a transmittal
letter. The Office has received several patent applications which had
tens of thousands of pages of a landscape table that was inaccurately
rendered in portrait mode because the page orientation was not
identified. Most tables filed with patent applications are intended to
be rendered in portrait mode. Accordingly, filings without an
identification of landscape mode will continue to be rendered as
portrait mode tables.
Comment 37: Many comments indicated the proposed requirement was
unnecessary and impractical, particularly where the translation is of
an oath or declaration form, and the person who made the original
translation is no longer available.
Response: The suggestion to not include the proposed revision to
Sec. 1.52(b)(1)(ii) and (d)(1) has been adopted. On reconsideration,
the Office determined that the existing requirement that the statement
that the translation is accurate is subject to the provisions of Sec.
10.18, and as a result, such a statement would only be made if the
statement was known to be true, or believed to be true, and such a
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conclusion would only be made after an inquiry, reasonable under the
circumstances, was made.
Comment 38: One comment stated that there is much confusion between
correlating font size in points to size of capital letters in inches.
When a font is referred to in points, the points measure the height
from the top of the ascenders to the bottom of the descenders. Often,
this can be measured by printing "fg" and measuring the height in
inches from the top of the "f" to the bottom of the "g". Thus, a
capital A in Times New Roman in 12 point font has a height of about
0.125, not 0.166 in.
Response: The suggestion has been adopted and 0.166 has been
changed to 0.125, and 0.422 changed to 0.3175. The Office agrees that
there is much confusion about how to measure font sizes and notes that
the ascenders and descenders rule is not always followed. A point in
font size corresponds to 1/72 of an inch (Webster's Ninth New
Collegiate Dictionary defines point as "a unit of measurement of about
1/72 inch used especially to measure the size of the type"). The
comment is correct in that the measurement is generally taken from the
top of an "f" to the bottom of a "g," and that for a 12-point font
this measurement should be 12/72 of an inch or 0.166 inch. A 12-point
font is a font size that can be chosen on most word processing
software, and will result in a reproducible specification, whereas 5-
and 6-point fonts are generally not legible.
Comment 39: It was requested that the Office encourage the
submission of tables in electronic form by eliminating the page length
requirement of Sec. 1.52(e)(1)(iii) since they cannot be accurately
scanned.
Response: The comment was not adopted. The final rule page limits
apply to tables submitted on compact disc as part of a paper
application. Tables submitted electronically via the Office's EFS are
not subject to the page limits of the final rule.
The proposed lower page limit was carried forward in the final rule
for compact disc filings to encourage filing of tables in electronic
form when the overall size of the filing is large. A complete
elimination of a lower page limit was not adopted for several reasons.
First, certain small tables in paper, such as an index to the tables on
a compact disc, make patent documents and the electronic files more
usable than if all tables are on the compact disc. Second, it is
difficult to quantify a benefit that justifies forcing the public to
incur the additional cost and effort to review an application with a
small number of tables stored as electronic tables on compact disc.
Similarly, there is an additional cost with no apparent savings for the
Office to process and store the compact discs when an application
contains only a few small tables.
Comment 40: One comment indicated that the proposed clarification
of page size does not give guidance as to whether the table is intended
for landscape or portrait rendering. It was suggested that the few
landscape tables that are filed be identified in the transmittal
letter.
Response: The comment was adopted. The existing rule in Sec.
1.52(e)(3)(ii) requires the transmittal letter to contain any special
information necessary to interpret the tables. This section has been
clarified to give landscape orientation as an example of special
information needed to interpret the tables, that may be required by the
Office if not initially supplied.
Section 1.53: Section 1.53(e)(2) is amended to refer to the
petition fee set forth in Sec. 1.17(f) for consistency with the change
to Sec. 1.17. See discussion of Sec. 1.17 for comments related to the
increase of the petition fees.
Section 1.57: Section 1.57 is added to provide for incorporation by
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reference. Section 1.57(a) provides that, if all or a portion of the
specification or drawing(s) is inadvertently omitted from an
application, but the application contains a claim under Sec. 1.55 for
priority of a prior-filed foreign application, or Sec. 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 for priority or benefit would be considered an incorporation by
reference of the prior-filed application as to the inadvertently
omitted portion of the specification or drawings. Sections 1.57(b)
through (e) treat incorporation by reference into an application of
essential and nonessential material by: (1) providing a definition of
essential and nonessential material; (2) defining specific language
that must be used to trigger an incorporation by reference; (3)
codifying the incorporation by reference practice as set forth in MPEP
Sec. 608.01(p), with a few changes to reflect the eighteen-month
publication of applications. Section 1.57(f) treats how any insertion
of previously incorporated by reference material must be added to the
specification or drawings of an application. Section 1.57(g) codifies
the treatment of a noncompliant incorporation by reference.
It has been held that the mere reference to another application is
not an incorporation of anything therein into the application
containing such reference for the purpose of the disclosure under 35
U.S.C. 112, para. 1. See MPEP Secs. 201.06(c) and 608.01(p), and In re
de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA 1973). Newly added Sec.
1.57(a), however, now allows for all or a portion of the specification
or drawings that is inadvertently omitted from an application
containing a priority claim for a prior-filed foreign application, or a
benefit claim for a prior-filed provisional, nonprovisional, or
international application, to be added to the application by way of a
later filed amendment if the inadvertently omitted portion of the
specification or drawings is completely contained in the prior-filed
application even though there is no explicit incorporation by reference
of the prior-filed application. The phrase "completely contained" in
Sec. 1.57(a) requires that the material to be added to the application
under Sec. 1.57(a) must be expressly (as opposed to implicitly)
disclosed in the prior application. Cf. PLT Rule 2(4)(iv). The claim
for priority or benefit must be present on the filing date of the
application in order for it to be considered an incorporation by
reference of the prior-filed application under Sec. 1.57(a).
Furthermore, the material to be added to the application under Sec.
1.57(a) must be completely contained in the prior-filed application as
filed since it is the prior application as filed which is being
incorporated under Sec. 1.57(a). The nonprovisional application
claiming benefit can be a continuation, divisional, or continuation-in-
part of the prior application for which benefit is claimed. The purpose
of Sec. 1.57(a) is to provide a safeguard for applicants when a
page(s) of the specification, or a portion thereof, or a sheet(s) of
the drawing(s), or a portion thereof, is inadvertently omitted from an
application, such as through clerical error.
Section 1.57(a)(1) provides that, if all or a portion of the
specification or drawing(s) is inadvertently omitted from an
application, 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 (should the omission first be noticed
by the Office and applicant informed thereof), but in no case later
than the close of prosecution as defined by Sec. 1.114(b), or the
abandonment of the application, whichever occurs earlier (should
applicant be the first to notice the omission and the Office informed
thereof). The phrase "or the abandonment of the application" is
included in Sec. 1.57(a)(1) to address the situations where an
application is abandoned prior to the close of prosecution, e.g., the
situation where an application is abandoned after a non-final Office
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action, as well as, the situation where an international application is
abandoned without entering the national stage in favor of a continuing
application under 35 U.S.C. 111(a) claiming the benefit under 35 U.S.C.
120 of the international application, and thus prosecution was never
closed in the international application as defined by Sec. 1.114(b)
prior to abandonment of the international application. In order for the
omitted material to be included in the application, and hence
considered to be part of the disclosure, the application must be
amended to include the omitted portion. While an amendment to include
inadvertently omitted material may be submitted in reply to a final
Office action or rejection which first raises the issue of the omitted
material, such an amendment does not have a right of entry as it would
be considered as an amendment under Sec. 1.116.
In addition, Sec. 1.57(a)(1) also requires the applicant to supply
a copy of the prior-filed application, except where the prior-filed
application is an application filed under 35 U.S.C. 111; to supply an
English-language translation of any prior-filed application that is in
a language other than English; and to identify where the inadvertently
omitted portion of the specification or drawings can be found in the
prior-filed application.
Section 1.57(a)(2) provides that any amendment to an international
application pursuant to Sec. 1.57(a) would 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 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 (Sec.
1.491) or the filing of an application under 35 U.S.C. 111(a) which
claims benefit of the international filing date. This language in Sec.
1.57(a)(2) as to when the Office may act upon an amendment under Sec.
1.57(a) is necessary in order to provide for timely processing of the
amendment by the Office in the event that commencement of the U.S.
national phase occurred prior to the expiration of the time limit under
PCT Article 22(1) of (2), or Article 39(1)(a), pursuant to 35 U.S.C.
371(f), or that an application claiming benefit of the international
application was filed well prior to such time limit.
Section 1.57(a)(3) provides that, if an application is not entitled
to a filing date under Sec. 1.53(b), the amendment must be by way of a
petition accompanied by the fee set forth in Sec. 1.17(f). 35 U.S.C.
363 provides that "[a]n international application designating the
United States shall have the effect, from its international filing date
under Article 11 of the treaty, of a national application for patent
regularly filed in the Patent and Trademark Office * * * "
Accordingly, the international filing date of an international
application is its international filing date under PCT Article 11.
Consequently, the language of Sec. 1.57(a) makes it clear that the
incorporation by reference relief provided therein shall have no effect
on the international filing date of the international application and
cannot be relied upon to either accord an international filing date to
an international application that is not otherwise entitled to a filing
date under PCT Article 11, or to alter the international filing date
under Article 11 of an international application.
Section 1.57(a) is similar to the practice under MPEP Sec.
201.06(c), where there is an explicit incorporation by reference of a
prior U.S. application contained in the specification, or in the
application transmittal letter of a continuation or divisional
application filed under Sec. 1.53(b). See MPEP Sec. 201.06(c).
Section 1.57(a) is also consistent with Patent Law Treaty (PLT) Article
5(6)(b) and Rule 2(3) and (4).
Of course, applicants may continue to explicitly incorporate by
reference a prior application or applications by including, in the body
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of the specification as filed, a statement that the prior application
or applications is "hereby incorporated by reference." Such an
explicit incorporation by reference would not be limited to inadvertent
omissions as in Sec. 1.57(a). Accordingly, applicants are encouraged
to explicitly incorporate by reference a prior application or
applications by including such a statement in the body of the
specification, if incorporation is desired and appropriate.
Sometimes applicants intentionally omit material from a prior-filed
application when filing an application claiming priority to, or benefit
of, a prior-filed application. As discussed, Sec. 1.57(a) only permits
material that was inadvertently omitted from the application to be
added to the application if the omitted material is completely
contained in the prior-filed application. Therefore, applicants can
still intentionally omit material contained in the prior-filed
application from the application containing the priority or benefit
claim without the material coming back in by virtue of the
incorporation by reference of Sec. 1.57(a). Applicants can maintain
their intent by simply not amending the application to include the
intentionally omitted material. Thus, there should be no impact from
Sec. 1.57(a) in continuing applications where material from the prior
application has been intentionally omitted. Therefore, under Sec.
1.57(a), the application claiming benefit of a prior U.S. application
could be a continuation-in-part application (as well as a continuation
or divisional) depending upon the effect of omitting the material.
Example 1: A nonprovisional application was filed after the
effective date of Sec. 1.57 with a specification that refers to
Figures 1-4, but only Figures 1, 2, and 4 were submitted on filing.
Figure 3 was inadvertently omitted from the application on filing due
to a clerical error. The nonprovisional application contained a claim
for the benefit of an application filed prior to the effective date of
Sec. 1.57 (under either Sec. 1.55 or Sec. 1.78) that was present on
the filing date of the nonprovisional application, and the prior-filed
application contains omitted Figure 3.
Analysis: Applicant may rely on the incorporation by reference
provided by Sec. 1.57(a) to amend the nonprovisional application to
add Figure 3, but must do so within the time period set forth in Sec.
1.57(a)(1).
Example 2: A continuing application is filed which included a claim
for the benefit of a prior U.S. application on filing. The continuing
application refers to Figures 1-3 and corresponding Figures 1-3 were
submitted on filing. The prior-filed application contained Figures 1-4.
In filing the continuing application, the specification and drawings of
the prior application were changed by omitting Figure 3 and renumbering
Figure 4 as Figure 3 and omitting the portion of the specification that
described Figure 3 of the prior application.
Analysis: If applicant submits an amendment in the continuing
application to add Figure 3, and its corresponding description, from
the parent application relying on the incorporation by reference
provisions of Sec. 1.57(a), it should be expected that the Office
would question whether the omission was inadvertent.
Example 3: A continuation application is filed with a benefit claim
in the first sentence of the specification to the prior application
that acts as an incorporation by reference by virtue of Sec. 1.57(a)
as to inadvertently omitted material. Inadvertently omitted material is
submitted in the continuation by a preliminary amendment filed
subsequent to the filing date of the continuation application.
Analysis: A Sec. 1.67 supplemental oath or declaration
specifically referring to the preliminary amendment would not be
required.
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Section 1.57(a) does not apply to any applications (having
inadvertently omitted material) filed before the effective date of the
instant rule. Section 1.57(a) is prospective only since to apply the
rule retroactively would result in changing the expectations regarding
incorporation by reference by applicants when the applications were
filed. Thus, an application that inadvertently omits material must have
been filed on or after the effective date of the rule in order for the
rule to apply. Applicants may, however, rely on prior-filed
applications filed before the effective date of the rule to supply
inadvertently omitted material to applications filed on or after the
effective date of the rule.
Section 1.57(b) clarifies what is acceptable language that perfects
an incorporation by reference for essential and non-essential matter,
as opposed to incorporation by reference of material as the result of a
priority or benefit claim under Secs. 1.55 and 1.78 as set forth
in Sec. 1.57(a). Applicants sometimes refer to other applications,
patents, and publications, including patent application publications,
using language which does not clearly indicate whether what is being
referred to is incorporated by reference or is just an informational
reference. Section 1.57(b)(1) limits a proper incorporation by
reference (except as provided in Sec. 1.57(a)) to instances only where
the perfecting words "incorporated by reference" or the root of the
words "incorporate" (e.g., incorporating, incorporated) and
"reference" (e.g., referencing) appear. The Office is attempting to
bring greater clarity to the record and provide a bright line test as
to where something being referred to is an incorporation by reference.
The Office intends to treat references to documents that do not meet
this "bright line" test as noncompliant incorporations by reference
and may require correction pursuant to Sec. 1.57(g). If a reference to
a document does not clearly indicate an intended incorporation by
reference, examination will proceed as if no incorporation by reference
statement has been made and the Office will not expend resources trying
to determine if an incorporation by reference was intended.
The Office considered the alternative of making any mention of a
document an automatic incorporation by reference of the document.
Patent applications frequently contain a discussion of prior art
documents when discussing the background of the invention, wherein the
prior art documents are not intended to be incorporated by reference.
The necessity for Sec. 1.57(b) is that applicants who fail to clearly
link certain disclosures to means-plus-function language risk having
their claims interpreted too narrowly or held unenforceable. Clarifying
when material is incorporated by reference during examination by use of
specific trigger language is considered an aid to applicants when they
invoke 35 U.S.C. 112, para. 6. Applicants would be aided by avoiding
narrowed claim construction as a result of a number of court decisions
which would not look for equivalents outside of the application. See
Atmel Corp. v. Info. Storage Devices Inc., 198 F.3d 1374, 53 USPQ2d
1225 (Fed. Cir. 1999), and B. Braun Medical Inc. v. Abbott Lab, 124
F.2d 1419, 43 USPQ2d 1896 (Fed. Cir. 1997). Treating these documents as
automatically incorporated might result in unintended consequences such
as when a claim contains a means-plus-function limitation under 35
U.S.C. 112, para. 6.
Although the final rule permits incorporation by reference of
material for 35 U.S.C. 112, para. 6 purposes, it does not relieve an
applicant from providing a written description within an application
that an element disclosed in the document is an equivalent for the
purpose of 35 U.S.C. 112, para. 6. To the extent that applicants must
provide a written description within an application, the final rule is
considered consistent with Atmel Corp.
Similarly, applicants would be aided by not having their claims
found unpatentable by a mere reference to outside material
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unintentionally incorporating material that contained equivalents that
would broaden their claims to encompass the prior art. Automatic
incorporation by reference would create a trap for applicants and
practitioners by creating unintentional equivalents for 35 U.S.C. 112,
para. 6, thus causing language broadening claims to be unpatentable.
Additionally, as claims are generally read in light of the
specification, what is actually incorporated into the specification can
affect the scope of the claims independent of 35 U.S.C. 112, para. 6.
The Office considered expanding language that would be suitable for
a bright line test but no other language that did not have the root of
the words "incorporate" and "reference" was identified.
Paragraph (b)(2) of Sec. 1.57 requires that an incorporation by
reference include a clear identification of the referenced patent,
application, or publication. See Sec. 1.98(b)(1) through (b)(5) and
MPEP Sec. 602 for examples of ways to clearly identify a patent,
application, or publication. The Office recommends that particular
attention be directed to specific portions of referenced documents
where the subject matter incorporated may be found if large amounts of
material are incorporated. Guidelines for situations where applicant is
permitted to fill in a number for Application No. ______________ left
blank in the application as filed can be found in In re Fouche, 439
F.2d 1237, 169 USPQ 429 (CCPA 1971). Commonly assigned abandoned
applications less than 20 years old can be incorporated by reference to
the same extent as copending applications; both types are available to
the public upon the referencing application being published as a patent
application publication or issuing as a patent. See Sec.
1.14(a)(1)(iv) and (vi).
Section 1.57(c) codifies the practice in MPEP Sec. 608.01(p),
except that Sec. 1.57(c) is limited to U.S. patents or U.S. patent
application publications. According to past practice, an attempt to
incorporate by reference essential material found in a foreign patent
or non-patent literature is improper. The Office has eliminated the
practice of incorporating by reference essential material found in
unpublished applications in which the issue fee has been paid but the
application has not yet issued as a patent. Delays in issuance or the
possibility of withdrawal from issue of an allowed unpublished
application put in doubt that an application incorporated by reference
will be available to the public when a patent incorporating the other
application issues. The Office now permits incorporating by reference
essential material found in a U.S. patent application publication. This
provision permitting only the incorporation of the publication document
of an application is intended to preclude incorporation by reference of
material found only in the original patent application used to produce
a redacted portion of a published patent application, as well as where
the subject matter has been cancelled by amendment prior to
publication, and as a result, such subject matter is not reflected in
the patent application publication.
The effect of Sec. 1.57(c) is to change the prior practice of
permissible incorporation by reference in two situations. First, prior
practice permitted holding in abeyance correction of material
incorporated by reference from unpublished U.S. applications that have
not issued as patents until allowance of the application containing the
incorporation by reference. Publication of such applications which
contain an incorporation by reference, however, means that the public
will need access to the material incorporated by reference prior to an
application being issued as a patent. Where the incorporation is from
an unpublished application that has not issued as a patent, such
application may not be readily available and thus would impair the
public's access to the needed information. Therefore, holding the
correction of an incorporation by reference in abeyance until allowance
will no longer be permitted. Applicants should, therefore, correct any
ineffective incorporation(s) by reference prior to publication of their
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applications. Second, the Office considered but rejected including
unpublished abandoned applications which are open to the public under
Sec. 1.14(a)(iv) as acceptable documents to incorporate by reference
since the text of abandoned applications is not published on the
Internet after abandonment in a text searchable form.
The Office is considering how to make previously unpublished
applications to which the public is currently permitted access or a
copy pursuant to: (1) Sec. 1.14(a)(iv) (i.e., unpublished abandoned
application that are identified), or (2) Sec. 1.14(a)(vi) (i.e.,
pending applications that are incorporated by reference), available
through the public PAIR system in the Office's Internet Web site. The
Office may reconsider this position in the two situations when the text
of such applications is made available on the Office's Internet Web
site.
Section 1.57(c)(1) through (c)(3) defines essential material as
those items required by 35 U.S.C. 112, para. 1, 2, and 6.
Section 1.57(d) defines the scope of incorporation by reference
practice for other (nonessential) subject matter. The Director has
considerable discretion in determining what may or may not be
incorporated by reference in a patent application. See General Electric
Company v. Brenner, 407 F.2d 1258, 159 USPQ 335 (D.C. Cir. 1968).
Through the Office's incorporation by reference policy, the Office
ensures that reasonably complete disclosures are published as U.S.
patents and U.S. application publications. An incorporation by
reference by hyperlink or other form of browser executable code is not
permitted. Hyperlinked sources are not a reliable source for material
due to the constant changes in links and linked contents. Similarly,
executable code is not a reliable source for material to be
incorporated by reference. As computers and operating systems change,
executable code may not function on computers of the future and the
material incorporated by reference would be inaccessible, or improperly
interpreted. Executable code also poses security issues with respect to
automated systems that the Office cannot control.
The limits on incorporation of essential or nonessential material
under Secs. 1.57(c) or (d) do not extend to other requirements for
incorporation by reference set forth by the Office, such as under Sec.
1.52(e)(5).
Other Office requirements for incorporation by reference, such as
Sec. 1.52(e)(5) for compact discs containing computer program listings
or sequence requirements, are independent of the incorporation by
reference requirements under Secs. 1.57(c) or (d).
Additionally, the information added by the Office to its database
for patents, for example, noting that for a particular patent a lengthy
sequence listing is not reproduced in the text search database but can
be found at a web link, is not governed by the prohibition in Sec.
1.57(d). As the Office controls the content and the link addresses of
the database, the problems associated with applicant supplied URLs are
averted.
Section 1.57(e) is added so that it is clear that a copy of the
incorporated by reference material may be required to be submitted to
the Office even if the material is properly incorporated by reference.
The examiner may require a copy of the incorporated material simply to
review and to understand what is being incorporated or to put the
description of the material in its proper context. Another instance
where a copy of the reference may be required is where the material is
being inserted by amendment into the body of the application to replace
an improper incorporation by reference statement so that the Office can
determine that the material being added by amendment in lieu of the
incorporation is the same material as was attempted to be incorporated.
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Section 1.57(f) addresses corrections of incorporation by reference
by inserting the material previously incorporated by reference. A
noncompliant incorporation by reference statement may be corrected by
an amendment per Sec. 1.57(f). Nothing in Sec. 1.57(f) authorizes the
insertion of new matter into an application and a statement that any
amendment contains no new matter is required. Incorporating by reference
material that was not incorporated by reference on filing of an application
may be introducing new matter. The Office is concerned that improper
incorporation by reference statements and late corrections thereof
require the expenditure of unnecessary examination resources and slows
the prosecution process. Applicants know (or should know) whether they
want material incorporated by reference, and must timely correct any
incorporation by reference errors. Corrections must be done within the
time period set forth in Sec. 1.57(g). Improper incorporations such as
where a document cannot be identified cannot be corrected. See the
discussion of Sec. 1.57(g)(2).
Section 1.57(g) states that an incorporation by reference that does
not comply with paragraph (b), (c), or (d) of this section is not
effective to incorporate such material unless corrected within any time
period set by the Office (should the noncompliant incorporation by
reference be first noticed by the Office and applicant informed
thereof), but in no case later than the close of prosecution as defined
by Sec. 1.114(b) (should applicant be the first to notice the
noncompliant incorporation by reference and the Office informed
thereof), or abandonment of the application, whichever occurs earlier.
The phrase "or the abandonment of the application" is included in
Sec. 1.57(g) to address the situations where an application is
abandoned prior to the close of prosecution, e.g., the situation where
an application is abandoned after a non-final Office action.
Section 1.57(g)(1) authorizes the correction of noncompliant
incorporation by reference statements that do not use the root of the
words "incorporate" and "reference" in the incorporation by
reference statement. This correction cannot be made when the material
was merely referred to and there was no clear specific intent to
incorporate it by reference. Incorporating by reference material that
was not incorporated by reference on filing of an application may be
new matter.
Section 1.57(g)(2) states that a citation of a document can be
corrected where the document is sufficiently described to uniquely
identify the document. Correction of a citation for a document that
cannot be identified as the incorporated document may be new matter and
is not authorized by this paragraph. An example would be where
applicant intended to incorporate a particular journal article but
supplied the citation information for a completely unrelated book by a
different author, and there is no other information to identify the
correct journal article. Since it cannot be determined from the
citation originally supplied what article was intended to be
incorporated, it would be improper (e.g., new matter) to replace the
original incorporation by reference with the intended incorporation by
reference. A citation of a patent application by attorney docket
number, inventor name, filing date and title of invention may
sufficiently describe the document, but even then correction should be
made to specify the application number.
A petition under Sec. 1.183 to suspend the time period requirement
set forth in Sec. 1.57(g) will not be appropriate. After the
application has been abandoned, applicant must file a petition to
revive under Sec. 1.137 for the purpose of correcting the
incorporation by reference. After the application has issued as a
patent, applicant may correct the patent by filing a reissue
application. Correcting an improper incorporation by reference with a
certificate of correction is not an appropriate means of correction
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because it may alter the scope of the claims. The scope of the claims
may be altered because Sec. 1.57(g) provides that an incorporation by
reference that does not comply with paragraph (b), (c), or (d) is not
an effective incorporation. For example, an equivalent means omitted
from a patent disclosure by an ineffective incorporation by reference
would be outside the scope of the patented claims. Hence, a correction
of an incorporation by reference pursuant to this section may alter the
scope of the claims by adding the omitted equivalent means. Changes
involving the scope of the claims should be done via the reissue
process. Additionally, the availability of the reissue process for
corrections would make a successful showing required under Sec. 1.183
unlikely. The following examples show when an improper incorporation by
reference is required to be corrected:
Example 4: The Office of Initial Patent Examination (OIPE) noticed
that Figure 3 was omitted from the application during the initial
review of the application although the specification included a
description on Figure 3. The application as originally filed contained
a claim under Sec. 1.78 for the benefit of a prior-filed application
that included the appropriate Figure 3. OIPE mailed a Notice of Omitted
Items notifying the applicant of the omission of Figure 3 and providing
a two-month period for reply.
Analysis: Applicant may rely on the incorporation by reference
provided by Sec. 1.57(a) to amend the application to add Figure 3.
Applicant, however, must file the amendment to add the inadvertently
omitted drawing figure in compliance with Sec. 1.57(a) within the time
period set forth in the Notice of Omitted Items.
Example 5: Upon review of the specification, the examiner noticed
that the specification included an incorporation by reference statement
incorporating essential material disclosed in a foreign patent. In a
non-final Office action, the examiner required the applicant to amend
the specification to include the essential material.
Analysis: In reply to the non-final Office action, applicant must
correct the incorporation by reference by filing an amendment to add
the essential material disclosed in the foreign patent in compliance
with Sec. 1.57(f) within the time period for reply set forth in the
non-final Office action.
Example 6: Applicant discovered that the last page of the
specification is inadvertently omitted after the prosecution of the
application has been closed (e.g., a final Office action, an Ex Parte
Quayle action, or a notice of allowance has been mailed to the
applicant). The application, as originally filed, contained a claim
under Sec. 1.78 for the benefit of a prior-filed application that
included the last page of the specification.
Analysis: If applicant wishes to amend the specification to include
the inadvertently omitted material, applicant must reopen the
prosecution by filing a Request for Continued Examination (RCE) under
Sec. 1.114 accompanied by the appropriate fee and an amendment in
compliance with Sec. 1.57(a) within the time period for reply set
forth in the last Office action (e.g., prior to the payment of issue
fee, unless applicant also files a petition to withdraw the application
from issue).
Example 7: Upon review of the specification, the examiner
determined that the subject matter incorporated by reference from a
foreign patent was "nonessential matter" (see Sec. 1.57(d)) and,
therefore, did not object to the incorporation by reference. In reply
to a non-final Office action, applicant filed an amendment to the
claims to add a new limitation that was supported only by the foreign
patent. The amendment filed by the applicant caused the examiner to re-
determine that the incorporated subject matter was "essential matter"
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under Sec. 1.57(c). The examiner rejected the claims that include the new
limitation under 35 U.S.C. 112, para. 1, in a final Office action.
Analysis: Since the rejection under 35 U.S.C. 112, para. 1, was
necessitated by the applicant's amendment, the finality of the Office
action is proper. If the applicant wishes to overcome the rejection
under 35 U.S.C. 112, para. 1, by filing an amendment per Sec. 1.57(f) to
add the subject material disclosed in the foreign patent into the
specification, applicant may file the amendment as an after final
amendment in compliance with Sec. 1.116. Alternatively, applicant may
file an RCE under Sec. 1.114 accompanied by the appropriate fee, and
an amendment per Sec. 1.57(f) within the time period for reply set
forth in the final Office action.
Example 8: Applicant filed a (third) application that includes a
claim under Sec. 1.78 for the benefit of a (second) prior-filed
application and a (first) prior-filed application. The second
application was a continuation application of the first application and
the second application was abandoned after the filing of the third
application. Subsequently, the applicant discovered the last page of
the specification was inadvertently omitted from the third application
and the second application.
Analysis: If the benefit of the filing date of first application
for the omitted subject matter is required (for example, the omitted
material is required to provide support for the claimed subject matter
of the third application and there is an intervening reference that has
a prior art date prior to the filing date of the third application, but
after the filing date of the first application), applicant must amend
the specification of the second application and the specification of
the third application to include the inadvertently omitted material in
compliance with Sec. 1.57(a) (note: the second and third applications
must be filed on or after the effective date of Sec. 1.57(a)). Since
the second application is abandoned, applicant must file a petition to
revive under Sec. 1.137 in the second application only for the purpose
of correcting the specification under Sec. 1.57(a) along with the
amendment in compliance with Sec. 1.57(a).
Comment 43: Several comments suggested that the rule should not be
limited to inadvertent omissions but instead should be available for
any material that was omitted.
Response: The suggestion is not adopted. If the rule were not
limited to inadvertent omissions, then applicants would not be able to
intentionally omit material contained in a prior-filed application from
an application claiming benefit or priority to that prior application
since the material would be automatically incorporated into the later
filed application by virtue of the incorporation by reference provided
by the rule. Furthermore, if any material contained in a prior-filed
application were considered as being automatically incorporated, it
would be extremely burdensome on the examiner and on members of the
public to determine what was included in the disclosure of the
application as well as what was encompassed by any means-plus-function
claims, particularly when benefit or priority of many prior-filed
applications was being claimed. Additionally, if the provision was not
limited to inadvertent omissions it could lead to submarining of
subject matter. Specifically, applicants could intentionally mislead
third parties into thinking that patent protection was no longer being
pursued for subject matter found in a prior application by
intentionally omitting that subject matter from a later filed
application, or a series of later filed applications, and then
reinstating that subject matter and any claims pertaining thereto at a
later date.
Comment 44: One comment requested clarification regarding whether
applicant must prove that a particular omission was inadvertent at the
time of filing of the application. Another comment asked whether a
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declaration must accompany the amendment which states that the omission
was inadvertent.
Response: There is no requirement for applicant to submit a
declaration stating that the omission was inadvertent or to submit
proof that a particular omission was inadvertent at the time of filing
of the application. Of course, if applicant submits an amendment to add
the omitted material pursuant to Sec. 1.57(a), it would constitute a
certification under Sec. 10.18(b) that the omission was inadvertent.
The Office, however, may inquire as to inadvertence where the record
raises such issue.
Comment 45: One comment asked how far back in the chain of priority
can one reach to find the omitted matter. The comment noted that there
is no limit in the rule and this opens the possibility of obtaining
patent protection for something disclosed but not claimed in a patent
that issued many years ago.
Response: There is no limit in the rule as to how far back in a
chain one may go. The rule, however, is not retroactive to any
applications having inadvertently omitted material filed before the
effective date of the rule. An application that inadvertently omits
material must have been filed on or after the effective date of the
rule in order for the rule to apply but applicants may rely on prior-
filed applications filed before the effective date of the rule to add
inadvertently omitted material to applications filed on or after the
effective date of the rule. Even though it may be possible for an
applicant to rely on an application that was patented many years ago
for material that was inadvertently omitted from an application
claiming benefit of that prior-filed application through a chain of
applications, it should be noted that if the omitted material is not
present in any of the intervening applications, then the later-filed
application is only entitled to the filing date of the later-filed
application for the inadvertently omitted subject matter. The claimed
subject matter in the later-filed application is only entitled to the
benefit of the filing date of an earlier application if that subject
matter is disclosed in every intervening application relied upon to
establish a chain of copendency. See In re de Seversky, 474 F.2d 671,
177 USPQ 144 (CCPA 1973), and In re Schneider, 481 F.2d 1350, 179 USPQ
46 (CCPA 1973). Where, however, intervening applications are filed
after the effective date of the rule, it may be possible to correct a
gap in the intervening chain if the intervening application(s) that
also inadvertently omitted the material are pending and prosecution is
not closed. A petition to revive an application under Sec. 1.137 and/
or a request for continued examination under Sec. 1.114 may be filed,
as appropriate, in order to restore the application to pending status
and/or reopen prosecution in the application. If, however, an
application has been patented, a certificate of correction or a reissue
application could not be used to add inadvertently omitted material to
that patent via Sec. 1.57(a).
Comment 46: One comment stated that the restriction that the
omitted material must be "completely contained" in the prior
application, which is defined as material that is "expressly (as
opposed to implicitly) disclosed in the prior application," is
unnecessary and that applicant should be able to rely on any material
that is explicitly, implicitly, or inherently disclosed in the prior-
filed application. It was also argued that this requirement is
inappropriate since the requirements of 35 U.S.C. 112 are satisfied by
explicit and implicit disclosure in the application and such
inconsistent treatment of 35 U.S.C. 112 issues would lead to confusion,
inequity, and added burden to the Office and applicants.
Response: The purpose of the rule is to provide a safeguard for
applicants hen a page(s) of the specification (or portion thereof) or a
sheet(s) of drawing(s) (or a portion thereof) is inadvertently omitted
from an application. For example, sometimes, as a result of a clerical
error, a page of the specification or a page of drawing(s) is omitted from
the application when it is filed or a portion of a page or a portion of a
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drawing is omitted due to a copying error. This is the type of error
that the rule is intended to remedy. The rule is not intended to permit
applicants to bring in any material for which there may arguably be
support for in a prior-filed application. It would be a burden on the
Office if applicants were permitted to bring in material that was
implicitly disclosed in the prior application. Therefore, the rule is
limited to inadvertently omitted material that is expressly, as opposed
to implicitly, disclosed in the prior application.
Comment 47: One comment asked whether the deadline specified in
Sec. 1.57(a)(1) is the close of prosecution before an RCE is filed or
whether it includes the close of prosecution after the last RCE in an
application has been filed.
Response: Section 1.57(a)(1) merely relies on the definition of the
close of prosecution provided in Sec. 1.114(b). If a proper RCE is
filed, it reopens prosecution in the application. The rule permits the
application to be amended to include the omitted material even after
the filing of an RCE as long as prosecution in the application is still
open.
Comment 48: One comment stated that it would appear to be possible
to convert an inherent incorporation by reference under paragraph (a)
into an explicit incorporation by reference under paragraph (b) by
amending the application to include an explicit incorporation by
reference statement since a prior filed application would be inherently
incorporated by reference when the provisions of Sec. 1.57(a) are
satisfied.
Response: It would not be possible to convert an inherent
incorporation by reference under paragraph (a) to an explicit
incorporation by reference under paragraph (b). The incorporation by
reference provided by paragraph (a) is limited to inadvertently omitted
material. Furthermore, such inadvertently omitted material is not
included in the application, and thus not considered part of the
disclosure, unless the application is amended to include the omitted
material. As stated in MPEP Sec. 201.11, under the heading "Reference
To Prior Application(s)," "when a benefit claim is submitted after
the filing of an application, the reference to the prior application
cannot include an incorporation by reference statement of the prior
application. See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273
(D.C. Cir. 1980)." This is because no new matter can be added to an
application after its filing date. Therefore, an explicit incorporation
by reference statement cannot be added to an application after filing,
even if material was inadvertently omitted from the application and
Sec. 1.57(a) is applicable.
Comment 49: One comment asked for clarification as to whether Sec.
1.57(a) would allow for correction of translational and/or
typographical errors which are not obvious when looking only at the
application that contains the error and which distinguish the subject
matter disclosed in that application from the priority document.
Response: The comment has been adopted in that it is explained that
in certain situations it may be possible to correct translational and/
or typographical errors via Sec. 1.57(a). For example, if a particular
word is explicitly disclosed in the prior foreign application for which
priority is claimed, but the translation of the foreign application
resulted in the U.S. application being filed with a different word in
its place, it would be permissible to correct this error via Sec.
1.57(a). It must be clear on its face that the error was a
translational or typographical error in order for the error to be
corrected by this procedure. It would not be permissible to argue over
the interpretation of a particular word or expression used in the
foreign application or to argue that language in the foreign
application that is directed to a species provides support for the
genus.
Comment 50: One comment questioned the Office's authority to bind
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courts by Sec. 1.57. The comment noted that 35 U.S.C. 2 only gives the
Office authority to make procedural rules.
Response: The Office has the authority to promulgate Sec. 1.57
since the rule is a procedural rule. The Office already has a similar
procedure in place. See MPEP Sec. 201.06(c). The Office's transmittal
form for filing a utility patent application includes an incorporation
by reference statement for continuation or divisional applications that
can be relied upon when a portion has been inadvertently omitted from
the application. The rule is merely an extension of the existing
procedure.
Comment 51: One comment asked what would be the effect of adding a
priority claim after initial filing.
Response: The rule requires the priority claim or benefit claim to
be present on the filing date of the application. Therefore, if a
priority claim is added after the application is accorded a filing
date, there would be no incorporation of the prior application provided
by Sec. 1.57. Furthermore, as noted above, if a benefit claim is
submitted after the filing date of an application, the reference to the
prior application cannot include an incorporation by reference
statement of the prior application.
Comment 52: One comment asked whether this issue would be better
resolved by bilateral negotiations.
Response: The Office does not think that this issue would be better
resolved by bilateral negotiations since relief via the new rule is
more immediate and was generally supported.
Comment 53: One comment suggested that a priority claims section be
added to the Office's application transmittal letter (PTO/SB/05) that
allows an applicant to list all "parent" applications (foreign, U.S.,
or provisional) and include an "incorporated by reference" check box
for each "parent" application.
Response: The suggestion is not adopted. A check box on the
transmittal letter is unnecessary for purposes of Sec. 1.57(a) since
the rule operates as an automatic incorporation by reference for
inadvertently omitted material completely contained in a prior-filed
application for which priority or benefit is claimed. If applicants
were required to affirmatively check a box on a form in order for a
prior application to be considered as being incorporated by reference,
it would result in many applicants not being able to bring in material
that was inadvertently omitted because they failed to check the box on
the form or because they used their own transmittal form which did not
contain any check boxes. The automatic incorporation provided by Sec.
1.57(a) is a more superior safeguard than if applicants were required
to affirmatively check a box on the transmittal letter. Furthermore, if
applicants want to incorporate by reference any prior applications for
more than inadvertently omitted material, they would need to include a
proper incorporation by reference statement in the specification of the
application as provided in Sec. 1.57(b), not in the application
transmittal letter, and thus a check box on the transmittal letter
would not accomplish this objective.
Comment 54: One comment requested that the Office indicate that
when applicants intentionally omit material
from a prior-filed application when filing an application claiming
priority to, or benefit of, the prior-filed application, the continuing
application should be designated as a continuation-in-part application.
Response: The omission of material from a prior-filed application
may or may not be considered new matter relative to the prior-filed
application depending on what is being claimed. Therefore, the Office
cannot indicate that such continuing applications should be designated
as continuation-in-part applications since it is possible that some of
these applications would be properly considered continuation
applications.
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Comment 55: One comment stated that Sec. 1.57(a) should be
expressly made effective only for applications filed on or after the
effective date of the rule.
Response: The comment has been adopted to the extent that the
preamble to the rule does indicate that the rule does not apply to add
inadvertently omitted material to any applications filed before the
effective date of the rule. The effective date of a rule is generally
not included in the text of the rule itself.
Comment 56: Many comments stated that Sec. 1.57(b) should not
preclude the use of other language to make an incorporation by
reference. Variations of this comment suggest that the Office provide
guidance on language which it considers acceptable, but accept any
language where applicant manifests an intent to incorporate the content
of a document by reference; clear intent.
Response: The comment is adopted in part. While many commentators
requested more flexibility, none suggested any equivalent phrase that
did not have the root words "incorporate" and "reference." The
language of the final rule will allow variations that contain the words
at least as stem words "incorporate" and "reference." Some of the
comments included an example of a reference to a document as being an
incorporation by reference of the document. Mere reference to a
document is not under existing law or practice an incorporation by
reference. Whether the examples of the comment demonstrate a clear
intent to incorporate a document by reference is a matter of
substantive law that is fact dependent and not addressed by the final
rule. The language of the rule is not intended to change existing law
or practice in this respect and would permit, where there is clear
intent to incorporate a document by reference, correction of incorrect
incorporation language. The procedure in paragraph (f) is intended to
ensure that any issue with respect to whether the material is
incorporated by reference is timely resolved.
Comment 57: A comment stated that the requirements set forth in
proposed Sec. 1.57(f) are too restrictive and the consequences of a
failed incorporation by reference are too severe (i.e., any post filing
corrections are new matter).
Response: The comment is adopted in part. The correction required,
which is now set forth in paragraph (g), has been liberalized in the
final rule to permit insertion of the incorporated material and
clarifies that the improper terminology can be corrected, e.g., no loss
of filing date. Paragraph (g) is not intended to preclude any
correction where there is a clear intent to incorporate a document by
reference but incorrect incorporation language was used or a reference
was made to a document that is not a suitable type for incorporation by
reference. This provision is merely a codification of existing law. The
courts have long held an improper incorporation must be corrected in a
timely manner, e.g., prior to the issuance of a patent to be effective.
Similarly, a patentee trying to enforce rights emanating from a patent
application publication is expected to have corrected these problems
prior to publication to be timely. See also Atmel Corp. (improper
incorporation is noted as being of no effect).
Comment 58: A comment stated that the rule is rigid and inflexible.
The comment recommended that each document listed below be presumed to
be incorporated by reference unless the applicant states that it is not
incorporated by reference: (1) All disclosure in provisional, utility,
PCT and foreign applications from which the application in question
descends; (2) all disclosure in U.S. and foreign patents referred in
the specification of the application in question and all other
documents identified in the specification and in existence at the time
of filing; and (3) all disclosure in references included in an
Information Disclosure Statement filed at the same time as the
application in question.
Response: The comment is not adopted. The majority of references in
an application today, especially when including references cited in an
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IDS, are not incorporated by reference. With respect to presuming all
identified references be incorporated by reference unless positively
disclaimed would appear to create a larger burden on patent applicants
than the converse. Similarly, the automatic addition of all these
additional sources of potential equivalents for means-plus-function
claims would greatly increase the examination burden and prolong
prosecution of an application. While it is stated in the comments that
the incorporation by reference will make applications smaller and
require less time for examiners to review, it is not stated how much
additional time will be required for examiners to find and review the
incorporated references for equivalents. The suggested change would
also require a change in the oath/declaration practice, since an IDS is
not part of the application. An applicant would have to review and
understand all of the IDS materials in addition to the specification to
understand the scope of the application and claims at the time the
applicant signed an oath or declaration. This is a more difficult
standard for an applicant to meet than is required by Sec. 1.56.
Comment 59: The comment viewed post filing corrections to
incorporation by reference language as new matter.
Response: The comment is adopted in part. The correction provision
of Sec. 1.57(g) is not intended to change the current law with respect
to what is new matter. Material that is merely referenced under current
law is not incorporated by reference. If changing a referenced document
to an incorporation by reference under existing law would be new
matter, changing the reference to an incorporation by reference
statement under Sec. 1.57(g) would be new matter and paragraph (g) is
not applicable. Where, however, there is a clear intent to incorporate
material but a formal problem with the language or identification of
the document, utilization of remedial paragraph (g) will not make the
correction "new matter."
Section 1.57(g) has been clarified to remove any confusion as to
what corrections are contemplated. Where there is a clear specific
intent to incorporate by reference paragraph (f) will permit correction
of language of incorporation, and document identity corrections that do
not involve new matter.
Comment 60: The comment suggested that an explicit statement that
simply identifying an incorporated patent or publication does not
necessarily "immunize" any future amendment of the disclosure against
new matter, particularly when subject matter is selectively
incorporated from the cited document on the basis of a generic or
"blanket" incorporation statement.
Response: The comment is not adopted. The proposed changes are
intended to address the format of an incorporation by reference claim,
not substantive law regarding "new matter." Mere reference to a
document under existing case law is not an incorporation by reference.
Hence, what was not incorporated by reference before the rule change will
not be treated differently under the rule change. Where there was clear
specific intent to attempt to incorporate an identifiable document for
which a correction was not new matter before the rule change will not
be new matter after the rule change.
Comment 61: Some comments favored the restrictions in Sec. 1.57(c)
while there were other sets of comments that had three criticisms. The
first criticism was that by eliminating the ability to incorporate
commonly owned unpublished applications by reference, the usefulness of
incorporation by reference practice will be severely curtailed. The
comment states that access is available under the access rules or can
be obtained from applicant. The second criticism was that Sec.
1.57(c)(2) is confusing and appears to say claims can be incorporated
by reference. The third criticism was that it is unwise to further
confuse 35 U.S.C. 112, para. 6, by making a specific rule allowing language
supporting a means-plus-function element to be incorporated by
reference. The comments suggested that the Office should limit rule
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implementation to MPEP language.
Response: The comment is not adopted. The Office recognizes that
the usefulness of incorporation by reference will be reduced by barring
unpublished applications, and will reconsider this position when access
to these applications is generally available on the Office's Internet
Web site. Access to pending applications at this time is only by
ordering a copy and paying the appropriate fee. Paragraph (c)(2) is
part of the definition of "essential subject matter" and is not seen
to say or imply that claims can be incorporated by reference. The
deletion of the reference to 35 U.S.C. 112, para. 6, from the provision is
also not adopted. This provision merely codifies existing practice, in
MPEP Sec. 608.01(p), which states that material may be incorporated by
reference to "describe the claimed invention." The comment that the
law is sufficiently confusing in requiring a link between the
specification and claim for 35 U.S.C. 112, para. 6, that the change will
cause more confusion is not seen to be a problem if the incorporation
by reference language of the rule is used (see also the discussion of
Atmel Corp. that incorporation by reference does not relieve an
applicant of providing a proper written description of equivalence).
Comment 62: Section 1.57(b) should not require more than the
minimum amount of information needed for a skilled person to uniquely
identify the document. The incorporation by reference standard should
not be tied to Sec. 1.98.
Response: The comment is adopted.
Comment 63: A comment stated that the true holding of Atmel Corp.
should not be ignored or glossed over by practitioners or the Office,
and that there is no basis for 35 U.S.C. 112, para. 1, written description
incorporation by reference in case law, so it should be barred.
Response: The comment is not adopted. Section 1.57(c) as noted in
the above discussion of the MPEP is a codification of existing practice
which includes providing support for language found in the claims. The
improper incorporation by reference in Atmel Corp. does not appear to
bar this practice. Although the final rule permits incorporation by
reference of material for 35 U.S.C. 112, para. 6 purposes, it does not
relieve an applicant from providing a written description within an
application that an element disclosed in the document is an equivalent
for the purpose of 35 U.S.C. 112, para. 6. To the extent that applicants
must provide a written description within an application, the final
rule is considered consistent with 35 U.S.C. 112, para. 1, and Atmel Corp.
Section 1.58: Section 1.58(a) is amended to provide that the same
table not be included in both the drawings as a figure and in the body
of the specification of an application. Section 1.58(b) is also amended
to clarify that correct visual alignment of rows and columns of
chemical and mathematical formulae and tables is retained when the
electronic file is rendered by opening and displaying the electronic
file at the Office using a text viewer program. Section 1.58(c) is
additionally amended to recommend that the font size of text be at
least 0.166 inches or 0.422 cm. and to eliminate a reference to elite
type font.
Section 1.58(a) is amended because applicants have been causing
voluminous applications to become even larger by including the same
table as both a drawing figure and as text in the body of an
application. Filing duplicate copies of the same table requires
additional review by the Office to determine if the drawing table and
the text table are duplicates and to identify differences, if any
exist. Moreover, the duplicate inclusion is causing the number of pages
of the application to increase, thereby causing increased scanning,
storage and reproduction costs. In addition, the burden on the public
to copy and review a published application or patent is also increased.
Applications filed under 35 U.S.C. 371 are excluded from the
prohibition from having the same tables in both the description portion
of the specification and drawings.
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See Sec. 1.83 for a similar proposed change involving tables and
sequence listings.
Section 1.58(b) is amended by adding the word "visually" to make
it clear that the data in the electronic file is appropriately
formatted so that the alignment of rows and columns is maintained in
the table when the file is opened for viewing at the Office. The Office
has found that some filers have only been providing markers to identify
rows and columns in table data. When the table is viewed at the Office,
the markers do not cause the rows and columns of data to be visually
aligned. Unless each entry in a table is surrounded with an appropriate
number of spaces, the visual spatial alignment of the table is not
maintained: i.e., the rows and cells are misaligned. A way to provide
the proper alignment is to insert space characters in each cell so that
the overall number of characters in each cell is the same, and to
maintain a constant font width for all characters.
Many programs that are used to generate tables allow the user to
provide additional spaces manually when typing data. Many of these
programs also provide an automated way to pad the cells with space
characters, and create an ASCII file with spatially aligned data. This
feature is generally invoked by a command that is often called printing
to a "formatted text" format or "prn" file. The program feature
formats the table as it would appear on paper, padding the cells with
spaces to provide proper alignment of the cell entries.
A review of different versions of one software product and
similarly, of different software products showed no consistency in the
menu language used for the formatting command noted above. With the
constant change in software versions, the Office is not able to provide
a list of all the menu variations necessary to create a formatted text
format. A person knowledgeable with software used to create tabular
data, however, should be able to find the commands to invoke this
feature in the selected software.
Section 1.58(c) is amended for the same reason that Sec.
1.52(b)(2)(ii) is amended. Section 1.58(c) previously required that the
text be in a lettering style that is at least 0.08 inches high, which
is the minimum font size set forth in Patent Cooperation Treaty (PCT)
Rule 11.9. Text having a font size only 0.08 inches high is difficult
to capture with optical character recognition technology and may not be
reproducible as required by Sec. 1.52(a)(1)(v) (and PCT Rule 11.2(a)).
A font size of 12 (12/72 inch or 0.166 inch (0.422 cm.) high) is
significantly more reproducible than a font size of 6 (6/72 inch or
0.08 inch (0.211 cm.) high). Accordingly, Sec. 1.58(c) is amended to
indicate a preference for a larger font size. In addition, the
reference to elite type is deleted as it was inconsistent with the size
given. Elite type is a typewriter type that runs 12 characters to the
inch. Instead of referencing elite type, the rule references font size
which should be more meaningful to most patent applicants (most word
processing software programs have an option to choose a font and a font
size).
Section 1.59: Section 1.59 is amended to refer to the petition fee
set forth in Sec. 1.17(g) for consistency with the change to Sec.
1.17. See discussion of Sec. 1.17 for comments related to the changes
in the petition fees.
Section 1.63: Section 1.63(d)(4) is amended to delete "(or
authorization of agent)".
Section 1.69: Section 1.69(b) is amended by deleting the words "or
approved" as unnecessary, and possibly leading to confusion and the
mistaken assumption that the Office has a procedure for the approval of
applicant-generated forms, where no such procedure exists. See Changes
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to Implement the Patent Business Goals, 64 FR 53771, 53777 (Oct. 4,
1999), 1228 Off. Gaz. Pat. Office 15, 20 (Nov. 2, 1999) (proposed rule)
(declining to adopt a review service for applicant-created forms).
PCT Rule 4.17(iv) provides for the submission of declarations of
inventorship in the international phase of an international application
as part of the PCT Request form. Such declarations may be accepted as
satisfying the requirement under 35 U.S.C. 371(c)(4) for an oath or
declaration of the inventor in the U.S. national phase. See Sec.
1.497(a). WIPO has translated the text for the PCT Rule 4.17(iv)
declaration form into languages other than English and has made such
forms available to applicants, for example, by downloading the
declaration form from WIPO's Web site at http://www.wipo.int/pct/en/
forms/index.htm.
Accordingly, Sec. 1.69(b) is being further revised to make it clear
that PCT Rule 4.17(iv) declarations are not subject to the translation
requirements set forth in that section.
Paragraph (b) of Sec. 1.69 was proposed to be amended to require
that the statement that the translation is accurate be signed by the
individual who made the translation. The Office will not proceed with
this additional amendment. See Sec. 1.52(b)(1)(ii) for a discussion.
See also Secs. 1.52(d)(1), 1.55(a)(4) and 1.78(a)(5)(iv).
Section 1.76: Section 1.76(a) is amended to require that any
application data sheet (ADS) contain the seven headings listed in Sec.
1.76(b) and all appropriate data for each section heading. As revised,
Sec. 1.76 also requires that the ADS be titled "Application Data
Sheet." Any label (e.g., the label "Given Name" in the "Applicant
Information" heading) that does not contain any corresponding data
will be interpreted by the Office to mean that there is no
corresponding data for that label anywhere in the application. By
requiring an ADS to contain all seven section headings, and any
appropriate data for the sections, the accuracy of bibliographic data
in patent applications will be enhanced and the need for corrected
filing receipts related to Office errors will be reduced.
Section 1.76(b)(4) is amended to delete "authorization of agent"
and to change the cross-reference from Sec. 1.34(b) to Sec. 1.32.
Section 1.76(c)(2) is amended to require a supplemental application
data sheet to be titled "Supplemental Application Data Sheet" and to
also contain all of the seven section headings listed in Sec. 1.76(b)
with all appropriate data for each heading, rather than only
identifying the information that is being changed (added, deleted, or
modified) in the supplemental ADS. Requiring a supplemental ADS to
contain all of the information from the ADS, but with the changes
indicated, is consistent with the ADS guide posted on the Office's
Internet Web site at: http://www.uspto.gov/web/offices/pac/dapp/sir/
doc/patappde.html. A supplemental ADS containing only new or changed
information is likely to confuse the record, create unnecessary work for
the Office, and would not comply with Sec. 1.76. If no ADS was originally
filed, but applicant wants to submit as ADS to correct, modify, or
augment the original application data, the ADS, even though it is the
first-filed ADS, must be titled "Supplemental Application Data Sheet".
When submitting a supplemental ADS after the initial filing of the
application to correct, modify, or augment the original application data
included in a previously filed ADS or oath or declaration pursuant to
Sec. 1.63 or Sec. 1.67, the following applies: (1) The supplemental ADS
must be titled "Supplemental Application Data Sheet" (while the title
"Supplemental Application Data Sheet" is preferred, "Supp. ADS,"
"Supplemental ADS" or other variations thereof will be accepted);
(2) the supplemental application data sheet must be a full replacement
copy of the original ADS, if any, with each of the seven section headings,
and with all appropriate data for the section headings; and (3) the
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supplemental ADS must be submitted with all changes indicated, preferably
with insertions or additions indicated by underlining, and deletions, with
or without replacement data, indicated by strike-through or brackets. A
supplemental ADS that is being used to correct data shown in an oath or
declaration, such as foreign priority or residence information for an
inventor, would then show the original incorrect information with
strike-through or brackets, and the new information with underlining,
as if an ADS had originally been used to submit the information. For
example, if the original oath or declaration included a foreign
priority claim, in order to delete the claim, applicant should provide
a supplemental ADS showing the foreign priority claim with strike-
through or brackets to ensure that the patent will reflect such change.
Applicants are reminded that use of an application data sheet is
strongly encouraged when there is a change in the spelling of an
inventor's name pursuant to MPEP 605.04(b), or the inventor changes his
or her name pursuant to Sec. 1.182, or there is a correction of
inventorship under Sec. 1.48. See Advance Notice of Change to MPEP
605.04(b), (c) and (f) - Application Data Sheets Are Strongly
Recommended When Inventor Information is Changed, 1281 Off. Gaz. Pat.
Office 54 (Apr. 13, 2004).
Section 1.76(d) is amended to clarify that if an ADS is
inconsistent with information provided in another document that was
submitted at the same time or previous to the ADS submission, the ADS
will control. The title of Sec. 1.76(d) is amended by replacing "oath
or declaration" with "other documents" to reflect the amendments to
paragraphs (d)(1) and (d)(2) of Sec. 1.76. Section 1.76(d)(1) and
1.76(d)(2) are amended to add an amendment to the specification, a
designation of a correspondence address, in order to emphasize other
documents that may have inconsistent information with an ADS.
In addition, Sec. 1.76(d)(4) is amended to delete "initially"
from the first sentence, and ", an oath or declaration under Sec.
1.63 or 1.67, or a letter pursuant to Sec. 1.33(b)" from the last
sentence thereof. In addition, Sec. 1.76(d)(4) is amended to
add ", for example," to the second sentence, and to clarify the last
sentence. The Office captures bibliographic data from the ADS, so if an
ADS has been provided, the ADS needs to be accurate. A separate letter
indicating an error, for example in the spelling of an inventor's name
in a prior-filed oath or declaration or ADS, is likely to be overlooked
and the error likely to be duplicated if the application issues as a
patent. Accordingly, if applicants have made an error in an ADS, a
supplemental (corrected) ADS needs to be submitted with any request for
a corrected filing receipt, or a request to correct the inventorship in
the patent application (and any required new oath or declaration
showing the correct inventorship). If the error was included in a
declaration under Sec. 1.63, and no ADS was filed, a supplemental
declaration pursuant to Sec. 1.67 remains an acceptable mechanism to
correct the defect in the original declaration. If the error was
included in an originally filed ADS, a supplemental ADS is required
because a supplemental declaration is not an acceptable mechanism to
correct a defect in an ADS.
Comment 64: One comment stated that the Office had not explained
why a supplemental application data sheet was being required to contain
bibliographic data that was not being changed, and also requested that
the rule indicate the manner in which changes should be shown. Another
comment indicated that the ePAVE software in EFS for generating
Application Data Sheets does not permit underlining or strike-through.
Response: The suggestion to indicate in the rule how changes should
be shown has been adopted. In a supplemental ADS, all changes must be
indicated, with insertions or additions preferably shown by
underlining, and deletions preferably shown by brackets or strike-
through. The Office is trying to encourage applicants to submit ADSs
and supplemental ADSs that are useful to the Office, but not difficult
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for applicants to prepare. Accordingly, while the Office suggests
underlining and brackets or strike-through to show changes on an ADS,
or a supplemental ADS, other clear indications of changes may be used
as well. As to why a supplemental ADS should contain the material that
is not being changed, application data sheets are used in printing the
patent, and it is useful and most efficient for the printer to have a
single document from which to extract data. The Office anticipates that
an applicant may file several supplemental ADSs, and searching through
the file to find all such documents and comparing the documents is
unreliable and is not an efficient use of Office resources. As to
ePAVE, this feature of EFS assists applicants in creating an ADS for
filing with an initial filing of an application. EFS cannot currently
be used to submit a Supplemental ADS, and as a result, ePAVE (part of
EFS) does not provide a mechanism to show insertions or deletions. An
applicant who initially created an ADS using ePAVE would need to retype
the ADS to create a supplemental ADS.
Section 1.78: Section 1.78(a)(1) is amended to delete an
unnecessary alternate condition to permit a claim for the benefit of a
prior-filed application. Sections 1.78(a)(2)(iii) and (a)(5)(iii) are
amended to permit the required reference to the prior application(s) to
be in multiple sentences, forming a continuous string, at the beginning
of the specification, rather than being limited to the first sentence
of the specification. The multiple sentences must begin as the first
sentence after the title, and the second, or any additional, sentence
including a benefit claim must follow the first sentence and not be
separated from the first sentence by any other sentence not making a
benefit claim. Section 1.78(c) is amended to clarify that the prior art
exception under 35 U.S.C. 103(c) does not apply to double patenting
rejections.
Section 1.78(a)(1) sets forth the conditions under which a
nonprovisional application may claim the benefit of one or more prior-
filed copending U.S. nonprovisional applications or international
applications designating the United States of America. Where the prior-
filed application is a nonprovisional application (filed under 35
U.S.C. 111(a)), one of the conditions under Sec. 1.78(a)(1) is met
when the prior-filed application satisfied any one of paragraphs (ii),
(iii) or (iv) of Sec. 1.78(a)(1). To satisfy paragraph (ii), the
prior-filed application must be "[c]omplete as set forth in Sec.
1.51(b)." To satisfy paragraph (iii), the prior-filed application must
be "[e]ntitled to a filing date as set forth in Sec. 1.53(b) or Sec.
1.53(d) and include the basic filing fee set forth in Sec. 1.16."
Considering that paragraph (iii) is less restrictive than paragraph
(ii), paragraph (ii) is deleted, with paragraphs (iii) and (iv) being
redesignated as paragraphs (ii) and (iii), respectively, as paragraph
(ii) is unnecessary because any prior-filed application that would
satisfy paragraph (ii) would also satisfy paragraph (iii).
Sections 1.78(a)(2)(iii) and (a)(5)(iii) are amended to change the
word "sentence" to "sentence(s)." The change permits the required
reference to the prior application(s) to be in more than one sentence,
forming a continuous string, at the beginning of the specification. In
some situations, it would be easier and clearer to set forth the
relationship between prior applications if more than one sentence were
permitted. For example, where there is a provisional application and
multiple intermediate nonprovisional applications, the required
identification in the latest nonprovisional application as to which
intermediate nonprovisional application(s) claims benefit to the
provisional application (i.e., is within one year of the provisional
application's filing date), could be set forth in a clearer manner
using multiple sentences.
Section 1.78(a)(5)(iv) was proposed to be amended to require that
the statement that the translation is accurate be signed by the
individual who made the translation. This proposed change has not been
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included in the final rule as the changes are not deemed to be
necessary in view of the requirements of Sec. 10.18, as explained in
regard to Sec. 1.52(b)(1)(ii). See also Secs. 1.52(d)(1),
1.55(a)(4) and 1.69(b).
Section 1.78(c) is amended to clarify that the prior art exception
under 35 U.S.C. 103(c) does not apply to double patenting rejections by
the addition of a new final sentence, which states "Even if the
claimed inventions were commonly owned, or subject to an obligation of
assignment to the same person, at the time the later invention was
made, the conflicting claims may be rejected under the doctrine of
double patenting in view of such commonly owned or assigned
applications or patents under reexamination." Therefore, Sec. 1.78(c)
emphasizes that double patenting rejections should still be made, when
appropriate, even if a reference is disqualified from being used in a
rejection under 35 U.S.C. 103(a) via the prior art exclusion under 35
U.S.C. 103(c). This clarification codifies patent policy regarding
double patenting rejections and the prior art exclusion under 35 U.S.C.
103(c) as set forth in the notice Guidelines Concerning the
Implementation of Changes to 35 U.S.C. 102(g) and 103(c) and the
Interpretation of the Term "Original Application" in the American
Inventors Protection Act of 1999, 1233 Off. Gaz. Pat. Office 54 (Apr.
11, 2000)) and MPEP Sec. 706.02(l)(1). Thus, applicants, pursuant to
Sec. 1.56, must disclose all relevant applications for which a double
patenting rejection would be appropriate. Additionally, the first
sentence of Sec. 1.78(c) is amended by changing the word "party" to
"person" in order to use terminology consistent with 35 U.S.C. 103(c).
Section 1.83: Section 1.83(a) is amended to provide that tables and
sequence listings that are included in the specification are not
permitted to be reprinted in the drawings. Applicants should not be
obliged to include tables or the sequence listing in the drawings due
to the current requirement of Sec. 1.83(a) that all claimed features
must be shown in the drawings. Accordingly, as amended, if the
specification includes a sequence listing or a table, such a sequence
listing or table would not be permitted to be reprinted in the
drawings. As a result, if a sequence listing as shown in the drawings
has more information than is contained in the specification, the
sequence listing could be included in the specification and the
drawings, but a sequence listing in the specification would not be
permitted to be duplicated in the drawings. Applications filed under 35
U.S.C. 371 are excluded from the prohibition from having the same
tables and sequence listings in both the description portion of the
specification and drawings. This is because such format requirements
for the specification and drawings of PCT applications (including
national stage applications under 35 U.S.C. 371) are provided for in
PCT Rule 11.
See Sec. 1.58(a) for a similar proposed change to require that
tables be included in only one of either the drawings or the
specification.
Section 1.84: Section 1.84 is amended by removing former Sec.
1.84(a)(2)(iii) to eliminate the requirement for submission of a black
and white copy of any color drawings or photographs. Section
1.84(a)(2)(iv) is redesignated as (a)(2)(iii). Section 1.84(c) is
amended to clarify that identification (labeling) of the drawing is
recommended, but not required. If identification (of the application
for which the drawing is related to) is provided it must be placed on
the front of the sheet within the top margin. Section 1.84(c) is
clarified to add an informational reference to Sec. 1.121(d) relating
to the requirement to identify the type of change represented by
drawings submitted after the filing date of an application.
Section 1.84(a)(2) is amended to remove the requirement in former
paragraph (a)(2)(ii) for a black and white copy of a color drawing or
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photograph. This requirement has already been waived. See Interim
Waiver of Parts of 37 CFR 1.84 and 1.165, and Delay in the Enforcement
of the Change in 37 CFR 1.84(e) to No Longer Permit Mounting of
Photographs, 1246 Off. Gaz. Pat. Office 106 (May 22, 2001).
Section 1.84(c) is amended to be consistent with the requirements
set forth in Sec. 1.121(d). Each drawing sheet submitted after the
filing date of an application must be identified as either
"Replacement Sheet" or "New Sheet" so that the Office will
recognize how to treat such a drawing sheet for entry into the
application. If a marked-up copy of any amended drawing figure,
including annotations indicating the changes made, is filed, such
marked-up copy must be clearly labeled as "Annotated Sheet." Although
the amendment to add the identification of "New Sheet" requirement
was not set forth in the notice of proposed rule making and was not
previously in Sec. 1.121(d), the amendment is merely made to provide a
means of identification ("New Sheet") for presenting an additional
figure. The absence of an identification for a new sheet of drawing (as
opposed to a replacement sheet of drawings) has caused applicants to
inquire about the appropriate label for such situation.
Section 1.84(c) is clarified by the addition of references to Sec.
1.121(d) to alert applicants to the need to identify the type of
changes represented by drawings submitted after the filing date of an
application. Each drawing sheet submitted after the filing date of an
application must be identified as either "Replacement Sheet" or "New
Sheet" so that the Office will recognize how to treat such a drawing
sheet for entry into the application. If a marked-up copy of any
amended drawing figure including annotations indicating the changes
made is filed, such marked-up copy must be clearly labeled as
"Annotated Sheet."
Section 1.85: Section 1.85(c) is clarified by deleting the phrase
"or formal." Although the instant amendment was not set forth in the
notice of proposed rule making, the amendment is merely made for the
purpose of conformity to current terminology and does not represent a
change in practice. The concept of a "formal" drawing is no longer
applicable in that the focus is on whether a drawing can be scanned by
the Office.
Section 1.91: Section 1.91 is amended to add a paragraph (c), which
provides that a model or exhibit must be accompanied by photographs
that show multiple views of the material features of the model or
exhibit and that substantially conform to the requirements of Sec.
1.84. Material features are considered to be those features which
represent that portion(s) of the model or exhibit forming the basis for
which the model or exhibit has been submitted. Since the Office
generally returns or otherwise disposes of models or exhibits when they
are no longer necessary for the conduct of business before the Office
(Sec. 1.94), such photographs are necessary for the file of the
application or proceeding to contain an adequate record of the model or
exhibit submitted to the Office. Models, exhibits or specimens not in
compliance with Sec. 1.52 and those in compliance that cannot be
scanned will be stored by the Office in an artifact file until they can
be disposed of. Section 1.91(c) provides that this requirement does not
apply if the model or exhibit substantially conforms to the
requirements of Sec. 1.52 or Sec. 1.84, since a model or exhibit that
substantially conforms to the requirements of Sec. 1.52 or Sec. 1.84
can itself be retained in the file wrapper of the application or
proceeding.
In applications where the exhibit is not intended to display the
medium of submission (e.g., video tapes, DVDs, and compact discs) but
the content of the submission, the requirement that the photographs be
of the substantive content is included in this paragraph. Video tapes,
DVDs, and compact discs are usually submitted with movies or multimedia
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images. The requirement that the photographs submitted should show the
material features that were being exhibited is intended to require that
the photograph be that of the content of the material, not a photograph
of the medium of submission. Hence, if video or multimedia submission
is contained on a tape or disc, the corresponding photograph should be
a still image single frame of a movie, and not a submission of a
photograph of a video cassette, DVD disc or compact disc.
A video or DVD is not the type of model or exhibit that would
substantially conform to the requirements of Secs. 1.52 or 1.84.
The Office does not intend to store bulky items, such as videos,
particularly as the Office is moving toward IFW. See Changes To
Implement Electronic Maintenance of Official Patent Application
Records, 68 FR 38611 (June 30, 2003), 1272 Off. Gaz. Pat. Office 197
(July 29, 2003) (final rule). Accordingly, where a video or DVD or
similar item is submitted as a model or exhibit, the requirement of
Sec. 1.91(c) for supplying photographs of what is depicted in the
video or DVD, pursuant to Sec. 1.84, would need to be met.
Section 1.94: Section 1.94 is amended to be divided into paragraphs
(a) through (c). Paragraph (a) provides that once notification is sent
to applicant, arrangements must be made by applicant for the return of
the model, exhibit, or specimen at applicant's
expense, in response to such notification. The Office may return the
model, exhibit, or specimen, at any time once it is no longer necessary
for the conduct of business and need not wait until the close of
prosecution or later. Applicant is required to retain the returned
model, exhibit or specimen for the enforceable life of any patent
resulting from the application for which it was submitted pursuant to
paragraph (b) of Sec. 1.94. Accordingly, applicant may be called upon
to resubmit such returned model, exhibit, or specimen under appropriate
circumstances, such as where a continuing application is filed. Where
the model, exhibit or specimen is a perishable, the Office will be
presumed to have permission to dispose of the item without notice to
applicant, unless applicant notifies the Office upon submission of the
item that a return is desired and arrangements are promptly made for
the item's return upon notification by the Office.
Paragraph (b) provides that applicant is responsible for retaining
the actual model, exhibit, or specimen for the enforceable life of any
patent resulting from the application. Section 1.94 also provides that
its provisions do not apply: (1) If the model or exhibit substantially
conforms to the requirements of Sec. 1.52 or Sec. 1.84, since a model
or exhibit that substantially conforms to the requirements of Sec.
1.52 or Sec. 1.84 can itself be retained in the file wrapper of the
application or proceeding; (2) where a model, exhibit, or specimen has
been described by photographs that conform to Sec. 1.84; or (3) where
the model, exhibit, or specimen is perishable.
Paragraph (c) provides that the notification to applicant will set
a time period within which applicant must make arrangements for a
return of a model, exhibit, or specimen, with extensions of time
available under Sec. 1.136, except in the case of perishables. The
time period is one month from the mailing date of the notification for
applicant to make arrangements for a return, unless the item is a
perishable, in which case the time period will be shorter. Failure by
applicant to establish that arrangements for the return of a model,
exhibit or specimen have been made within the time period set in the
notice will result in the item being discarded by the Office.
Section 1.98: Section 1.98(a) is amended by revising paragraph
(a)(1) to require: (1) A specified format/identification for each page
of an Information Disclosure Statement (IDS), and that U.S. patents and
U.S. patent application publications be listed in a section separately
from citations of other documents; (2) a column that provides a space
next to each document listed to permit the examiner's initials; and (3)
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a heading that the list is an IDS. Section 1.98(a)(1) is specifically
amended to require that U.S. patents and U.S. patent application
publications be listed separately from the citations of other
documents. The separation of citations will permit the Office to obtain
the U.S. patent numbers and the U.S. patent application publication
numbers by optical character recognition (OCR) from the scanned
documents such that the documents can be made available electronically
to the examiner to facilitate searching and retrieval of the cited U.S.
patents and U.S. patent application publications from the Office's
search databases. Applicants will comply with this requirement if they
use forms PTO/SB/08A and 08B (or the more commonly used PTO-1449),
which provide a separate section for listing U.S. patents and U.S.
patent application publications. Applicants who do not use these forms
for submitting an IDS must make sure that the U.S. patents and U.S.
patent application publications are listed in a separate section from
citations of other documents. Section 1.98(a)(2)(i) is amended to
eliminate the requirement in paragraph (a)(2)(i) for a copy of each
U.S. patent or U.S. patent application publication listed in an IDS in
a patent application regardless of the filing date of the application.
Section 1.98(a)(2)(ii) is also amended to add the phrase "other than
U.S. patents and U.S. patent application publications unless required
by the Office." Section 1.98(c) is amended to add the phrase "as
specified in paragraph (a)" to be consistent with the changes to Sec.
1.98(a)(2). Section 1.98(e) is deleted as unnecessary.
Section 1.98(a)(1) previously did not require the use of a form
such as the PTO/SB/08A and 08B because the Office wished to provide
applicants the flexibility to use other types of lists. The Office,
however, has experienced problems associated with lists that do not
properly identify the application in which the IDS is being submitted:
e.g., when applicants submit a list that includes copies of PTO-1449 or
PTO-892 forms from other applications. Even though the IDS transmittal
letter had the proper application number, each page of the list did not
include the proper application number, but instead had the application
numbers of the other applications. If the pages of the list became
separated, the Office could not associate the pages with the proper
application. Therefore, the rule is amended to also require that each
page of the list must clearly identify the application number of the
application in which the IDS is being submitted.
Section 1.98(a)(1) is also amended to require that the list must
include a column that provides a space next to each document listed in
order to permit the examiner to enter his or her initials next to the
citations of the documents that have been considered by the examiner.
This provides a notification to the applicant and a clear record in the
application to indicate which documents have been considered by the
examiner in the application. Applicants are strongly discouraged from
submitting a list that includes copies of PTO/SB/08 (PTO-1449) or PTO-
892 forms from other applications. A completed PTO/SB/08 or PTO-1449
form from another application may already have initials of an examiner
and the application number of another application. This information
will likely confuse the record. Furthermore, when the spaces provided
on the form have initials of an examiner, there are no spaces available
next to the documents listed for the examiner of the subsequent
application to provide his or her initials, and the previously relevant
initials may be erroneously construed as being applied for the current
application, which can be particularly confusing if the application is
being handled by the same examiner.
Section 1.98(a)(1) is also amended to require that each page of the
list include a heading that clearly indicates that the list is an IDS.
Since the Office treats an IDS submitted by the applicant differently
than information submitted by a third-party (e.g., the Office may
discard any non-compliant third-party submission under Sec. 1.99), a
heading on each page of the list to indicate that the list is an IDS
would promote proper treatment of the IDS submitted by the applicant
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and reduce handling errors.
Section 1.98(a)(2) is amended to eliminate the requirement for a
copy of each U.S. patent or U.S. patent application publication listed
in an IDS, unless required by the Office. The Office had provided a
waiver for the former requirement in Sec. 1.98(a)(2)(i) for a copy of
each cited U.S. patent or U.S. patent application publication in IDSs
submitted in U.S. national patent applications filed after June 30,
2003, and international applications that have entered the national
stage under 35 U.S.C. 371 after June 30, 2003, because these
applications are stored in electronic form in the Office's IFW system.
See Information Disclosure Statements May Be Filed Without Copies of
U.S. Patents and Published Applications in Patent Applications filed after
June 30, 2003, 1273 Off. Gaz. Pat. Office 55 (Aug. 5, 2003).
Information disclosure statements submitted for electronic
applications are processed by Office staff to create an electronic link
which permits cited U.S. patents and U.S. patent application
publications to be conveniently viewed by examiners through the
Office's electronic search system. This feature enables the Office to
avoid scanning these documents into IFW, obviating the need for a copy
of the cited U.S. patent documents. By October 2004, the Office will
store almost all pending U.S. nonprovisional patent applications in
electronic form in the IFW system. Accordingly, it will no longer be
necessary to require a copy of each cited U.S. patent or U.S. patent
application publication in an IDS regardless of the filing date of the
application or the national stage entry date under 35 U.S.C. 371,
unless it is required by the Office. In exceptional circumstances, such
as where the application had not been converted into IFW, or the IDS
includes a large number of cited U.S. patent documents, the Office may
require a copy of the cited U.S. patent documents because entering a
large number of cited U.S. patent documents into the Office system to
create the electronic link places a significant burden on the Office
and the Office cannot guarantee the accuracy of the electronic link
created by the Office staff due to data entry errors. Applicants are
encouraged to file an e-IDS that is submitted in compliance with the
Office's EFS requirements, and may do so to avoid supplying copies of
U.S. patent documents. The Office will continue to not require a copy
of any cited U.S. patent documents listed in an e-IDS that is submitted
in compliance with the Office's EFS requirements.
Section 1.98(c) is amended to add the phase "as specified in
paragraph (a)" to be consistent with the changes to Sec. 1.98(a)(2).
Section 1.98(e) is deleted as unnecessary. Previously, one could avoid
the need to supply a copy of the U.S. patent documents of former
paragraph (a)(2)(i) by using the Office's EFS. This exception is not
necessary because the requirement for copies of U.S. patent documents
has been deleted.
Section 1.102: Section 1.102(c) is amended to provide, by rule, for
a petition to make an application special without a fee when the
application materially relates to a counter-terrorism invention. Prior
to amending this rule, the Office accorded "special" status to patent
applications relating to counter-terrorism technology so long as the
fee under Sec. 1.17(h) was included with the petition. Amending Sec.
1.102(c) to cover applications relating to counter-terrorism inventions
will eliminate the requirement for a fee.
Under the previous Sec. 1.102(c), there were two types of
inventions that qualified as a basis for making an application special
without a fee (other than on the basis of an applicant's age or
health), namely: (1) inventions that will materially enhance the
quality of the environment; and (2) inventions that will materially
contribute to the development or conservation of energy resources.
Previously, petitions to accelerate examination of inventions
countering terrorism were governed by Sec. 1.102(d) requiring a
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petition fee. Amended Sec. 1.102(c) now provides that inventions that
will materially contribute to countering terrorism are a third type of
invention that qualify as a basis for making an application special
without a fee under Sec. 1.102(c). As set forth in MPEP Sec. 708.02,
XI (Inventions For Countering Terrorism), the types of technology for
countering terrorism include, but are not limited to, systems for
detecting/identifying explosives, aircraft sensors/security systems,
and vehicular barricades/disabling systems. Removal of the petition fee
is appropriate considering that such inventions may help maintain
homeland security. In view of meeting this significant national
objective, the basis for making applications relating to counter-
terrorism technology special is transferred from Sec. 1.102(d) to
Sec. 1.102(c).
Pursuant to the amendment, Sec. 1.102(c) sets forth two bases for
making an application special: (1) Applicant's age or health; or (2)
that the invention is one of the three qualifying types of inventions
(i.e., the invention is one that will materially enhance the quality of
the environment, materially contribute to the development or
conservation of energy resources, or materially contribute to
countering terrorism). In view of the divergent subject matter covered
by Sec. 1.102(c)(1) and (c)(2), a petition under Sec. 1.102(c)(1) or
(c)(2) must identify the particular basis under which applicant is
petitioning for special status so that the Office can determine how to
evaluate an application's entitlement to special status.
Where the petition is filed under Sec. 1.102(c)(2), qualification
for advanced examination is based upon the invention materially
contributing as one of three qualifying types of inventions. For
inventions countering terrorism, MPEP Sec. 708.02, XI states that the
petition "should be accompanied by a statement explaining how the
invention contributes to countering terrorism." Such a statement is
required where the application disclosure is not clear on its face that
the claimed invention is materially directed to countering terrorism.
The materiality standard does not permit an applicant to speculate as
to how a hypothetical end-user might specially apply the invention in a
manner that could counter terrorism. Nor does such standard permit an
applicant to enjoy the benefit of advanced examination merely because
some minor aspect of the claimed invention may be directed to
countering terrorism. Also, the application claiming an invention
materially contributing to countering terrorism need not include words
such as "counter terrorism", "explosives" or "security" to
qualify for special status as there may be a concern how a computer-
based word search could be used to identify such applications.
MPEP Sec. 708.02, XI, Inventions For Countering Terrorism, will be
amended to better reflect the standard that the invention materially
contribute to countering terrorism, and to indicate that the fee
requirement has been eliminated.
Applicants are reminded that any identification of a basis for
requesting special status and a statement of compliance with the
technology specific requirement for special status must be based upon a
good faith belief that the invention in fact qualifies for special
status. See Secs. 1.56 and 10.18.
Comment 65: The Office has received internal comments expressing
concern that some applicants may view the lack of a petition fee as an
inducement to file petitions where the nexus between the invention and
the countering of terrorism is "strained."
Response: The comment has been adopted in part. The discussion of
the rule amendment has focused on the need for applicants to recognize
the "material" aspect of the claimed invention's relationship to
countering terrorism, which will be further addressed in an MPEP
revision. In view of such discussion, applicants should not expect to
have their petitions granted without a clear demonstration that the
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claimed invention is materially related to countering terrorism.
Section 1.103: Section 1.103(a) is amended to refer to the petition
fee set forth in Sec. 1.17(g) for consistency with the change to Sec.
1.17. See discussion of Sec. 1.17 for comments related to the changes
in the petition fees.
Section 1.105: Section 1.105(a) is amended to revise and
redesignate former paragraph (a)(3) as new paragraph (a)(4), and add
new paragraphs (a)(1)(viii) and (a)(3). Section
1.105(a)(1)(viii) adds pertinent, factual, technical information that
is known to the applicant as an additional example of information that
might be required under Sec. 1.105.
Section 1.105(a)(3) also expresses the Office's authority to
require information in any appropriate manner, and gives, as examples,
a requirement for factual information known to applicant (not involving
an interrogatory or stipulation) (paragraph (a)(3)(i)); interrogatories
regarding applicant's factual knowledge (paragraph (a)(3)(ii)); and
stipulations as to facts with which applicant may agree or disagree
(paragraph (a)(3)(iii)). Section 1.105(a)(4) contains the former Sec.
1.105 (a)(3) requirements relating to the acceptance of replies to
requirements for information. The Sec. 1.105(a)(4) recitation of safe
harbor replies, that the information sought is either unknown or not
readily available is set forth in a clearer manner. In addition, the
characterization in Sec. 1.105(a)(4) of the Office's acceptance of
replies is changed from "will" to "may" be accepted to more
accurately reflect the Office's authority to ask follow-up questions.
The provisions of existing Secs. 1.105(a)(1)(i) through
(a)(1)(vii) set forth non-exhaustive examples of the types of documents
that may be required from applicants under Sec. 1.105. Section
1.105(a)(1)(viii) sets forth an additional (non-exhaustive) example,
technical information that is known to applicant, which may be required
of applicants. This may include factual information concerning: (1) Art
related to applicant's invention; (2) applicant's disclosure; (3) the
claimed subject matter; (4) other factual information pertinent to
patentability; or (5) the accuracy of the examiner's stated analysis of
such items.
Section 1.105(a)(3)(i) provides that a requirement for information
may be used to ask for factual information known to applicant. An
accompanying interrogatory or stipulation is not required. Section
1.105(a)(3)(ii) provides that interrogatories may be used to ask
specific questions seeking applicant's factual knowledge. Such a
requirement for information may include an inquiry as to the existence
of a particular document or other piece of information and a
requirement that such information be supplied if it is known to exist
and is readily available. Section 1.105(a)(3)(iii) provides that a
stipulation may be used as to facts with which applicant may agree or
disagree in order to clarify the record about uncontroverted matters.
The terms "factual" and "facts" are included in the rule to make it
clear that it is facts, and factual information, that are known to
applicant, or readily obtained after reasonable inquiry by applicant,
that are being sought, and that requirements under Sec. 1.105(a)(3)
are not requesting opinions that may be held or would be required to be
formulated by applicant. Factual technical information subject to a
requirement is that factual information that is known to, or readily
ascertained after making reasonable inquiry by, applicant. Where the
factual information requested relates to the subject application, and
details thereof, applicant would be expected to make a reasonable
inquiry under the circumstances to find the factual information
requested (Sec. 10.18(b)(2)). Applicant need not, however, derive or
independently discover a fact, such as by experimentation, in response
to a requirement for information. The purpose of Sec. 1.105 is to
improve patent quality, and render better decisions, and not to put
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applicants in jeopardy of meeting their duties of candor and good faith
in their replies to a requirement for information. Requirements for
stipulations and interrogatories under Sec. 1.105 are a means to
clarify prosecution history, thereby enhancing quality and reducing
patent pendency, key objectives of the Office's 21st Century Strategic
Plan.
Section 1.105(a)(4) replaces former Sec. 1.105(a)(3) and provides
two types of safe harbor replies to requirements for information that
may be accepted as a complete reply to a requirement for information.
Section 1.105(a)(4) applies not only to previously existing Sec.
1.105(a)(1)(i)-(vii), but also to new Sec. 1.105(a)(1)(viii), as well
as any other type of information requested under Sec. 1.105 that is
not explicitly set forth in the examples of Sec. 1.105(a)(1)(i)-
(viii). Section 1.105(a)(4) indicates that the Office may accept, as a
reply, a statement from applicant that the required information is
"either unknown or is not readily available" (providing both
alternatives) to the party or parties from which it was requested.
There is seen to be no need for applicants to distinguish between
whether the required information is unknown or is not readily
available. Thus, if information remains unknown after a reasonable
inquiry is made (MPEP Sec. 704.12(b)), applicant may simply reply that
the requested information is either unknown or is not readily available
rather than be required to take a categorical position either that the
information is unknown to applicant, or that the information is not
readily available to applicant.
A reply under Sec. 1.105(a)(4) that the information inquired about
is unknown may only be used after applicant has made a good faith
attempt to obtain the information based on a reasonable inquiry.
Applicants, however, should also be aware that the absence of some
kinds of information may adversely affect the prosecution of an
application. For example, to be compliant with 35 U.S.C. 112, para. 6,
there must be a clear correlation and identification of what structure
set forth in the specification would be capable of carrying out a
function recited in a claim. See Med. Instrumentation & Diagnostics
Corp. v. Elekta AB, 344 F.3d 1205, 1211, 1212, 68 USPQ2d 1263, 1268,
1269 (Fed. Cir. 2003) ("[t]he requirement that a particular structure
be clearly linked with the claimed function in order to qualify as
corresponding structure is also supported by the requirement" of 35
U.S.C. 112, para. 2, and "[t]he correct inquiry is to look at the
disclosure of the patent and determine if one of skill in the art would
have understood that disclosure to encompass software * * * and been
able to implement such a program, not simply whether one of skill in
the art would have been able to write such a software program"). A
purpose for the current addition of Sec. 1.105(a)(viii), below, is the
encouragement of inquiry into the support found in the disclosure for
means- or step-plus-function limitations recited in the claims (35
U.S.C. 112, para. 6). If it is not apparent to the examiner where in the
specification and drawings there is support for a particular claim
limitation reciting a means to accomplish a function, and if an inquiry
by the examiner for such support is met by a stated lack of knowledge
thereof by applicant, the examiner could very well conclude that there
is no such support and make appropriate rejections under, e.g., 35
U.S.C. 112, para. 1 (written description) and 35 U.S.C. 112, para. 2. MPEP
section 2181. This is to be distinguished from the requirement of Sec.
1.75(d), which may be invoked to make clearer, by amending the
specification, the original presence of the corresponding support.
Section 1.105 is simply an express statement of the Office's (and
the examiner's) inherent authority under 35 U.S.C. 131 and 132 to
require information that is reasonably necessary to properly examine or
treat a matter in an application. See Changes to Implement the Patent
Business Goals, 65 FR 54603, 54633 (Sept. 8, 2000), 1238 Off. Gaz. Pat.
Office 77, 103 (Sept. 19, 2000) (final rule); see also Jaskiewicz v.
Mossinghoff, 822 F.2d 1053, 1061, 3 USPQ2d 1294, 1301 (Fed. Cir. 1987)
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(practitioners have a duty to honestly and forthrightly answer requirements
for information from the Office). Requirements for information are not
routinely made. They are to be used only where there is an absence of
necessary information within the record. Any such requirement should be
tailored to treat specific issues on a case-by-case basis.
Section 1.105(a)(4) has also been revised to state that the Office
"may" (rather than "will") accept a reply to a requirement for
information that states that the required information is either unknown
or is not readily available. Such revision is intended to better
reflect present practice where the Office has stated that such a reply
will "generally" be accepted, but that the Office can ask follow-up
questions, such as where it is clear that applicant did not understand
the requirement, or the reply was ambiguous and a more specific answer
is possible. MPEP Sec. 704.12(b).
Examples where stipulations and interrogatories may be used to
elicit technical factual information reasonably necessary for
examination include applicant's actual knowledge: (1) Of the common
technical features shared among all claims, or admission that certain
groups of claims do not share any common technical features; (2) about
the support found in the disclosure for means- or step-plus-function
claims (35 U.S.C. 112, para. 6); (3) of precisely which portion(s) of the
disclosure provide the written description and enablement support for
specific claim element(s); (4) of the meaning of claim limitations or
terms used in the claims, such as what teachings in the prior art would
be covered by particular limitations or terms in a claim and which
dictionary definitions would define a particular claim term,
particularly where those terms are not used per se in the
specification; (5) of which portions of each claim correspond to any
admitted prior art in the specification; (6) of the specific utility
provided by the claimed subject matter on a claim-by-claim basis; (7)
as to whether a dependent claim element is known in the prior art based
on the examiner having a reasonable basis for believing so; (8) of
support for added limitations in an amended claim; and (9) of facts
related to public use or sale situations. Other situations where it
would be appropriate to use interrogatories or stipulations will be
determined on a case-by-case basis. The intent of requirements for
information in the form of interrogatories and stipulations is to
obtain facts pertinent to examination or treatment of a matter. For
example, applicant may be questioned about the use of a particular
claim expression as to applicant's factual knowledge of what the
particular expression would cover so that an appropriate search of the
prior art can be made and to determine whether alternative expressions
used in the prior art are in fact equivalent teachings.
As with the initial implementation of Sec. 1.105, the Office will
train its employees on the appropriate use of the revised rule. See
Changes to Implement the Patent Business Goals, 65 FR at 54634, 1238
Off. Gaz. Pat. Office at 104. Every requirement for information using
stipulations or interrogatories, for an initial break-in period, will
be reviewed by management in the appropriate Technology Center. More
specific guidance will be provided to examiners on the treatment of
replies to interrogatories and stipulations. While the Office does not
currently plan to develop standard form paragraphs for interrogatories
or stipulations, as interrogatories or stipulations are expected to be
used on a case-by-case basis, generic form paragraphs may be developed
if a need for them develops in the future.
There were many comments submitted on the proposed amendments to
Sec. 1.105, with all comments either strongly opposed to the rule
change, or expressing significant concerns similar to the comments
received during the rule making in which Sec. 1.105 was initially
promulgated. Some comments express almost the exact same concerns as
were expressed in the original rule making (e.g., that it may be used
to shift the burden of examination from the examiner to the applicant).
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These comments, however, do not indicate that there have actually been
any problems in the three-year history of this section.
Comment 66: Several comments suggested that the Office hold public
hearings prior to implementation of the changes that had been proposed
to Sec. 1.105, e.g., to permit a full airing of views and exploration
of the consequences of the changes.
Response: The comment has not been adopted. The three comments that
urged such a course of action did not explain what specific additional
gains were to be achieved from a public hearing over what could be
learned from written public comments in response to the proposed
amendment to Sec. 1.105. The Office has received a number of comments
in regard to the details of the proposed changes and has adopted a
number of them in an attempt to balance "improving patent quality
without imposing undue burden on applicants" (statement in comment).
Comment 67: Several comments criticized the adoption of
"litigation" techniques, such as interrogatories and stipulations, on
the grounds that examiners are not legally trained to draft
interrogatories and stipulations, in such a manner as not to be overly
broad and produce useful results. A representative comment notes that
"Interrogatories and stipulations are proposed to be used to elicit
information as to numerous legally based categories of information. As
any litigator will attest, the crafting of interrogatory questions or
statements for stipulation is one that requires a fair amount of time,
training and skill in considering the formulations of such and the
significant verbiage of both the questions and consequences of the
answers. This expanded requirement for information places the examiner,
who may not be legally trained, in the role of one presumed to be
experienced in litigation."
Response: To the extent that such comments are directed toward the
elucidation of opinions and legal conclusions, the comments are adopted
and the rule has been amended to remove the term "opinion." As to the
use of interrogatories and stipulations to elicit factual information,
the examiners will be given training to avoid overly broad requests and
to tailor requirements to elicit specific information. Hence, examiners
will endeavor to draft requirements for information that are focused
and adequately convey what factual information is required.
Comment 68: Several comments state that the use of interrogatories
and stipulations will be an expensive, time-consuming process, and will
require applicant to expend a large amount of resources to avoid
creating unnecessary estoppels.
Response: The comment has been adopted to the extent that such
criticism was based on the use of interrogatories and stipulations to
obtain opinions.
Comment 69: Several comments expressed concern that responses to
interrogatories and stipulations will lead to additional charges of
inequitable conduct.
Response: The comments are adopted in that such fears were
apparently based on the use of interrogatories and stipulations to
obtain opinions, which use is not reflected in the final rule.
Comment 70: Several comments strongly opposed the use of
interrogatories and stipulations to elicit an opinion on the level of
ordinary skill in the art. The comments say that applicants are
generally not knowledgeable in that regard, examiners have greater
knowledge, and in
litigation, expert witnesses are used to determine such information.
Response: The comment has been adopted in that Office guidelines
will indicate that requirements for information should generally not
seek opinions on the level of ordinary skill in the art, and an example
thereto in the notice of proposed rule making has been deleted.
Comment 71: Several comments have expressed concern that
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interrogatories and stipulations may be employed as a means to shift
the burden of examination to applicants.
Response: The comment is not adopted. Similar comments were made in
the original rule making establishing Sec. 1.105 (as noted above) but
no commentator to this proposed rule making has indicated any instance
of where Sec. 1.105, as actually used, shifted the burden of
examination to applicant. With proper training of examiners, and
supervisory review of stipulations or interrogatories used during an
initial period, there should not be any sound reason to be concerned.
Comment 72: Several comments are directed at the need for examiners
to be trained in the drafting of interrogatories and stipulations and
the need for their requirements to be reviewed by attorneys.
Response: The comment is adopted to the extent that interrogatories
and stipulations should not be used to ask for opinions, and that
examiners will receive training in the drafting of concise, focused
interrogatories and stipulations. For an initial period after adoption
of the rule, stipulations and interrogatories will be reviewed.
Comment 73: Several comments have been received seeking a mechanism
for further review of interrogatories and stipulations as to their
propriety, scope and clarity, faster than a petition to the Director
would take.
Response: The comment has not been adopted. The current petition
remedy under Sec. 1.181 is sufficient. Applicant may petition under
Sec. 1.181 to have a requirement for information modified or
withdrawn. During the three-year existence of Sec. 1.105, there is no
evidence to date that has demonstrated the need for a different means
for review, or that the current means of review would not be handled
expeditiously.
Comment 74: One comment asked if applicant could request
clarification of the requirement for information.
Response: Clarifications may be requested but would not toll the
period for reply. Tolling would lead to unnecessary prolonging of
prosecution. Where applicant has made a bona fide attempt to reply to a
requirement for information but has misunderstood what was being
requested, the reply will not be held to be incomplete and applicant
may be given additional time to reply. Where a requirement for
information cannot be answered at all or in part absent clarification,
applicant should petition pursuant to Sec. 1.181 that the requirement
for information be clarified and remailed starting a new period for
reply. Of course, applicant may informally contact the examiner
requesting clarification without a need to remail and restart the date
for reply.
Comment 75: Several comments sought clarifications for responses to
the various types of information that may be required to be submitted
to determine possible safe harbor responses other than the submission
of the required information. In one example, it is posited that rather
than ask about the distinctions among claims, the examiner could simply
read the claims. A proposed "predictable and accurate response to such
an interrogatory would be to recite the words used in the first
independent claim, then to discuss any words that are different in any
subsequent independent claims and provide technical or lay definitions
for each of the different words." It is concluded that such reply
would provide no more information than "the Examiner could and should
have acquired on his own during the first examination."
Response: The comment is not adopted. Claims frequently contain
differing generic language or convoluted syntax. Whether a single word
may be misunderstood is not at issue. This may be easily remedied by
reference to a standard dictionary. Rather, where different expressions
are used in different independent claims to apparently describe the
same function, process, product, result, etc., is the type of issue to
be addressed. To the extent that applicant is aware of the fact that
one expression may be broader or represent an altogether different
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limitation, the examiner, as well as the public, would benefit from
such knowledge during prosecution rather than during infringement
litigation.
Comment 76: One comment has suggested additional items of technical
information that would be useful for the Office to obtain. For example,
"[i]nformation that helps ensure the examiner searches and examines
the `right' invention, preferably prior to the first official action on
the merits." Specific examples of such information included "meaning
of claim terms," identification of "structure or steps that
correspond to a functional claim limitation," seeking to clarify
"results-obtained limitations," identification of utility if not
evident, and the "ability to request linkage between identified claim
terms and the drawings and/or specification." It was noted that such
information would improve "examination efficiency," and also benefit
"the public by providing a more certain claim scope."
Response: The comment has been adopted in some of the examples set
forth above.
Comment 77: Several comments suggested that the proposed amendment
to Sec. 1.105 would be particularly onerous on pro se inventors.
Response: The comment has been adopted to the extent that the
comments were directed towards requiring submission of opinion
evidence, e.g., the level of ordinary skill in the art. Thus, this
final rule making clarifies that "opinion evidence" shall not be
encouraged to be sought by a Sec. 1.105 requirement. It is not seen
that such comments would be equally applicable towards a requirement to
submit factual information that applicants are aware of, or could
readily determine after making a reasonable inquiry.
Comment 78: Comments have requested the inclusion of a provision
"clarifying that confidential and protected information cannot be
requested under Rule 105." It is noted in the comments that "an
agency cannot routinely request such information to be produced without
first meeting heightened burdens, specific to each type of information
requested, to show why such information is necessary." It is argued
that a standard of "reasonably necessary" is a "much lower burden"
than "substantial need," which is the standard required to obtain an
attorney work product.
Response: The comment is not adopted. The argument that the
standard of "reasonably necessary to properly examine or treat" a
matter would not suffice is not accepted. Where applicant is being
asked to submit what it believes to be trade secret, proprietary, and/
or protective order materials, applicant can make use of, at the time
the material is submitted, the provisions of Sec. 1.59 for expungement
of information where applicable. Additionally, applicant can petition
under Sec. 1.181 that the trade secret, proprietary, and/or protective
order materials being requested to be submitted are unnecessary.
Comment 79: A comment seeks to have the Office specifically provide
in Rule 105 that "the record must provide support for the proposition
that the particular information being requested
is reasonably necessary to further examination of the application."
Response: The comment is not adopted. A review of MPEP Secs.
704.11 and 704.11(a), relating to determining if information is
reasonably necessary, reveals that the need for such information should
be based on the presence, or absence, of information in the record of
the application.
Comment 80: A comment seeks to have a provision in Sec. 1.105
"clarifying that the examiner making the request for information must
explicitly articulate, based on specific facts in the record, the
reason why the information is reasonably necessary."
Response: The comment is not adopted. As a practical matter,
specific guidance exists in examples in Sec. 1.105, in this final
rule, and the MPEP. All this guidance clearly dictates that
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requirements for information are made only when reasonably necessary.
Comment 81: One comment requested that "the examiner be required
under the rule to provide a reasoned statement in the record as to why
the request for information does exhibit a reasonable likelihood of
being readily fulfilled by the applicant." It was also requested that
examples be given of "what types of requests would not exhibit such a
reasonable likelihood of being fulfilled by the applicant."
Response: Examples are provided to examiners as to the types of
information that can be required to be submitted. The examples relate
to factual information that is "reasonably necessary to properly
examine or treat the matter." Moreover, Sec. 1.105(a)(4) provides
that the Office may accept as a complete reply that the factual
information requested is unknown or is not readily available. In
appropriate situations the Office can ask follow-up questions. It is
not seen to be productive to develop negative examples where
information would not be readily be available.
Comment 82: One comment asks for clarification as to whether
equivalents need also be specified when replying to a requirement for
information as to support in the disclosure for a means- or step-plus-
function limitation.
Response: Equivalents by their nature are items not specifically
disclosed in the specification as corresponding to the function in the
claim, but are equivalents of what are so disclosed. Hence, a
requirement for information requiring only identification of what
structure or steps in the specification are taught as corresponding
with the claimed function would not require disclosure of equivalents.
An examiner may, however, inquire as to what applicant knows to be
equivalents to what is disclosed if such information would be
reasonably necessary for purposes of search or prior art application
and therefore necessary to properly examine the application. In such
case, applicant would be required to identify all equivalents of which
applicant has actual knowledge.
Comment 83: A comment asks "[w]here applicant intends a claim term
to be afforded its accustomed meaning, would it be a complete and
proper response to merely indicate the intention? If not, must a
dictionary definition be given * * * as only one example of a term's
accustomed meaning?" The comment goes on to question the need for such
requirement as the examiner is "presumed to be skilled in the field of
the invention" and has "access to dictionaries and treatises to the
same extent as applicant. * * *"
Response: A requirement as to the scope or definition of a claim
term would be because the record was unclear in such matter. A reply
that the term be given its ordinary meaning would be sufficient,
provided general publication dictionaries define such term. Where
applicant is relying upon a specialized treatise for the definition of
a term, it may be that the examiner does not have access to such
treatise and a more specific reply, such as identification of the
treatise and a copy of the pertinent page, may be required.
Comment 84: One comment states stipulations and interrogatories to
elicit information about claim terms are unnecessary as applicant's
interpretation is "totally irrelevant, as claims are given their
broadest reasonable meaning absent a clear definition in the
specification."
Response: Interrogatories will not be used to seek applicant's
opinion about claim terms. Examiners, however, need to appreciate the
meaning of claims prior to giving them the broadest reasonable
interpretation. The meaning of words, phrases and terms is often opaque
and clarification would be highly desirable. To the extent that an
applicant has some factual information as to what is meant by a
particular word or phrase, it is appropriate that applicant supply such
information. For example, it may be that a portion of the specification
has given a special definition to the term, which is not apparent to
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the examiner. Moreover, it may not be apparent to an examiner how broad
a particular limitation may in fact be read, e.g., where the claim term
or expression lends itself to a variety of meanings or it is
particularly opaque. Thus, applicant's factual knowledge is relevant
and necessary to properly examine the application. Additionally, a
stipulation may be useful in seeking agreement with what the examiner
believes to be the proper definition of a claim term or phrase. The
failure to reach agreement would in itself provide valuable prosecution
history.
Comment 85: One comment, in discussing the example of
identification of a specific utility supporting the claimed subject
matter, requests that the examiner be required to indicate a reason to
doubt the objective truth of the statements in the disclosure of a
specific utility.
Response: The comment is not adopted. Example 7 in the notice of
proposed rule making includes the situation where there is a disclosure
of more than one utility, some of which are incredible, and at least
one claim where it is not specified which utilities support that claim.
See Changes to Support Implementation of the United States Patent and
Trademark Office 21st Century Strategic Plan, 68 FR at 53832, 1275 Off.
Gaz. Pat. Office at 37. In such instance, it is appropriate for the
examiner to question which utility supports which claims so as to
determine if any claims are supported by only incredible utilities.
Where a utility is believed to be incredible and it is the only one
that is identified in the specification as supporting a particular
claim, Office policy directs the examiner to reject the claim and
provide reasons why the utility is believed to be incredible. The issue
of the examiner doubting the objective truth of the statements in the
disclosure of a specific recited utility is not reached under the
purpose contemplated for Sec. 1.105. Section 1.105 is to be utilized
to identify a utility asserted to support a claim. Once that is
established, should the examiner doubt that such utility supports a
particular claim, a rejection, not a requirement for information, would
be made.
Comment 86: Two comments suggested that the use of a rejection
rather than a requirement for information is more appropriate, such as
if the examiner cannot comprehend the technology. A response to the
rejection can either direct the examiner to teachings in the disclosure
or the prior art, or amend the specification and/or claims if applicant
agrees that the examiner's confusion is caused by the application.
Information about precisely which portions of the disclosure provide
written description supporting the enablement of the claim is
unnecessary as claims are presumed enabled. Such information is "not
reasonably necessary to examination until the Office makes a prima
facie case of lack of written description or nonenablement."
Response: The comments are not adopted. The type of information
contemplated under Sec. 1.105 may affect the type of search done by
the examiner and may therefore be beneficial to have prior to a first
Office action on the merits. A distinction will be made in the
implementation instructions regarding compliance with Sec. 1.75(d)(1)
vs. 35 U.S.C. 112, para. 2. If the examiner is convinced that the claim's
metes and bounds lack sufficient definition in the specification, a
rejection under 35 U.S.C. 112, para. 2, would be appropriate. If, on the
other hand, the examiner is not certain that there is compliance with
Sec. 1.75(d)(1) between the claims and the specification, rather than
require amendment to achieve conformance, which may have implications
under Festo v. Shoketsu Kinzoku Kogyo, 535 U.S. 722, 62 USPQ2d 1705
(2002), the record may be clarified by a reply to a requirement for
information rather than by amendment.
Comment 87: One comment characterizes the rule as overly broad in
not limiting the amount of discovery requests that could be made.
Response: The comment is not adopted. The Office does not envision
multiple sequential requirements for information being made, except for
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limited situations, such as where it appears that applicant did not
understand the requirement, or the reply was ambiguous and a more
specific answer is possible.
Comment 88: One comment states that stipulations are unnecessary
because if "an Examiner's assertion is not controverted, the record
stands for the Examiner's assertion under the doctrine of file wrapper
estoppel."
Response: The comment is not adopted. Silence on part of the
applicant to a statement made by the examiner does not necessarily
establish an estoppel.
Comment 89: One comment suggests that Rule 105 should be "directed
to applicants, or to the assignee if the assignee has excluded the
rights of the applicants."
Response: The comment is not adopted. The suggestion would exclude
the inventors from being questioned where the assignee has taken over
prosecution. The fact that the assignee has taken over prosecution of
an application does not shield the inventors from their duties, such as
executing a Sec. 1.63 declaration, or providing material information
to the Office. To the extent that one or more inventors can no longer
be located or refuse to cooperate, such would support a reply that the
information is not readily available, if they are the only ones with
such information.
Section 1.111: Section 1.111(a)(2) is amended to provide that a
reply that is supplemental to a Sec. 1.111(b) compliant reply will not
be entered as a matter of right, with the exception that a supplemental
reply will be entered if it is filed within the period when action by
the Office is suspended under Sec. 1.103(a) or (c) (suspensions
requested by the applicant). Section 1.111(a)(2) is also amended to
provide that the Office may enter a supplemental reply if the
supplemental reply is clearly limited to: (1) Cancellation of a
claim(s); (2) adoption of the examiner suggestion(s); (3) placement of
the application in condition for allowance; (4) reply to an Office
requirement made after the first reply was filed; (5) correction of
informalities (e.g., typographical errors); or (6) simplification of
issues for appeal. When a supplemental reply is filed in sufficient
time to be entered into the application filed before the examiner
considers the prior reply, the examiner may approve the entry of a
supplemental reply if, after a cursory review, the examiner determines
that the supplemental reply is limited to meeting one or more of the
conditions set forth in Sec. 1.111(a)(2)(i). The new practice replaces
the prior practice for disapproving a second or subsequent supplemental
reply set forth in Sec. 1.111(a)(2).
A supplemental reply which has not been approved for entry, and
therefore, not entered, will not be entered when a reply to a
subsequent Office action is filed, even if there is a specific request
for its entry in the subsequent reply. If applicants wish to have the
(not entered) supplemental reply considered by the examiner, applicants
must include the contents of the (not entered) supplemental reply in a
proper reply under Sec. 1.111, 1.116, or 1.312 in response to the next
Office action. If the reply under Sec. 1.111, 1.116, or 1.312 includes
any amendments to the specification including claims, or drawings, the
reply must be filed in compliance with Sec. 1.121. If the next Office
action is a final rejection or a notice of allowance, applicants may
file an RCE in compliance with Sec. 1.114 (i.e., having a submission
and a fee) and include the contents of such (not entered) supplemental
reply in the submission.
A supplemental reply will be entered if it is filed within the
period during which action is suspended by the Office under Sec.
1.103(a) or (c). For example, if test data is required to overcome a
rejection under 35 U.S.C. 103(a) and the applicant needs more time to
conduct an experiment and collect the test data, the applicant may file
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a first reply to the Office action (as the Office will not grant a
suspension of action if there is an outstanding Office action awaiting
a reply by the applicant) and a petition for suspension of action with
a showing of good and sufficient cause under Sec. 1.103(a). If the
suspension is granted by the Office, applicant may submit the test data
in a supplemental reply during the suspension period. In addition, if
an applicant is filing an RCE after a final rejection accompanied by a
submission which is a reply to the final Office action, and needs more
time to prepare a supplemental reply (e.g., an affidavit), applicant
may consider filing a request for suspension of action under Sec.
1.103(c) along with the RCE (and submission) because any supplemental
reply filed during the suspension period will be entered. See Sec.
1.111(a)(2)(ii). A supplemental reply, however, will not be entered if
it is filed during a suspension of action initiated by the Office under
Sec. 1.103(e), (f) or (g). Amendments filed within the period during
which action is suspended under Sec. 1.103(b) (note: continued
prosecution applications (CPAs) for designs can still be filed) or
Sec. 1.103(d) are not considered supplemental replies under Sec.
1.111 because they are preliminary amendments per Sec. 1.115.
Information disclosure statements under Sec. 1.97 and Sec. 1.98 are
also not considered supplemental replies under Sec. 1.111.
Section 1.111(a)(2) will not change the impact of the submission of
a supplemental reply on patent term adjustment, in that the submission
of any supplemental reply will continue to cause a reduction of any
accumulated patent term adjustment under Sec. 1.704(c)(8).
Comment 90: Several comments suggested that the Office should not
require that a supplemental reply must be filed within the statutory
period. The comments further suggested that a supplemental reply should
be entered if it is filed and associated with the application file
before the examiner begins considering the original reply. One of the
comments also suggested that the Office should adopt a guideline
similar to the PCT Regulation 66.4bis which states "[a]mendments or
arguments need not be taken into account by the International
Preliminary Examining Authority for the purposes of a written opinion
or the international preliminary examination report if they are
received after that Authority has begun to draw up that opinion or
report."
Response: Most of these suggestions have been adopted. Section
1.111(a)(2)(i) will not require that a reply that is supplemental to a
Sec. 1.111(b) compliant reply must be filed within the statutory
period. While a supplemental reply does not have to be filed within the
statutory period for reply, if applicant wishes to have a supplemental
reply considered for entry, applicant should file the supplemental
reply in sufficient time to be entered into the application file before
the examiner considers the prior reply.
Comment 91: Several comments suggested that the prior disapproval
practice that permits the Office to disapprove a second or subsequent
supplemental reply when a substantial amount of work has already been
conducted by the examiner would appear sufficient to safeguard the
interests of the Office in maintaining the efficiency of the
examination process. A few comments further suggested that the Office
should apply the disapproval practice to the first supplemental reply.
Response: These suggestions have not been adopted. The disapproval
practice did not address the pendency problems associated with first
supplemental replies. The Office receives a significantly larger number
of first supplemental replies than second (or subsequent) supplemental
replies. The procedures for disapproving a second (or subsequent)
supplemental reply were too time-consuming for examiners to use for the
large number of first supplemental replies in determining whether a
substantial amount of work has already been conducted on the date the
Office receives the first supplemental reply. Furthermore, when the
examiner wished to disapprove a supplemental reply, the examiner had to
request the Office technical support to unenter the amendment, change
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the system records, and send the applicant an Office communication to
document the reasons for the disapproval. The revised Sec. 1.111(a)(2)
will provide a single simplified procedure for handling all
supplemental replies, which will reduce processing delays and save
Office resources.
Comment 92: A few comments suggested that there may be justifiable
reasons for filing a supplemental reply other than the specific reasons
identified in the proposed Sec. 1.111(a)(2)(i), such as a supplemental
amendment to correct inadvertent errors, to reduce the issues for an
appeal following an interview by the examiner, to file a complete
written statement of the reasons presented at the interview as
warranting favorable action under Sec. 1.133(b), or to take into
consideration the teachings of new prior art.
Response: Most of these suggestions have been adopted. Section
1.111(a)(2)(i) includes three more conditions where a supplemental
reply may be entered, which are: Reply to an Office requirement made
after the first reply was filed; correction of informalities (e.g.,
typographical errors); and simplification of issues for appeal. See
Sec. 1.111(a)(2)(i)(D) through (a)(2)(i)(F).
Comment 93: A few comments requested clarification on whether
applicants may request entry of a supplemental reply in response to a
final Office action without filing an RCE under Sec. 1.114, although
it is recognized that there would be no entry of such an amendment as a
matter of right without filing the RCE.
Response: The Office would like to clarify that an applicant may
include the contents of a supplemental reply that has previously not
been approved for entry in a reply under Sec. 1.116 in response to a
final Office action. Entry of the reply, however, would be unlikely as
the standard for entry under Sec. 1.116 is similar to the standard for
entry under Sec. 1.111(a)(2)(i). Furthermore, applicants cannot simply
request the entry of a supplemental reply in a subsequent reply. If
applicants wish to have a (not entered) supplemental reply considered
by the examiner, applicants must include the contents of the (not
entered) supplemental reply in a proper reply under Sec. 1.111, 1.116,
or 1.312, or an RCE submission under Sec. 1.114(c). If the reply or
submission includes any amendments to the specification including
claims, or drawings, the reply must be filed in compliance with Sec.
1.121.
Comment 94: A comment suggested that a submission in reply to a
requirement under Sec. 1.105 should not be considered as a reply under
Sec. 1.111 because applicants should be allowed to file a supplemental
reply to a requirement under Sec. 1.105.
Response: If applicant wishes to file additional information after
submitting a reply to a requirement under Sec. 1.105, applicant may
file the additional information in a supplemental reply to the
requirement under Sec. 1.105, although such reply will not be entered
as a matter of right. Applicant may also submit the additional
information in accordance with Sec. 1.97 and Sec. 1.98.
Comment 95: A comment suggested that the Office should provide the
examiner discretionary authority to enter a supplemental amendment
filed before the mailing of a subsequent Office action and provide
substantial guidance indicating exemplary circumstances in which the
Office believes that examiners should exercise their discretion to
enter the supplemental amendments. Another comment sought clarification
whether the examiner has the discretionary authority to enter and
consider supplemental amendments that are not listed in Sec.
1.111(a)(2)(i).
Response: The suggestions have been adopted. Section 1.111(a)(2)(i)
will not require that a reply that is supplemental to a Sec. 1.111(b)
compliant reply must be filed within the statutory period. Section
1.111(a)(2)(i) provides that such a supplemental reply will not be
entered as matter of right except as provided in Sec. 1.111(a)(2)(ii).
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Section 1.111(a)(2)(i) provides six exemplary circumstances where an
examiner can exercise discretion to enter a supplemental reply.
Examiners may enter and consider other supplemental amendments that are
not listed in Sec. 1.111(a)(2)(i).
Comment 96: A comment suggested that the Office should provide a
procedure for filing an RCE under Sec. 1.114 in applications that have
not been finally rejected.
Response: The comment is not adopted. Filing an RCE is not
necessary if prosecution in the application is not closed. Applicant
may include the contents of the (previously not entered) supplemental
reply in a proper reply to the next Office action.
Comment 97: A comment indicated that there would be disagreement
between the applicant and the examiner on whether a supplemental
amendment would place the application in condition for allowance. The
comment further indicated that since such determination can only be
made after the supplemental reply has been entered and considered, it
would be illogical to deny entry at that time.
Response: The comment is not adopted. The examiner is not required
to give full consideration to the supplemental reply before not
approving the entry of the supplemental reply. The examiner has the
discretion not to approve the entry of a supplemental reply if, after a
cursory review, the examiner determines that the supplemental reply
does not place the application in condition for allowance and no other
conditions set forth in Sec. 1.111(a)(2)(i) applies.
Section 1.115: Section 1.115(a) is amended to provide that the
patent application publication may include preliminary amendments. For
more details, see Sec. 1.215(a). Section 1.115(a)(1) is added to
provide that a preliminary amendment that is present
on the filing date of an application is part of the original disclosure
of the application. Section 1.115(a)(2) is added to provide that a
preliminary amendment filed after the filing date of the application is
not part of the original disclosure of the application. Section
1.115(b) is amended to include the first sentence of Sec. 1.115(b)(1)
to read "[a] preliminary amendment in compliance with Sec. 1.121 will
be entered unless disapproved by the Director." The rest of original
Sec. 1.115(b)(1) is redesignated as Sec. 1.115(b)(2). Section
1.115(b)(2) is redesignated as Sec. 1.115(b)(3). Section 1.115(b)(1)
is amended to provide that a preliminary amendment seeking cancellation
of all claims without presenting any new or substitute claims will be
disapproved. Section 1.115(c) is redesignated as Sec. 1.115(b)(4) and
is amended to change the reference to paragraph (b)(2) to paragraph
(b)(3) because paragraph (b)(2) is redesignated as paragraph (b)(3).
The Office will treat any preliminary amendment under Sec.
1.115(a)(1) that is present on the filing date of the application
automatically as part of the original disclosure. Under the prior
practice, a preliminary amendment that was present on the filing date
of an application may be considered a part of the original disclosure
if it was referred to in a first filed oath or declaration in
compliance with Sec. 1.63. If the preliminary amendment was not
referred to in the oath or declaration, any request to treat the
preliminary amendment as a part of the original disclosure was by way
of petition under Sec. 1.182 requesting that the original oath or
declaration be disregarded and that the application be treated as an
application filed without an executed oath or declaration under Sec.
1.53(f). Any such petition must have been accompanied by the $130.00
petition fee, a newly executed oath or declaration (which identified
the application and referred to the preliminary amendment), and the
requisite surcharge under Sec. 1.16(e).
Section 1.115(a)(1) will provide a consistent way of treating
preliminary amendments that are present on the filing date of the
application as part of the original disclosure and eliminates the need
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for filing a petition under Sec. 1.182, the petition fee, and the
surcharge under Sec. 1.16(e) when applicant files a supplemental oath
or declaration that refers to the preliminary amendment.
If a preliminary amendment is present on the filing date of an
application, and the oath or declaration under Sec. 1.63 does not also
refer to the preliminary amendment, the normal operating procedure is
to not screen the preliminary amendment to determine whether it
contains subject matter not otherwise included in the specification or
drawings of the application as filed (i.e., subject matter that is
"new matter" relative to the specification and drawings of the
application). As a result, it is applicant's obligation to review such
a preliminary amendment to ensure that it does not contain subject
matter not otherwise included in the specification or drawings of the
application as filed, otherwise a supplemental oath or declaration
under Sec. 1.67 referring to such preliminary amendment must be filed
in the application. The failure to submit a supplemental oath or
declaration under Sec. 1.67 referring to a preliminary amendment that
contains subject matter not otherwise included in the specification or
drawings of the application as filed removes safeguards that are
implied in the oath or declaration requirements that the inventor
review and understand the contents of the application, and acknowledge
the duty to disclose to the Office all information known to be material
to patentability as defined in Sec. 1.56.
Applicants can avoid the need to file an oath or declaration
referring to any preliminary amendment by incorporating any desired
amendments into the text of the specification including a new set of
claims when filing the application instead of filing a preliminary
amendment, even where the application is a continuation or divisional
application of a prior-filed application. Furthermore, applicants are
strongly encouraged to avoid submitting any preliminary amendments so
as to minimize the burden on the Office in processing preliminary
amendments and reduce delays in processing the application.
During examination, if an examiner determines that a preliminary
amendment that is present on the filing date of the application
includes subject matter not otherwise supported by the originally filed
specification and drawings, and the oath or declaration does not refer
to the preliminary amendment, the examiner may require the applicant to
file a supplemental oath or declaration under Sec. 1.67 referring to
the preliminary amendment. In response to the requirement, applicant
must submit (1) An oath or declaration that refers to the preliminary
amendment, (2) an amendment that cancels the subject matter not
supported by the originally filed specification and drawings, or (3) a
request for reconsideration.
Section 1.115(a)(2) is added to provide clarification that a
preliminary amendment filed after the filing date of the application is
not part of the original disclosure of the application. Preliminary
amendments filed after the filing date of the application cannot
include new matter, (i.e., subject matter not supported by the original
disclosure of the application). See 35 U.S.C. 132.
Example 1 (supplemental declaration): Practitioner has received an
application for filing along with an executed Sec. 1.63 declaration by
the inventors. Practitioner has drafted a preliminary amendment and
would like to file the amendment along with the application but is
uncertain whether the amendment contains subject matter not otherwise
supported by the application as executed by the inventors. Practitioner
should file the application along with the executed declaration and
preliminary amendment. As a precaution, the inventors should execute
and thereafter the practitioner should submit a supplemental
declaration under Sec. 1.67 that refers to the preliminary amendment.
Example 2 (incorporation by reference): A preliminary amendment is
present as of the filing date of an application. The preliminary
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amendment contains an incorporation by reference to a U.S. patent. The
incorporated material represents subject matter not otherwise present
in the specification of the application. A Sec. 1.63 oath or
declaration specifically referring to the preliminary amendment is
required.
Section Sec. 1.115(b)(1) is amended to provide that a preliminary
amendment seeking cancellation of all the claims without presenting any
new or substitute claims will be disapproved.
Before June of 1998, it was the practice of the Office to treat an
application filed with an amendment (preliminary amendment) canceling
all of the claims and presenting no new or substitute claims by denying
entry of the amendment. See MPEP Secs. 711.01 and 714.19 (7th ed.
1998). In Baxter Int'l Inc. v. McGaw Inc., 149 F.3d 1321, 47 USPQ2d
1225 (Fed. Cir. 1998), the Federal Circuit held that a divisional
application that included instructions to cancel all of the claims in
the specification, without presenting any new claims, and did not
contain at least one claim as required by 35 U.S.C. 112, para. 2, was not
entitled to a filing date under 35 U.S.C. 111(a) until the date an
amendment including at least one claim was filed in the application.
Following Baxter, the Office changed its practice and no longer
accorded a filing date to any application that was accompanied
by a preliminary amendment which canceled all claims and failed to
simultaneously submit any new claims. See Any Application Filed With
Instructions to Cancel All of the Claims in the Application is Not
Entitled to a Filing Date, 1216 Off. Gaz. Pat. Office 46 (Nov. 10,
1998).
Subsequently, in Exxon Corp. v. Phillips Petroleum Co., 265 F.3d
1249, 60 USPQ2d 1368 (Fed. Cir. 2001), the Federal Circuit affirmed
that the Office may refuse to enter an improper amendment that would
cancel all of the claims in an application to avert harm (loss of a
filing date) to an applicant. The Federal Circuit distinguished its
decision in Baxter, since in Baxter the Office did enter the amendment
that canceled all of the claims in the application, thus resulting in
the application not being entitled to a filing date. In contrast, in
Exxon the Office refused to enter the amendment and thus the claims
were never canceled.
Consistent with Exxon Corp. v. Phillips Petroleum Co. and MPEP
Secs. 711.01 and 714.19, the Office will disapprove entry of any
amendment (whether submitted prior to, on or after the filing date of
the application) that seeks cancellation of all claims but does not
present any new or substitute claims. Also see Treatment of Amendments
that if Entered Would Cancel All of the Claims in an Application, 1255
Off. Gaz. Pat. Office 827 (Feb. 5, 2002). For fee calculation purposes,
however, the Office will treat such an application as containing a
single claim. For example, if an applicant files a preliminary
amendment seeking cancellation of all the claims without presenting any
new or substitute claims and the claims in the application have not
been paid for, such amendment will be disapproved for entry and the
Office of Initial Patent Examination (OIPE) will initially treat the
application as containing a single claim for fee calculation purposes.
In most cases, such an amendment would not contain a complete claim
listing and would not comply with Sec. 1.121. Therefore, OIPE will
notify the applicant and require a preliminary amendment in compliance
with Sec. 1.121. When the applicant files a preliminary amendment in
compliance with Sec. 1.121, OIPE will take the preliminary amendment
in compliance with Sec. 1.121 into account in determining the
appropriate filing fee due.
Comment 98: One comment suggested that the Office should not adopt
the second sentence of proposed Sec. 1.115(b): "[i]f a preliminary
amendment is determined to contain matter not otherwise included in the
contents of the originally filed specification, including claims, and
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drawings, and the preliminary amendment is not specifically referred to
in the oath or declaration under Sec. 1.63, a new oath or declaration
in compliance with Sec. 1.63 will be required."
Response: The second sentence of proposed Sec. 1.115(b) is not
adopted in the final rule. If a preliminary amendment is present on the
filing date of an application, and the oath or declaration under Sec.
1.63 does not also refer to the preliminary amendment, the normal
operating procedure is to not screen the preliminary amendment to
determine whether it contains subject matter not otherwise included in
the specification or drawings of the application as filed (i.e.,
subject matter that is "new matter" relative to the specification and
drawings of the application). As a result, it is applicant's obligation
to review such a preliminary amendment to ensure that it does not
contain subject matter not otherwise included in the specification or
drawings of the application as filed, otherwise a supplemental oath or
declaration under Sec. 1.67 referring to such preliminary amendment
must be filed in the application. The failure to submit a supplemental
oath or declaration under Sec. 1.67 referring to a preliminary
amendment that contains subject matter not otherwise included in the
specification or drawings of the application removes safeguards that
are implied in the requirements that the inventor review and understand
the contents of the application, and acknowledge the duty to disclose
to the Office all information known to be material to patentability as
defined in Sec. 1.56.
Comment 99: A few comments suggested that if the Office adopts the
second sentence of proposed Sec. 1.115(b), applicant should have the
option to cancel the subject matter that is not otherwise supported in
the originally filed specification and drawings, or request for
reconsideration, rather than submitting a new oath or declaration
referring to a preliminary amendment filed on or before the filing date
of the application.
Response: The second sentence of proposed Sec. 1.115(b) is not
adopted in the final rule. During examination, however, if the examiner
determines that a preliminary amendment that is present on the filing
date of the application contains subject matter not otherwise supported
by the specification and drawings of the application as filed, the
examiner may require a supplemental oath or declaration under Sec.
1.67 referring to such preliminary amendment. In response to the
requirement, the applicant must submit: (1) A supplemental oath or
declaration under Sec. 1.67 referring to such preliminary amendment,
(2) an amendment to cancel the subject matter that is not otherwise
supported in the originally filed specification and drawings, or (3) a
request for reconsideration.
Comment 100: A few comments suggested that the second sentence of
proposed Sec. 1.115(b) should be amended to read "if such a
preliminary amendment submitted on or prior to the filing date of an
application is determined * * *" for purposes of clarity.
Response: This proposed sentence is not adopted in the final rule.
It is, however, applicant's obligation to review any preliminary
amendment that is present on the filing date of the application to
ensure that it does not contain subject matter not otherwise supported
by the originally filed specification and drawings. Otherwise,
applicant must file an oath or declaration referring to such
preliminary amendment.
Comment 101: One comment requested clarification on what subject
matter constitutes part of the "original disclosure" as opposed to
"originally filed specification, including claims, and drawing."
Response: The "original disclosure" of the application includes
application papers (e.g., the specification, including claims, any
drawings, and any preliminary amendment) that are present on the filing
date of the application. The phrase "originally filed specification,
including claims, and drawing" includes the specification, including
claims, and drawings that are present on the filing date of the
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application, but it does not include any preliminary amendment.
Comment 102: One comment indicated that the automatic inclusion of
preliminary amendments filed on or before the filing date of the
application as part of the original disclosure could have substantial
adverse effects where an applicant intends not to add new disclosure,
but the examiner nonetheless holds that the amendment presents "new
matter" relative to the specification and drawings of the application
as filed. The disagreement could lead to substantial administrative
delays in prosecution.
Response: Section 1.115(a)(1) codifies the prior practice, but
eliminates the requirement for filing a petition under Sec. 1.182, the
petition fee, and the surcharge under Sec. 1.16(e). The elimination of
the petition requirement will reduce any delays in prosecution caused by
the filing and processing of the petition. Thus, no additional delays in
prosecution due to the changes in Sec. 1.115(a)(1) are expected.
Comment 103: One comment questioned the Office's authority to bind
courts by Sec. 1.115. The comment noted that 35 U.S.C. 2 only gives
the Office authority to make procedural rules.
Response: The Office has the authority to promulgate Sec. 1.115
since the rule is a procedural rule. The Office already has a similar
procedure in place. Section 1.115(a)(1) codifies the prior practice,
but eliminates the requirement for a petition under Sec. 1.182.
Comment 104: One comment suggested that if a new oath or
declaration referring to a preliminary amendment cannot be executed by
all of the inventors, applicants may file a petition, similar to a
petition under Sec. 1.47, for the Office to accept an oath or
declaration signed by other available inventors.
Response: The current practice set forth in MPEP Sec. 603 provides
that if an inventor who executed the original declaration is refusing
or cannot be found to execute a required supplemental declaration, the
requirement for that inventor to sign the supplemental declaration may
be suspended or waived in accordance with Sec. 1.183. All available
joint inventors must sign the supplemental declaration on behalf of
themselves, if appropriate, and on behalf of the nonsigning inventor.
See MPEP sections 603 and 409.03.
Comment 105: One comment suggested that Sec. 1.115(b)(2)(ii)
should be amended to delete the reference to continued prosecution
application (CPA) under Sec. 1.53(d) because the CPA practice has been
eliminated.
Response: This suggestion is not adopted. Continued prosecution
applications (CPA) under Sec. 1.53(d) can be filed in design
applications. See Sec. 1.53(d)(1). The CPA practice was eliminated
only as to utility and plant patent applications. See Elimination of
Continued Prosecution Application Practice as to Utility and Plant
Patent Applications 68 FR 32376 (May 30, 2003) 1271 Off. Gaz. Pat.
Office 43 (June 24, 2003) (final rule).
Comment 106: One comment suggested that the time periods set forth
in Sec. 1.115(b)(2) should be extended.
Response: The Office did not propose changes to Sec. 1.115(b)(2)
which has been redesignated as Sec. 1.115(b)(3).
Comment 107: One comment asked the Office to clarify whether a
preliminary amendment or an information disclosure statement should be
filed within three months of the filing date or to wait until after
receiving the official filing receipt.
Response: Applicants are strongly encouraged not to file
preliminary amendments. Applicants should incorporate any desired
changes into the specification and drawings when filing the
application. If an applicant wishes to file a preliminary amendment or
an information disclosure statement (IDS), the preliminary amendment or
IDS may be filed as soon as applicant receives an Office communication
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that provides the application number assigned to the application so
that the amendment or IDS can be properly identified with the
application number.
Section 1.121: Section 1.121(d) is clarified by adding a sentence
that any new sheet of drawings containing an additional figure must be
labeled in the top margin as "New Sheet." Although the instant
amendment was not set forth in the notice of proposed rule making, the
amendment is merely made to provide a means of identification, "New
Sheet," for presenting an additional figure, a type of drawing change
identification previously omitted, which is in addition to the
replacement figure identification that was previously provided for.
Section 1.121(d)(1) is clarified by replacing the phrase
"Annotated Marked-up Drawings" with "Annotated Sheet." Although the
instant amendment was not set forth in the notice of proposed rule
making, the amendment is merely made for the purpose of conformity with
Sec. 1.121(d), which utilizes the word "sheet" rather than drawing.
Section 1.131: Section 1.131(b) is amended for correction of a
typographical error that was inadvertently introduced in the final rule
Miscellaneous Amendments of Patent Rules, 53 FR 23728 (June 23, 1988)
(final rule). The typographical error that is corrected is contained in
the text at the end of the second (and last) sentence of Sec.
1.131(b), which pertains to exhibits or records needed to substantiate
an oath or declaration of prior invention swearing behind a reference
applied in a rejection of a claim. Specifically, the text "of their
absence satisfactorily explained" should read "or their absence
satisfactorily explained" (emphasis added). Thus, Sec. 1.131(b) is
amended to clarify that for any oath or declaration under Sec. 1.131
lacking original exhibits of drawings or records in support thereof,
the absence of such original exhibits of drawings or records must be
satisfactorily explained.
Section 1.136: Section 1.136(b) is amended to add a petition fee
requirement. Paragraph 1.136(a)(2), for example, specifically refers to
Sec. 1.136(b) for extensions of time to file replies under Secs.
1.193(b), 1.194, 1.196 or 1.197 after a notice of appeal is filed.
Section 1.136(a) is not available for extending the period of replies
under Secs. 1.193(b), 1.194, 1.196 or 1.197. Applicant may,
however, still be able to make the "sufficient cause" showing under
Sec. 1.136(b). To evaluate whether a showing of "sufficient cause"
exists, decisions on Sec. 1.136(b) requests require a thorough
evaluation of facts and circumstances on a case-by-case basis.
Furthermore, requests under Sec. 1.136(b) are generally treated
expeditiously by the deciding official. At MPEP Sec. 710.02(e), it is
recommended that requests under Sec. 1.136(b) be filed in duplicate
with a stamped return-address envelope to assist the Office in
processing these requests with special dispatch. To reflect the
Office's cost of deciding requests under Sec. 1.136(b), a requirement
for a petition fee is added to Sec. 1.136(b). Evaluation of a request
for an extension of time under Sec. 1.136(b) for sufficient cause is
analogous to evaluation of a request for the Office to suspend action
for sufficient cause pursuant to Sec. 1.103(a). See discussion of
Sec. 1.17 for comments related to the changes in the petition fees.
Section 1.137: Section 1.137(d) is amended to clarify that when
reviving a reissue application pursuant to Sec. 1.137 a terminal
disclaimer is not required. Section 1.137(d)(3) is amended to clarify
that the terminal disclaimer requirements of paragraph (d)(1) do not
apply to reissue applications. Pursuant to 35 U.S.C. 251, a patent is
reissued "for the unexpired part of the term of the original patent."
Hence, any period of abandonment of a reissue application, should the
reissue application become revived and serve to reissue the patent,
will result in a loss of patent term for the period that the reissue
application was abandoned. Accordingly, there is no need to impose an
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additional penalty on patentee to terminally disclaim the entire period
of abandonment of a reissue application. This rationale accords with
the exclusion of the terminal disclaimer requirement when petitioning
for revival of nonprovisional applications filed on or after June 8,
1995, pursuant to Sec. 1.137(d)(1).
Current Office practice does not require a terminal disclaimer as a
condition precedent for revival of an abandoned reissue application, no
matter when the application was filed, where revival is otherwise
appropriate.
In order to codify current practice, Sec. 1.137(d)(3) is amended
by inserting "to reissue applications" to provide a
blanket exception for reissue applications. Regardless of when the
reissue application was filed, applicant is not required to file an
accompanying terminal disclaimer with a petition to revive under Sec.
1.137.
Section 1.165: Section 1.165(b) is amended to remove the
requirement for a black and white copy of a color drawing or
photograph. This requirement has already been waived. See Interim
Waiver of Parts of 37 CFR 1.84 and 1.165, and Delay in the Enforcement
of the Change in 37 CFR 1.84(e) to No Longer Permit Mounting of
Photographs, 1246 Off. Gaz. Pat. Office 106 (May 22, 2001).
Section 1.173: Section 1.173(b) is amended to clarify that
paragraphs (b)(1), (b)(2) and (b)(3) are directly related to, and
should be read with, paragraph (b).
Section 1.175: Section 1.175 is amended by adding a new paragraph
(e), which requires a new oath or declaration which identifies an error
not corrected in an earlier reissue application be filed in any
continuing reissue application that does not replace its parent reissue
application.
Section 1.175 was previously interpreted to require any continuing
reissue application whose parent application has not been abandoned to
include an oath or declaration identifying at least one error being
corrected, which error is different from the error(s) being corrected
in the parent reissue (or an earlier reissue). Such interpretation is
now clarified by the addition of paragraph (e) to Sec. 1.175.
Ordinarily, a single reissue application is filed to replace a single
original patent and corrects all of the errors recognized by the
applicant at the time of filing of the (single) reissue. If, during the
prosecution of the reissue application, applicant (patentee) recognizes
additional errors needing corrections, such corrections could, and
should, be made in the same application. If, however, after the close
of prosecution and up until the time that the first reissue issues,
applicant recognizes a further error which needs correction and files a
continuing reissue application, Sec. 1.175(e) now explicitly requires
applicant to include an oath or declaration which identifies an error
which was not corrected in the parent reissue application or in an
earlier reissue application, e.g., a grandparent reissue application.
Section 1.178: Section 1.178 is amended to eliminate the
requirement for physical surrender of the original letters patent
(i.e., the "ribbon copy" of the original patent) in a reissue
application, and to make surrender of the original patent automatic
upon the grant of the reissue patent. The reissue statute provides in
part that:
Whenever any patent is, through error without any deceptive
intention, deemed wholly or partly inoperative or invalid, by reason
of a defective specification or drawing, or by reason of the
patentee claiming more or less then he had a right to claim in the
patent, the Director shall, on the surrender of such patent and the
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payment of the fee required by law, reissue the patent for the
invention disclosed in the original patent, and in accordance with a
new and amended application, for the unexpired part of the term of
the original patent.
See 35 U.S.C. 251, para. 1 (emphasis added).
While 35 U.S.C. 251, para. 1, requires a "surrender" of the original
patent, it neither requires a physical surrender of the actual letters
patent, nor a statement that the patent owner surrenders the patent.
Physical surrender by submission of the letters patent (i.e., the copy
of the original patent grant) was previously required by rule via Sec.
1.178; however, such submission was only symbolic because the patent
right exists independently of physical possession of the letters
patent.
It is the right to the original patent that must be surrendered
upon grant of the reissue patent, rather than any physical document.
Thus, where the letters patent is not submitted during the prosecution
of the reissue application because it is stated in the reissue that the
letters patent copy of the patent is lost or inaccessible, there is no
evidence that any stigma is attached to the reissue patent by the
public. Further, there was no case law treating such a reissue patent
adversely due to the failure to submit the letters patent. In fact,
there is no legal reason to retain the requirement for physical
surrender of the letters patent. Conversely, it is beneficial to
eliminate the requirement for physical surrender of the letters patent.
It is beneficial to both the Office and the public to establish
that the surrender of the original patent is automatic upon the grant
of the reissue patent to thereby eliminate the requirement for a
physical submission of the letters patent or the filing of a paper
offering to physically surrender the letters patent (Sec. 1.178(a)).
Previously, the requirement for submission of the patent document
compelled the patent owner (seeking reissue) to try to obtain the
letters patent copy of the patent. If the document was lost or
misplaced, the patent owner had to search for it. If it was in the
hands of a former employee, the patentee had to make an effort to
secure it from that employee (who might not be on friendly terms with
the patentee). If the letters patent was obtained, it then had to be
physically submitted without losing or destroying it. If the letters
patent could not be obtained, the patent owner had to make a statement
of loss (Form PTO/SB/55) or explain that it could not be obtained from
the party having physical possession of it. The revision of Sec. 1.178
eliminates these burdens, and the requirement for use of form PTO/SB/55
or its equivalent.
The requirement for submission of the letters patent copy of the
patent previously provided an unnecessary drain on Office processing
and storage resources in dealing with the submitted letters patent
document. Further, in the event the reissue was not granted, the Office
had to return the letters patent to the applicant where such was
requested. The revision does away with the burden on the Office of
processing, storing, and returning letters patent.
The previous requirement for submission of the original patent (the
letters patent), or a statement as to its loss, resulted in a "built
in" delay in the prosecution while the Office awaited submission of
the letters patent or the statement of loss, which was often submitted
only after an indication of allowance of claims. The revision reduces
reissue application pendency because the Office no longer needs to
delay prosecution while waiting for the letters patent or the statement
of loss. Thus, the complete elimination of the requirement for an
affirmative act (of surrender) by the patent owner puts reissue in step
with other post patent proceedings for changes of patents which have no
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requirement for a statement of surrender (e.g., reexamination
certificate, certificate of correction).
Amended Sec. 1.178 applies retroactively to all pending
applications. For those applications with an outstanding requirement
for the physical surrender of the original letters patent, applicant
must timely reply that the requirement is moot in view of the
implementation of the instant amended rule. Such a reply will be
considered a complete reply to any requirement directed toward the
surrender of the original letters patent. It is to be noted that the
Office will not conduct a search to withdraw Office actions where the
only outstanding requirement is compliance with the physical surrender
of the original letters patent.
Example 1: An Office action issues prior to the effective date of
the amendment to Sec. 1.178 with only a requirement for a return of
the original letters patent to the Office. Applicant fails to timely
reply to the Office action, relying on the amendment to Sec. 1.178 as
mooting the requirement for physical surrender of the original letters
patent. In this instance the application would be abandoned for failure to
timely respond to the Office action because no response was filed.
Example 2: An Office action issues prior to the effective date of
the amendment to Sec. 1.178 with the only requirement for a return of
the original letters patent to the Office. Applicant fails to reply to
the Office action within the two-month period set in the Office action,
relying on the amendment to Sec. 1.178 as mooting the requirement for
physical surrender of the original letters patent. In reviewing the
reissue application in connection with a related application, the
examiner notes the omission prior to the expiration of the six-month
statutory period for reply. In this instance, the examiner may
telephone the applicant, and remind applicant of the need to file a
timely reply.
Example 3: An Office action issues prior to the effective date of
the amendment to Sec. 1.178 with the only requirement being a return
of the original letters patent to the Office. Applicant timely replies
to the Office that it should vacate/withdraw the requirement, or
otherwise indicates that return of the original letters patent is now
unnecessary. In this instance, a complete reply would have been filed,
and the requirement would be withdrawn and the application passed to
issue.
Example 4: An Office action issues prior to the effective date of
the amendment to Sec. 1.178 with both a requirement to return the
original letters patent to the Office and a rejection of the claims
under 35 U.S.C. 103. Applicant timely responds to the Office action
addressing only the rejection under 35 U.S.C. 103 (but not the need for
physical surrender of the original letters patent). In this instance,
the reply would be accepted as complete, and the Office would withdraw
the requirement for physical surrender of the original letters patent.
(The requirement was proper when made, so the Office would not vacate
the action in regard to submission of the original letters patent.)
Return of original letters patent: Where the patentee has submitted
the original letters patent in a reissue application subject to Sec.
1.178 as it is now amended, the Office may, in response to a timely
request, return the original letters patent, when it can be readily
retrieved from where it is stored, namely, the paper application file,
or the artifact storage area for an IFW file. Any request for return of
the letters patent which is submitted after the issue fee has been paid
will require a petition pursuant to Sec. 1.59(b) to expunge from the
file and return the original letters patent. Where the original letters
patent cannot be readily retrieved, or in the rare instance that it has
been subsequently misplaced, the Office will not be able to return the
original letters patent and will not create a new one.
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Example 5: In an application filed after the effective date of the
amendment to Sec. 1.178, applicant has mistakenly submitted the
original letters patent and later seeks its return. In this instance,
provided applicant timely requests the return of the original letters
patent, the Office would return the patent provided it can be readily
retrieved.
Example 6: A reissue application was pending at the time of the
effective date of the amendment to Sec. 1.178 and an original letters
patent was submitted. Applicant requests return of the original letters
patent, although the application is abandoned at the time the request
for return is made. In this instance, the Office would return the
original letters patent if it is readily retrievable. If the reissue
application was abandoned at the time of the effective date of the
amendment to Sec. 1.178, the Office would also return the original
letters patent.
Example 7: Same as Example 6, except that the reissue application
is pending, and the issue fee has been paid for the reissue application
at the time the request for return of the original letters patent is
made. In this instance, the Office may similarly return the original
letters patent, but only if the request is accompanied by a petition
under Sec. 1.59(b).
Example 8: Same as Example 7, except that the reissue application
has issued as a reissue patent at the time the request for return of
the original letters patent is made. Once again, the Office may return
the original letters patent, but only if the request is accompanied by
a petition under Sec. 1.59(b).
Example 9: A reissue application issued as a reissue patent prior
to the effective date of the amendment to Sec. 1.178. Applicant
requests return of the original letters patent that was submitted in
the reissue application. In this instance, the Office will not return
the original letters patent. The original letters patent was submitted
in reply to a requirement that was in effect throughout the pendency of
the reissue application.
Section 1.179: Section 1.179 is removed and reserved as no longer
being necessary. The information provided by this rule, i.e.,
notification to the public in the patent file that a reissue
application has been filed for a particular patent, is now available
through other means, such as public PAIR on the Office's Internet home
page. This source of information can be accessed through the Office's
Internet Web site at http://pair.uspto.gov/cgi-bin/final/home.pl
wherein the user can enter the original patent number, click on
"Search," and then click on "Continuity Data." Any post-issuance
filings (e.g., reissues, reexamination proceedings) will be identified
by scrolling to "Child Continuity Data." To identify an application
under "Child Continuity Data" as a reissue, the user simply clicks on
the desired application number and searches through the file contents
screen for "Notice of Reissue Published in Official Gazette." The
Inventors Assistance Center (IAC) Help desk (telephone number: 800-786-
9199) can also provide information to the public on reissue filings.
Removal of the provision that the Office place a separate paper in the
patent file stating that a reissue has been filed eliminates several
processing steps within the Office and contributes to overall
efficiency. Similarly, public PAIR will indicate termination of the
reissue examination, and, therefore, placing a second separate paper
notice to that effect in the patent file is unnecessary. Additionally,
Office personnel can internally through the PALM database access
information regarding reissue filings, and therefore, do not rely on
the presence or absence of the notice in the patent file as
determinative of reissue status.
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Section 1.182: Section 1.182 is amended to refer to the petition
fee set forth in Sec. 1.17(f) for consistency with the change to Sec.
1.17. See discussion of Sec. 1.17 for comments related to the increase
of the petition fees.
Section 1.183: Section 1.183 is amended to refer to the petition
fee set forth in Sec. 1.17(f) for consistency with the change to Sec.
1.17. See discussion of Sec. 1.17 for comments related to the increase
of the petition fees.
Section 1.213: The proposed changes to Sec. 1.213 are not being
adopted in this final rule. These changes are deemed unnecessary as
they are merely reflective of what is already required by statute (35
U.S.C. 122(b)(2)(B)(i)-(iv)) and regulation (Sec. 10.18). The Office
proposed to amend Sec. 1.213 to highlight to applicants and
practitioners what 35 U.S.C. 122(b)(2)(B)(i)-(iv) and Sec. 10.18
currently require. Specifically, the Office's position is that 35
U.S.C. 122(b)(2)(B)(i)-(iv) and Sec. 10.18 require that, prior to the
submission of a nonpublication request, one must make
an actual inquiry (consistent with Sec. 10.18) as to the intent to
file a foreign counterpart application, and that at the time any
nonpublication request is submitted, there must be an affirmative
intent by applicant that the application will not be the subject of an
application filed in another country, or under a multilateral
international agreement, that requires publication of applications at
eighteen months.
Similarly, the Office will not include the amendments to Sec.
1.213 that highlight the distinctions between a rescission of a
previously filed nonpublication request and the requirement for a
notification of foreign filing, which is required by 35 U.S.C.
122(b)(2)(B)(iii), the non-applicability of Sec. 1.8 to filings under
Secs. 1.213(b) and (c), and the inquiry obligations before a
request to rescind a nonpublication request is filed (Sec. 1.213(b)).
The Office plans to revise the MPEP to further clarify and to emphasize
its position as set forth in this final rule, the notice of proposed
rule making, and in the notice Clarification of the United States
Patent and Trademark Office's Interpretation of the Provisions of 35
U.S.C. Sec. 122(b)(2)(B)(ii)-(iv), 1272 Off. Gaz. Pat. Office 22 (July
1, 2003).
Section 1.213(d) was proposed to be added to provide that if an
applicant who has submitted a nonpublication request under Sec.
1.213(a), subsequently files a request under Sec. 1.213(b) to rescind
a nonpublication request or files a notice of a filing in another
country, or under a multilateral international agreement, under Sec.
1.213(c), the application shall be published as soon as is practical
after the expiration of a period of eighteen months from the earliest
filing date for which a benefit is sought under title 35, United States
Code, as required by 35 U.S.C. 122(b)(2)(B)(ii). The Office will
continue its practice to proceed with the publication of an application
as soon as practical, as required by statute where a request to rescind
has been filed notwithstanding the lack of amendment of the rules to
reflect such practice.
While the Office is not including any of the proposed changes to
Sec. 1.213 in this final rule, the comments received and the Office's
responses thereto reflect the Office's interpretation which will be
included in a future revision of the MPEP.
Comment 108: One comment stated that the requirement that applicant
must have an affirmative intent not to file a counterpart application
that would be subject to eighteen-month publication, and not just the
absence of any intent or plan concerning the filing of any counterpart
application, is believed to be extreme, not based on statute and would
be unduly burdensome. The comment further stated that the intent of the
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applicant at the time of signing the nonpublication request should be
irrelevant, that the Office's interpretation of the statute requires an
applicant to formulate an intent whether to foreign file a year before
the foreign filing must be made, and that often the time frame
envisioned by the Office is much too early for intent to be decided,
particularly if applicant is waiting for money from investors or
licensees. The comment stated that one should look at whether the
application has been subject to the activity that requires publication
(which apparently is meant to be limited to an actual foreign filing of
a counterpart application). One comment stated that the Office's view
regarding the existence of an actual intent not to foreign file a
counterpart application is "not required by the letter or spirit of
the statute," and pointed out that where a decision has not been made
as to foreign filing at the time of U.S. filing, under the Office's
view, applicant could not file a nonpublication request, but if later a
decision was made not to foreign file, the original U.S. application
would have to be abandoned and refiled with a nonpublication request
thereby adding senseless costs and unnecessary filing burdens on both
the Office and applicants. The comment also stated that the Office's
position would impact small entities the most as their limited
resources hamper their ability to form an intent about foreign filing
at the time the U.S. application is filed.
Response: The procedure for filing a nonpublication request,
whereby applicant must have a current intent at the time of filing the
request not to foreign file may not be to the liking of certain
applicants and practitioners; however, Congress has spoken and
indicated a strong preference for the publication of applications
unless a very specific exception can be met. That exception includes
the requirement that a certification be made at the time of filing the
nonpublication request that the invention "has not and will not be the
subject" of a foreign-filed counterpart application. It is significant
that Congress has stated both "has not" and "will not" in defining
its exception. The comments received decrying the Office's narrow
interpretation of the statute are merely an attempt to read out of the
statute the "will not" part of the exception. An applicant simply
cannot make a certification that the application will not be foreign
filed if there is no current intent not to foreign file the
application. To argue that the absence of any intent regarding the
future foreign filing of the application can amount to a certification
that the application will not be foreign filed is a specious argument.
That hardship may be caused by a requirement of a current intent not to
future foreign file was recognized by Congress by providing the ability
to later change one's mind and foreign file provided timely notice is
given of the foreign filing and a rescission of the nonpublication
request is filed. On the other hand, as to the hardship pointed out by
needing to abandon an application where it was later decided not to
foreign file so that the application could be refiled with a
nonpublication request, that is not an unforseen consequence as Sec.
1.138(c) has been provided to allow for express abandonment in these
situations. That applicants would need to go to this length is merely a
result of the overriding desire by Congress in favor of publication of
applications.
Comment 109: The question is posed "If applicant does not have the
resources for foreign filing, but would file abroad if additional funds
were discovered during the year, does the applicant have an `intent' to
file abroad?"
Response: The comment is one of many possibilities that would need
to be answered on a case-by-case basis depending on the particular
facts and will be addressed on as general a basis as possible. Where
applicant makes a decision not to later foreign file because of lack of
funds, there is no intent to foreign file, provided that decision is
based on a current determination that funds will not be available later
to foreign file. If there is a desire to later foreign file and it is
foreseeable that funds may be available, e.g., ongoing license
negotiations, then there is no current intent not to foreign file.
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Comment 110: One comment suggested that there be an exception to
performing an actual inquiry before filing a nonpublication request for
every application where the attorney has received "a single written
statement from a client that, by default, all U.S. applications should
be filed with a non-publication request and that the client understands
that there are limitations on filing foreign applications."
Response: It is possible that a client would have a current
intention not to "foreign file" any applications, especially if the
client has never filed an application in another country, or under a
multilateral international agreement, that requires publication of
applications at eighteen months after filing. In this case, the client
could inform its counsel of that intent and a nonpublication
request could be routinely filed with each application without
separately checking the intent to "foreign file" as to that
application. It must be emphasized that the instant advice is given
based on the facts of no intent to ever foreign file an application,
based on a consistent past history. Variations in the facts given may
alter the result as to the permissible use of a blanket default. There
would, however, be a duty by applicant to timely change its advice to
counsel should the facts change.
Section 1.215: Section 1.215(a) is amended to provide that the
patent application publication may also be based upon certain
amendments, codifying the Office's current practice. See Patent
Application Publications May Now Include Amendments, 1281 Off. Gaz.
Pat. Office 53 (Apr. 13, 2004). Specifically, the patent application
publication may be based upon amendments to the specification (other
than the abstract or the claims) that are reflected in a substitute
specification under Sec. 1.125(b), amendments to the abstract under
Sec. 1.121(b), amendments to the claims that are reflected in a
complete claim listing under Sec. 1.121(c), and amendments to the
drawings under Sec. 1.121(d), provided that such substitute
specification or amendment is submitted in sufficient time to be
entered into the Office file wrapper of the application before
technical preparations for publication of the application have begun.
Technical preparations for publication of an application generally
begin four months prior to the projected date of publication. Section
1.215(a) is also amended to provide that the patent application
publication of an application that has entered the national stage under
35 U.S.C. 371 may also include amendments made during the international
stage. Accordingly, the publication under 35 U.S.C. 122(b) of an
application that has entered the national stage may include amendments
under Article 34 and 19, and other amendments made to the international
application during the international stage (e.g., rectifications,
corrections of physical defects under PCT Rule 26, and an abstract
rewritten by the International Searching Authority).
The Office is scanning application papers including amendments into
electronic image files and maintaining all the records associated with
patent applications in the IFW system replacing the standard paper
processing of patent applications. See Changes to Implement Electronic
Maintenance of Official Patent Application Records 68 FR 38611 (June
30, 2003), 1272 Off. Gaz. Pat. Office 197 (July 29, 2003)(final rule).
The implementation of the IFW system and the current amendment practice
under Sec. 1.121 permits the Office to include certain amendments
(e.g., a complete claim listing in compliance with Sec. 1.121(c),
substitute specification in compliance with Sec. 1.125, drawings in
compliance with Sec. 1.84 and Sec. 1.121(d), and amendments made
during the international stage of an international application) in the
patent application publication.
If applicant files an amendment that includes a complete claim
listing in compliance with Sec. 1.121(c) and the amendment is scanned
into the IFW system before technical preparations for publication of
the application have begun, the Office may publish the amended claims
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in the complete claim listing instead of the originally filed claims.
For example, if applicant files a preliminary amendment that includes
cancellation of claims to reduce the amount of claims fees due in
response to a Notice To File Missing Parts of Application, the Office
may publish only the pending claims and not the canceled claims. The
Office may also publish an amended specification instead of the
originally filed specification if applicant files a substitute
specification in compliance with Sec. 1.125(b) and the substitute
specification is scanned into the IFW system before the publication
process has begun. Similarly, the Office may publish replacement
drawings instead of the originally filed drawings if applicant files
the replacement drawings in compliance with Sec. 1.84 and Sec.
1.121(d) and the replacement drawings are scanned into the IFW system
before the publication process has begun.
The Office cannot guarantee that the latest amendment or any
particular amendment will be included in the patent application
publication. Applicants should incorporate any desired amendments into
the text of the specification including a new set of claims when filing
the application, even where the application is a continuation or
divisional application of a prior-filed patent application. Submitting
applications without any accompanying preliminary amendment reduces the
processing required of the Office, and may preclude Office errors in
processing of the amendments. Although the Office may include
amendments in patent application publications, applicants desiring to
ensure that a patent application publication reflects an amendment
should submit the application, as amended, to the Office in compliance
with Sec. 1.215(c) by using EFS. See also Helpful Hints Regarding
Publication of Patent Applications, 1249 Off. Gaz. Pat. Office 83
(August 21, 2001). In situations when the publication does not reflect
an amendment that includes applicant's desired changes, applicant may
request a republication of the application under Sec. 1.221(a). Any
such request for corrected publication under Sec. 1.221(b), however,
will not be accepted.
Preliminary amendment that is present on the filing date of the
application: Since a preliminary amendment that is present on the
filing date of the application is part of the original disclosure of
the application under Sec. 1.115(a)(1), the Office will require such
an amendment to be filed in a format that can be included in the patent
application publication. Thus, if a preliminary amendment under Sec.
1.115(a)(1) is filed in a format that cannot be included in the
publication, the Office of Initial Patent Examination (OIPE) will issue
a notice requiring the applicant to submit the amendment in a format
useable for publication purposes. The patent application publication
may not reflect a preliminary amendment under Sec. 1.115(a)(1) if
applicant includes the amendment in a place that is difficult to find
(e.g., a transmittal letter) or files the amendment separately from the
application so that it would be difficult to match the amendment with
the application. In order for the patent application publication to
include all of applicant's desired changes, applicants should either
incorporate the desired changes into the specification and the claims
filed with the application, or file the preliminary amendment with the
application and clearly present the preliminary amendment on a separate
paper in compliance with Sec. 1.121.
Replacement Drawings: The Office proposed changes to Sec. 1.215(a)
that provided that any replacement drawings received with the
processing fee set forth in Sec. 1.17(i) within the period set forth
in proposed Sec. 1.215(c) will be included in the patent application
publication. See Changes to Support Implementation of the United States
Patent and Trademark Office 21st Century Strategic Plan, 68 FR at
53839-40, 53855, 1275 Off. Gaz. Pat. Office at 43, 57. Since Sec.
1.215(a) is amended to provide that the patent application publication
may also be based upon certain amendments including amendments to
drawings under Sec. 1.121(d), this proposed change is not adopted in
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the final rule. If an applicant wishes to submit better quality
drawings or amended drawings for publication purposes, applicant should
file the replacement drawings in compliance
with Sec. 1.84 and Sec. 1.121(d) before the technical preparations
for publication of the application have begun (generally four months
prior to the projected publication date). The Office may include any
replacement drawings filed in compliance with Sec. 1.84 and Sec.
1.121(d) if the replacement drawings are scanned into IFW system before
the publication process for the application has begun. Applicant is not
required to submit the processing fee set forth in Sec. 1.17(i).
Accordingly, the procedure for submitting replacement drawings by
filing a petition under Sec. 1.182 and a petition fee set forth in
Sec. 1.17(h) is eliminated. Furthermore, Mail Stop PGPUB Drawings is
being eliminated. Applicants may submit any replacement drawings and
preliminary amendments that are filed in response to an OIPE
preexamination notice to "Mail Stop Missing Parts'.
Section 1.215(c) is amended to provide that applicant has until the
later of: (1) one month after the mailing date of the first Office
communication that includes a confirmation number for the application;
or (2) fourteen months after the earliest filing date claimed under
title 35, United States Code, to file an amended version of an
application through EFS, for publication purposes, codifying the Office
current practice. See Assignment of Confirmation Number and Time Period
for Filing a Copy of an Application by EFS for Eighteen-Month
Publication Purposes, 1241 Off. Gaz. Pat. Office 97 (Dec. 26, 2000).
Section 1.291: Section 1.291(b)(1) now provides for the submission
of a protest after publication or the mailing of the notice of
allowance when the protest is accompanied by the written consent of the
applicant. Section 1.291(b)(2) now requires a protest to include a
statement that it is the first protest submitted in the application by
the real party interest who is submitting the protest; or the protest
must comply with the requirements relating to subsequent protests by
the same real party in interest. Section 1.291(c)(5) has been added to
eliminate the ability of a single protestor to submit cumulative prior
art in a subsequent protest by requiring a subsequent protest to be
directed at significantly different issue(s), and also requiring an
explanation as to how the issue(s) raised are significantly different
and why the different issues were not presented in the earlier protest.
A processing fee is also required. Finally, Sec. 1.291 has been
essentially rewritten and restructured for clarity. Section 1.291(a)
clarifies that matching of the protest to the intended application is
dependent upon adequate identification of the intended application and
that if the protest is inadequately identified, the protest may not be
matched at all or not timely matched, in which case, the protest may be
returned where practical, or, if return is not practical, discarded.
Section 1.291(b) now recites the service requirements and time frame
for submitting a protest. Section 1.291(g) clarifies that protests
which do not comply with paragraph (b), or (c) may be returned, or
discarded.
It was proposed to amend Sec. 1.291 to require the naming of the
real party in interest, or privy thereof, when a protest is filed in
any application, i.e., both reissue and non-reissue applications. The
purpose of the proposal was to eliminate potential for harassment of
the prosecution process via multiple filings of protests in any type of
application by persons serving the same interest. Such abuse of protest
practice has occurred, for example, by the filing of multiple piecemeal
protests (raising a slightly different issue in each protest
submission) in a single application by practitioners of the same firm,
with a different practitioner signing each protest, and similarly, by
any of the inventors and/or assignees. Essentially the same grounds of
protest were presented in each of the protests.
Upon reconsideration based on comments received, the Office has
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determined that the stated objectives of the proposed rule can be
achieved in a simpler manner. Specifically, Sec. 1.291(b)(2) requires
a statement accompanying any protest in an application that the protest
is the first protest submitted in the application by the real party in
interest submitting the protest; or the protest must comply with the
requirements relating to subsequent protests by the same real party in
interest, which are discussed in regard to paragraph (c)(5) of Sec.
1.291. Section 1.291(b)(2) does not apply to the first protest filed in
an application. This approach eliminates the issue of how to adequately
identify the real party in interest. Where a protestor desires not to
identify the real party in interest on behalf of whom the protest is
being filed, the protester may still retain anonymity. Where a protest
is not the first protest by the real party in interest, Sec.
1.291(b)(2) requires compliance with paragraph (c)(5) of Sec. 1.291
without a need for a specific statement that this is a subsequent
protest by a real party in interest or identification of the real party
in interest.
As amended, Sec. 1.291 is structured as follows: Paragraph (a)
sets forth the need for adequate identification of the application to
which a protest is directed to permit matching of the protest with the
application and the consequences of inadequate identification not
permitting a matching or a timely matching. Paragraph (b) sets forth
service upon applicant and timeliness requirements for submitting the
protest. Paragraph (b)(1) makes provision for the written consent of
the applicant as an exception to the timeliness requirements of
paragraph (b). Paragraph (b)(2) relates to the submission of multiple
protests along with paragraph (c)(5). Paragraph (c) sets forth content
requirements for a protest. Paragraphs (c)(1) through (c)(4)
substantively repeat the content requirements of former Sec.
1.291(b)(1) through (b)(4). The content requirement for subsequent
protests in the last sentence of former paragraph (c) is now present in
current paragraph (c)(5). Paragraphs (d) and (f) of the amended rule
are material moved from prior paragraph (c). Paragraph (e) of the
amended rule is material moved from prior paragraph (b). Paragraph (g)
clarifies how the Office can treat protests that fail to comply with
paragraphs (b) and (c) of the rule.
Section 1.291(a): In order for a protest submission to be matched
with an application, it must include sufficient information to
adequately identify the application for which the submission is being
made.
Where possible, the protest should specifically identify the
application to which the protest is directed by application number and
filing date. If, however, the protestor is unable to specifically
identify the application to which the protest is directed by
application number and filing date, but, nevertheless, believes such an
application to be pending, the protest should be directed to the
attention of the Office of Petitions, along with as much identifying
data for the application as is possible, such as the name of an
inventor.
If a protest is timely submitted within the time frames of Sec.
1.291(b) and the other requirements of paragraphs (b) and (c) of Sec.
1.291 are complied with, but the protest is not matched or not timely
matched with the intended application to permit review by the examiner
during prosecution of the application due to inadequate identification
of the intended application as defined in Sec. 1.291(a), the Office
may or may not enter the protest. If not entered, the protest may be
returned to the party that submitted it where practical, or, if not
practical to return, discarded.
If a protest includes adequate identification, is timely submitted
within the time frames of Sec. 1.291(b) and
timely matched with the intended application (during prosecution of the
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application), and where the protest further complies with paragraphs
(b) and (c) of Sec. 1.291, it will be "entered" into the file (i.e.,
it has an entry right) and it will be considered by the examiner. If a
protest includes adequate identification, is timely submitted as
defined in Sec. 1.291(b), but not timely matched during prosecution of
the application (e.g., the protest is submitted a day before a notice
of allowance is mailed), the protest will be entered of record and the
examiner may or may not consider it. The seemingly disparate treatment
in Sec. 1.291(a) where an untimely match may result in non-entry of
the protest is due to the protestor's failure to adequately identify
the intended application under Sec. 1.291(a) (versus adequate
identification but other problems in timely matching under Sec.
1.291(b)).
Section 1.291(b): The language of Sec. 1.291(b) includes the
timeliness and service provisions of former Secs. 1.291(a)(1) and
(a)(2) and makes compliance with these provisions, as well as those in
paragraph (c), a condition for entry of the protest in the record of
the intended application, except for the timeliness provisions of
protests filed with the consent of the applicant. Entry of a protest in
the record does not ensure that the protest will be considered by the
examiner. For example, a first protest by a real party in interest
(along with the required statement pursuant to Sec. 1.291(b)(2)) may
be timely submitted, e.g., prior to publication of the application, yet
the application may be issued as a patent prior to the actual matching
of the protest with the intended application. Where a protest is timely
submitted, includes adequate identification, and is otherwise compliant
with Secs. 1.291(b), (b)(2) and (c), the Office will endeavor to
consider the protest even if it is matched with the intended file after
prosecution is closed.
Section 1.291(b)(1) provides that a protest may be filed at any
time if it is accompanied by the written consent of the applicant to
the filing of the protest being submitted as it specifically excludes
the timeliness requirements of paragraph (b). While Sec. 1.291(b)(1)
ensures that any (adequately identified) protest filed with the written
consent of the applicant will be entered into the record of the
intended application (if there is also compliance with paragraph (c)),
paragraph (b)(1) makes clear that the protest must be matched with the
intended application during prosecution to ensure consideration by the
examiner. For example, where the protest is submitted close to
publication of the patent, it is doubtful that the examiner would have
time to review the protest, although the protest would be made of
record. Even if not timely matched, the examiner may still decide to
consider the protest should there be sufficient time to do so.
35 U.S.C. 122(c) permits the filing of a protest in an application
after the application has been published if there is express written
consent of the applicant. In order to file protests after publication
of patent applications, Sec. 1.291(b)(1) requires that the protest
after publication (of an application) be accompanied by the written
consent of the applicant. The written consent should indicate that
applicant is consenting to the specific protest being submitted.
Applicant may choose to provide a blanket consent to: any protests
filed, protests filed by a particular real party in interest, a single
protest by a particular party in interest (e.g., a protest that party
Smith has informed me that he will be submitting during the week of
November 26th), a protest involving a particular piece of prior art, or
a particular protest that has been reviewed and applicant is willing to
have considered by the Office. Where a protest is permitted only by
consent of applicant, the Office will abide by the terms of the
consent. The Office may, however, as discussed later in regard to Sec.
1.291(g), choose to consider a piece of prior art permitted under the
terms of the consent, but noncompliant with some requirement of
Secs. 1.291(b), or (c).
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Section 1.291(b)(2), as discussed earlier, requires either a
statement that the protest is the first protest submitted in the
application by the real party in interest who is submitting the protest
or that the protest must also comply with paragraph (c)(5) of Sec.
1.291. In addition, Sec. 1.291(b)(2) does not apply to the first
protest in an application. A protestor may not know if a protest has
already been filed (by another), and may have no way of checking (non-
reissue application for which public PAIR would not be available).
Should the protest (inadvertently or otherwise) fail to include the
statement that the protest is the first protest by the real party in
interest filing the current protest and fail to comply with paragraph
(c)(5) of Sec. 1.291, if, in fact, the protest is the first filed
protest in an application, it will be considered where all other
conditions have been met.
Section 1.291(c): Where the protest adequately identifies a pending
application and is otherwise compliant with paragraph (b) of Sec.
1.291, the protest will be "entered" into the application and
considered by the examiner, if the protest includes: (1) a listing of
patents, publications, or other information relied upon; (2) a concise
explanation of the relevance of each listed patent, publication and
other item of information; (3) a copy of each listed patent,
publication, or other item of information in written form, or at least
pertinent portions thereof; (4) an English language translation of all
the necessary and pertinent parts of any non-English language patent,
publication, or other item of information relied upon; and (5) if the
protest is a second or subsequent protest in the case by a single real
party in interest, an explanation as to why the issues presented are
significantly different from those raised in an earlier protest and why
they were not presented earlier, and a processing fee under Sec.
1.17(i). Where there is noncompliance with any item of information
required by Sec. 1.291(c)(1) through (c)(5), the protest may not be
entered and will be treated pursuant to Sec. 1.291(g), except where
the examiner determines to review an item of information and decides to
make that item of record as an examiner citation. See the discussion of
Sec. 1.291(g) below.
Section 1.291(c)(5) sets forth additional content requirements that
now apply to subsequent protest submissions. As opposed to former Sec.
1.291(c), new Sec. 1.291(c)(5) does not permit the submission of
additional (cumulative) prior art. Section 1.291(c)(5) requires that
any subsequent protest must present significantly different issues and
sets forth an explicit requirement that a second or subsequent protest
must be accompanied by an explanation as to why the issue(s) raised in
the second or subsequent protest are significantly different from those
raised earlier and, further, why the significantly different issue(s)
were not presented earlier. In complying with the requirement to
distinguish a subsequent protest from one previously submitted, the
protestor should identify with particularity the prior submitted
protest, such as by date submitted and information supplied.
Section 1.291(e): This paragraph is added to reiterate and confirm
the Office's long-standing practice to enter protests raising
inequitable conduct issues without comment on such issues. See MPEP
Sec. 1901.02.
Section 1.291(f): This paragraph represents material carried over
from former Sec. 1.291(c).
Section 1.291(g): This paragraph is added to make clear that
protests which do not comply with paragraph (b), or (c) may be
returned, or discarded at the sole discretion of the Office as the
protest is not in fact entered of record. This is a different standard
than that of 1.291(a) in that the preference the Office has for
returning, rather than discarding, protests not adequately identifying
a pending patent application does not exist for protests not complying
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with paragraphs (b) or (c). Such preference is reflected by Sec. 1.291
in that paragraph (a) states protests not adequately identifying a
pending patent application will be returned "where practical" and
that no such practicality consideration is present in paragraph (g).
The reason the Office prefers to return protests not adequately
identifying a pending patent application is that this gives the
protestor the chance to resubmit the protest with adequate patent
application identifying information.
Where a protest is partially noncompliant with Secs. 1.291(b),
or (c), such as four of the five submitted items of prior art do not
have a concise explanation of their relevance pursuant to Sec.
1.291(c)(2), those items will not be entered of record in the file and
may be returned, or discarded. If the fifth prior art item is fully
compliant with Secs. 1.291 (a), (b), and (c), the fifth item
(having a concise explanation) will be made of record and considered by
the examiner.
Where a protest is entirely noncompliant with Secs. 1.291(b),
or (c), the prior art will not be made of record and the protest may be
returned, or discarded at the Office's option. Alternatively, the
examiner may choose to consider any or all of the prior art submitted,
in which case the examiner may choose to make certain of the prior art
considered of record by citing it as an examiner's citation of prior
art. The examiner need not make any prior art actually considered from
a noncompliant Sec. 1.291 protest of record.
The examiner may always look at, or consider any documents
submitted in an application, under amended Sec. 1.291. This is the
same as in the past. An examiner will attempt to consider a second
protest filed on behalf of the same real party in interest (subject to
the time frames set forth in Sec. 1.291(b) and the caveat that the
protest can be timely matched and considered prior to issuance of the
patent) if the second protest includes: (1) new issue(s) significantly
different from issue(s) presented earlier; (2) an explanation of why
the new issue(s) are significantly different; and (3) an explanation
why such new issue(s) could not have been earlier presented. See Sec.
1.291(c)(5). Raising of new issue(s) may be done by the submission of
new, non-cumulative prior art. This substantive amendment to prior
Sec. 1.291(c) was made to no longer permit the submission of just
"additional prior art" in view of the previously stated experience of
the Office receiving subsequent protests by the same real party in
interest with essentially the same grounds. Prior Sec. 1.291(c)
permitted a further submission of "additional prior art" so long as a
concise explanation was provided pursuant to prior Sec. 1.291(b)(2).
As noted in the proposed rulemaking, applicants would present
"essentially the same grounds of protest * * * in each of the
protests" as "there was no explicit bar in the rule against multiple
piecemeal protest submissions," such as by utilization of the
alternative of submitting prior art that was essentially cumulative to
that submitted in the previous protest, or by utilizing a different
person (representing the same real party in interest) to submit
essentially the same protest. See the notice of proposed rulemaking at
page 53840.
Once a protest has been matched with an application, the examiner
is always free to look at, or consider, any document(s) or other
information submitted in that protest whether or not the protest
complies with Sec. 1.291. Section 1.291 exists as a matter of
administrative convenience for the Office; thus, a third party's
failure to comply with any of the requirements of Sec. 1.291 does not
vest the applicant with any "right" to preclude consideration by the
examiner of information set forth/presented in a non-compliant protest.
The noncompliant protest, however, will not be made of record and may
be returned, or discarded (Sec. 1.291(g)) after consideration of the
information contained therein should the examiner desire to do so.
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Comment 111: One comment stated that the Office provided no
statistics or other evidence showing a need for the originally proposed
amendment to Sec. 1.291 to require the naming of the real party in
interest whenever any protest is filed. The comment suggested that it
would be better to amend Sec. 1.291 to require the party submitting
the protest to identify any prior protests the party has filed, or to
certify that it has not filed any prior protest. The comment also
suggested amending Sec. 1.291 to permit the filing of protests in
published applications.
Response: The comment is adopted in part. The Office has
reconsidered the need for identification of the real party in interest
and has determined that a statement as to prior protests is sufficient.
Thus, rather than amend Sec. 1.291 to require the naming of the real
party in interest whenever any protest is filed, as originally
proposed, Sec. 1.291(b)(2) provides that a statement that the protest
is the first by the real party in interest be made or the protest must
comply with Sec. 1.295(c)(5). A further exception is made where the
protest turns out to be the first protest in the application.
The suggestion to amend Sec. 1.291 to permit the filing of
protests in published applications cannot be adopted as 35 U.S.C.
122(c) statutorily prohibits the filing of a protest in published
applications without the express written consent of the applicant. This
statutory provision is reflected by the language now contained in Sec.
1.291(b)(1). As reissue applications are not published under 35 U.S.C.
122, the requirement for the express written consent of the applicant
never applies to reissue applications. Although protests in published
applications cannot be filed without the express written consent of the
applicant, Sec. 1.99 provides for third-party submissions of prior art
and other information in published applications provided, inter alia,
the submission is timely submitted (Sec. 1.99(e)) and it does not
include any explanation of the material being submitted (Sec.
1.99(d)).
Section 1.295: Section 1.295(a) is amended to refer to the petition
fee set forth in Sec. 1.17(g) for consistency with the change to Sec.
1.17. See discussion of Sec. 1.17 for comments related to the increase
of the petition fees.
Section 1.296: Section 1.296 is amended to refer to the petition
fee set forth in Sec. 1.17(g) for consistency with the change to Sec.
1.17. See discussion of Sec. 1.17 for comments related to the increase
of the petition fees.
Section 1.311: Section 1.311(b) is amended to provide that the
submission after the mailing of a notice of allowance of either: (1) an
incorrect issue fee or publication fee; or (2) a fee transmittal form
(or letter) for payment of issue fee or publication fee, will operate
as a valid request to charge the correct issue fee, or any publication
fee due, to any deposit account identified in a previously filed
authorization to charge such fees. Additionally, use of issue and
publication fee forms, which are not supplied by the Office, are
permitted. It is also clarified that for previous authorizations to be
effective under the exceptions provided for, the previous
authorizations must cover the issue and publication fees to be charged.
Prior to this amendment, Sec. 1.311(b) set forth that an
authorization to charge the issue fee or other post-allowance fees
(such as any publication fee due) to a deposit account may be filed
only after the mailing of a notice of allowance in part to encourage
the use (return) of the PTOL-85B form since that form contains important
information, such as the name of the assignee. The last sentence of Sec.
1.311(b) prior to this amendment, however, provided an exception for
charging the issue fee to a deposit account identified in a previously
filed authorization if the applicant submitted either an incorrect issue
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fee or an Office-provided fee transmittal form (i.e., Part B - Fee(s)
Transmittal of a Notice of Allowance and Fee(s) Due, form PTOL-85). The
amendment to Sec. 1.311(b) extends the exception to any publication fee
due and expands the exception to apply where an applicant's own fee
transmittal form or letter for submitting issue fee or publication fee is
submitted. Further, the term "such" is added before "fees" in the
last line of section 1.311(b) to clarify that the previously filed
authorization must be an authorization to charge the appropriate fee
due to an identified deposit account. For example, if the previously
filed fee authorization only authorizes the Office to charge the issue
fee, the Office will not be able to charge any publication fee due to
the identified deposit account in the previously filed authorization
even when the applicant submitted an issue fee transmittal form. For
such authorization, the Office will only charge the correct issue fee
to the identified deposit account. Furthermore, if the previously filed
fee authorization only authorized the Office to charge any fees due
under Secs. 1.16 or 1.17, the Office would not be able to charge
either the issue fee (Sec. 1.18(a) through (c)) or the publication fee
(Sec. 1.18(d)).
The phrase "A completed Office-provided issue fee transmittal form
(where no issue fee has been submitted)" in the last sentence of Sec.
1.311(b) is changed to "A fee transmittal form (or letter) for payment
of issue fee or publication fee" to provide that a submission of an
Office-provided fee transmittal form (i.e., Part B of the form PTOL-
85), or applicant's own fee transmittal form or letter for submitting
issue fee or publication fee, (either complete, or incomplete but for a
fee authorization) operates as a request to charge the correct issue
fee due, or any publication fee due, to any deposit account identified
in a previously filed authorization to charge such fees, even if the
issue fee has been previously submitted. Submission of an Office-
provided fee transmittal form, or applicant's own fee transmittal form
or letter, will not operate as a request to charge the issue fee or
publication fee due to a deposit account if neither the fee transmittal
document nor a previous authorization includes an authorization to
charge fees due under Sec. 1.18.
Where an issue fee has been previously submitted, and the
application is withdrawn from issue and is allowed again, since
November 13, 2001, the Notice of Allowance has indicated the current
amount due as the difference between the previously paid issue fee and
the current amount for an issue fee. In such situations, a payment of
only the difference, or a response to the notice where there is no
issue fee due (or only the return of the Part B-Fee(s) Transmittal of
form PTOL-85 as the current issue fee is the same amount as previously
paid), will be treated as a ratification of the Office's decision to
apply the previously paid issue fee. If the fee was paid in a different
application (e.g., the parent application of a continued prosecution
application under Sec. 1.53(d) (CPA)), the fee indicated in the notice
as due is the current issue fee. The issue fee paid in the parent
application cannot be refunded, or applied, to the notice of allowance
mailed in the CPA.
Section 1.324: Sections 1.324(a) and (b) are amended to provide an
informational reference to 35 U.S.C. 256 and to replace "petition"
with "request."
Section 1.324(a) is amended by adding an explicit reference to 35
U.S.C. 256 and its requirement in order to clarify that the
inventorship of a patent may be changed only by way of a request from
all of the inventors together with assignees of the entire interest, or
on order of a court. The Office will then issue a certificate naming
the correct inventors. 35 U.S.C. 256 requires that there be agreement
among all parties (inventors and existing assignees), or that a court
has issued an order so directing the inventorship change. The previous
reference in Sec. 1.324 to a petition was eliminated in order to
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conform the rule language to earlier changes made to Sec. 1.20(b).
Section 1.377: Section 1.377 is amended to refer to the petition
fee set forth in Sec. 1.17(g) for consistency with the change to Sec.
1.17. See discussion of Sec. 1.17 for comments related to the increase
of the petition fees. Section 1.377 retains the provision that the
petition fee may be refunded if an Office error created the need for
the petition.
Section 1.378: Section 1.378(e) is amended to refer to the petition
fee set forth in Sec. 1.17(f) for consistency with the change to Sec.
1.17. See discussion of Sec. 1.17 for comments related to the increase
of the petition fees.
Section 1.550: Section 1.550(c) is amended to add a $200 petition
fee requirement pursuant to Sec. 1.17(g) in ex parte reexamination
proceedings for requests for extensions of time, which requests are
based upon sufficient cause. Extensions of time under Sec. 1.136(a)
are not permitted in ex parte reexamination proceedings because the
provisions of 35 U.S.C. 41(a)(8) and Sec. 1.136(a) apply only to an
"application" and not to a reexamination proceeding (ex parte or
inter partes). Additionally, 35 U.S.C. 305 requires that ex parte
reexamination proceedings "will be conducted with special dispatch."
Accordingly, extensions of time in inter partes reexamination
proceedings are provided for in Sec. 1.550(c) only "for sufficient
cause and for a reasonable time specified." To evaluate whether a
showing of "sufficient cause" exists and whether a "reasonable
time" is specified, decisions on Sec. 1.550(c) requests require a
thorough evaluation of the facts and circumstances on a case-by-case
basis. Furthermore, requests under Sec. 1.550(c) are generally treated
expeditiously by the deciding official since the statute requires
"special dispatch" for reexamination proceedings. To reflect the
Office's cost of deciding requests under Sec. 1.550(c), i.e., the cost
of evaluating whether a showing of "sufficient cause" exists and
whether a "reasonable time" is specified, a requirement for a
petition fee is added to Sec. 1.550(c).
The revision of the rule tracks the above-discussed rule revisions
to require a petition fee for the decision on Sec. 1.136(b) and Sec.
1.956 extension of time requests, and the criteria for granting of an
extension of time under Sec. 1.550(c) is analogous to that for Sec.
1.136(b) and Sec. 1.956.
Section 1.741: Section 1.741(b) is amended to refer to the petition
fee set forth in section 1.17(f) for consistency with the change to
Sec. 1.17. See discussion of Sec. 1.17 for comments related to the
increase of the petition fees.
Section 1.956: Section 1.956 is amended to add a $200 fee
requirement pursuant to Sec. 1.17(g) in inter partes reexamination
proceedings for requests for extensions of time, which requests are
based upon sufficient cause. Extensions of time under Sec. 1.136(a)
are not permitted in inter partes reexamination proceedings because the
provisions of 35 U.S.C. 41(a)(8) and Sec. 1.136(a) apply only to an
"application" and not to a reexamination proceeding (ex parte or
inter partes). Additionally, 35 U.S.C. 314 requires that inter partes
reexamination proceedings "will be conducted with special dispatch."
Accordingly, extensions of time in inter partes reexamination proceedings
are provided for in Sec. 1.956 only "for sufficient cause and for a
reasonable time specified." To evaluate whether a showing of
"sufficient cause" exists and whether a "reasonable time" is
specified, decisions on Sec. 1.956 requests require a thorough
evaluation of facts and circumstances on a case-by-case basis.
Furthermore, requests under Sec. 1.956 are generally treated
expeditiously by the deciding official, especially so in reexamination
since the statute requires "special dispatch." To reflect the
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Office's cost of deciding requests under Sec. 1.956, i.e., the cost of
evaluating whether a showing of "sufficient cause" exists and whether
a "reasonable time" is specified, a requirement for a fee is added to
Sec. 1.956.
The present amendment tracks the above-discussed amendments to
require a fee for the decision on Sec. 1.136(b) and Sec. 1.550(c)
extension of time requests, and the criteria for granting of an
extension of time under Sec. 1.956 is analogous to that for Sec.
1.136(b) and Sec. 1.550(c).
Section 5.12: Section 5.12(b) is amended to refer to the petition
fee set forth in Sec. 1.17(g) for consistency with the change to Sec.
1.17. See discussion of Sec. 1.17 for comments related to the increase
of the petition fees.
Section 5.15: Section 5.15(c) is amended to refer to the petition
fee set forth in Sec. 1.17(g) for consistency with the change to Sec.
1.17. See discussion of Sec. 1.17 for comments related to the increase
of the petition fees.
Section 5.25: Section 5.25 is amended to refer to the petition fee
set forth in Sec. 1.17(g) for consistency with the change to Sec.
1.17. See discussion of Sec. 1.17 for comments related to the increase
of the petition fees.
Section 10.18: Section 10.18 is amended to align the signature
requirements of this section with the changes to the signature
requirements for patents, Sec. 1.4(d), and to add a reference to the
signature requirements for trademarks, Sec. 2.193(c)(1).
Section 10.18 required that signatures by practitioners on
correspondence submitted to the Office in patent, trademark, and other
non-patent matters conform to the requirements of personally signed
signatures set forth in Sec. 1.4(d)(1). In view of the amendments to
Sec. 1.4(d) creating S-signatures, Sec. 1.4(d)(2), and creating EFS
character coded signatures, Sec. 1.4(d)(3), Sec. 10.18 has been
amended to align the reference to Sec. 1.4 from solely paragraph
(d)(1) to paragraphs (d) and (e) so as to encompass all the signature
paragraphs of Sec. 1.4 (paragraphs (d)(1), (d)(2), (d)(3) and (e)).
The amendment of Sec. 10.18 to refer to Secs. 1.4(d) and (e)
also takes into account the clarifications in Sec. 1.4(d) that the
permanent signature is to be in dark ink or its equivalent and the
confirmation that Secs. 1.4(d)(1) and (e) are the only paragraphs
of Sec. 1.4 that permit handwritten signatures.
Section 10.18 has also been amended to add a reference to Sec.
2.193(c)(1), which are the trademark signature requirements.
Section 41.20: Section 41.20 sets forth the fee for petitions in
part 41. The petition fee amount set forth in Sec. 41.20 is increased
from $130.00 to $400.00 for consistency with the change to Sec. 1.17.
See discussion of Sec. 1.17 for comments related to the increase of
the petition fees.
Section 104.3: Section 104.3 is amended to set forth a petition fee
of $130.00, rather than a reference to the petition fee set forth in
Sec. 1.17(h).
Rule Making Considerations
Administrative Procedure Act: The notable changes in this final
rule are: (1) Providing for an alternative to a handwritten signature
on a number of submissions; (2) adjusting the fees for a number of
patent-related petitions to reflect the actual cost of processing these
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petitions; (3) codifying the current incorporation by reference
practice and also providing the conditions under which a claim for
priority or benefit of a prior-filed application would be considered an
incorporation by reference of the prior-filed application; (4)
expanding the submissions that can be filed on a compact disc; (5)
eliminating the requirement for copies of U.S. patents or U.S. patent
application publications cited in an information disclosure statement
in certain applications; (6) providing that a request for information
may contain interrogatories or requests for stipulations seeking
technical factual information actually known by the applicant; (7)
providing that supplemental replies will no longer be entered as a
matter of right; (8) providing for the treatment of preliminary
amendments filed on or before the filing date of an application as part
of the original disclosure; and (9) eliminating the requirement in a
reissue application for the actual physical surrender by applicant of
the original Letters Patent.
The changes in this final rule (except for the adjustment to the
fees for a number of patent-related petitions to reflect the actual
cost of processing the petitions) relate solely to the procedures to be
followed in filing and prosecuting a patent application. Therefore,
these rule changes involve interpretative rules, or rules of agency
practice and procedure under 5 U.S.C. 553(b)(A), and prior notice and
an opportunity for public comment were not required pursuant to 5
U.S.C. 553(b)(A) (or any other law). See Bachow Communications Inc. v.
FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an application
process are "rules of agency organization, procedure, or practice"
and exempt from the Administrative Procedure Act's notice and comment
requirement); see also Merck & Co., Inc. v. Kessler, 80 F.3d 1543,
1549-50, 38 USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of practice
promulgated under the authority of former 35 U.S.C. 6(a) (now in 35
U.S.C. 2(b)(2)) are not substantive rules (to which the notice and
comment requirements of the Administrative Procedure Act apply)), and
Fressola v. Manbeck, 36 USPQ2d 1211, 1215 (D.D.C. 1995) ("it is
doubtful whether any of the rules formulated to govern patent and
trade-mark practice are other than `interpretative rules, general
statements of policy, * * * procedure, or practice"' (quoting C.W.
Ooms, The United States Patent Office and the Administrative Procedure
Act, 38 Trademark Rep. 149, 153 (1948)).
Regulatory Flexibility Act: As prior notice and an opportunity for
public comment were not required pursuant to 5 U.S.C. 553 (or any other
law) for the changes in this final rule (except for the change to Sec.
1.17), a final regulatory flexibility analysis under the Regulatory
Flexibility Act (5 U.S.C. 601 et seq.) is not required for the changes
in this final rule (with the sole exception of the fee changes in Sec.
1.17). See 5 U.S.C. 603. With respect to the fee changes in Sec. 1.17,
the factual basis supporting the certification under the Regulatory
Flexibility Act is set forth herein.
Accordingly, for the reasons set forth herein, the Deputy General
Counsel for General Law of the United States Patent and Trademark
Office has certified to the Chief Counsel for Advocacy of the Small
Business Administration that changes in this final rule will not have a
significant economic impact on a substantial number of small entities.
See 5 U.S.C. 605(b).
Factual basis for change to petition fees: With regard to fees, the
Office is adjusting certain petition fees that are set under the
Office's authority under 35 U.S.C. 41(d), which allows the Office to
adjust petition fees to be in alignment with the actual average costs
of deciding such petitions. The petition fee for petitions formerly
covered in Sec. 1.17(h) and now covered in Secs. 1.17(f), 1.17(g), or
41.20(a) will be either $200.00 (an increase of $70.00) or $400.00 (an
increase of $270.00).
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The Office estimates that there will be fewer than 8,000 petitions
filed each year of the type that would be affected by the patent fee
changes, with fewer than 5,000 petitions being affected by the fee
change from $130.00 to $400.00, and fewer than 3,000 petitions being
affected by the fee change from $130.00 to $200.00. Since the small
entity filing rate has not exceeded 31.0% during the last five fiscal
years, the Office further estimates that there will be fewer than 2,480
petitions filed by a small entity each year of the type that would be
affected by the patent fee changes, with fewer than 1,550 petitions by
a small entity being affected by the fee change from $130.00 to
$400.00, and fewer than 930 petitions by a small entity being affected
by the fee change from $130.00 to $200.00. The Office received about
448,000 patent applications (over 92,500 provisional applications and
about 355,500 nonprovisional applications) in fiscal year 2003, the
Office received about 443,000 patent applications (over 89,500
provisional applications and about 353,500 nonprovisional applications)
in fiscal year 2002, and the Office received over 430,000 patent
applications (over 86,000 provisional applications and over 344,000
nonprovisional applications) in fiscal year 2001. Thus, this proposed
change would impact relatively few (less than 2% of) patent applicants.
In addition, the petition fee amounts being adopted by the Office
for petitions whose fees are set under the authority in 35 U.S.C. 41(d)
($400.00, $200.00, and $130.00) are comparable to or lower than the
petition fee amounts for petitions whose fees are set by statute in 35
U.S.C. 41(a) ($110.00 to $1,970.00 for extension of time petitions (35
U.S.C. 41(a)(8)), or $1,300.00 to revive an unintentionally abandoned
application (35 U.S.C. 41(a)(7)).
Therefore, the Office has determined that the change to the
petition fees in this final rule will not have a significant economic
impact on a substantial number of small entities.
Comments received in response to the notice of proposed rule
making: The Office published a notice of proposed rule making and
certified that an initial Regulatory Flexibility Act analysis was not
required. See Changes to Support Implementation of the United States
Patent and Trademark Office 21st Century Strategic Plan, 68 FR 53816,
53844 (Sept. 12, 2003), 1275 Off. Gaz. Pat. Office 23, 47 (Oct. 7,
2003) (proposed rule). The Office has received a comment and several
letters from an intellectual property law organization generally
asserting that the Office did not comply with the requirements of the
Regulatory Flexibility Act in certifying that the changes in this (and
several other) rule makings will not have a significant economic impact
on a substantial number of small entities. The intellectual property
law organization that submitted a comment and letters argues that the
changes to the following sections will increase the burden and economic
costs on small entities: Secs. 1.4, 1.17, 1.19, 1.53, 1.57, 1.105,
1.111, 1.213. The intellectual property law organization also argues
that the Office cannot just label rules that will have a substantial
effect on large and small businesses, and that have been objected to by
other intellectual property law organizations, as procedural to escape
analysis under the Regulatory Flexibility Act. The intellectual
property law organization asserts that: (1) 1,435,712 patents were
issued between 1977 and 2001 to applicants from the United States of
America; (2) 445,872 of these 1,435,712 patents (thirty-one percent)
were issued to persons who did not assign their rights in the patents
to others; (3) the number of patents obtained by small businesses is
undoubtedly higher; and (4) small business and individuals account for
a significant portion of the patent business before the Office. The
Office has reconsidered the initial certification in view of the
comment and letters.
The comment and letters raised several issues that the Office will
address. First, the numbers used by the commenters (and even the
numbers quoted in this certification) with respect to "small
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entities" overstate the number of small entities by as much as forty-
five percent. In any event, even using the overstated small entity
statistics maintained by the Office, none of these rules will impact a
substantial number of small entities. Second, the vast majority of the
Office's rules are procedural or interpretative, and are thus exempt
from the analytical requirements of the Regulatory Flexibility Act.
Third, notwithstanding the procedural or interpretative nature of most
of the Office's rules, the Office has set forth the factual basis for
those rules which commenters allege will create a significant economic
impact on a substantial number of small entities. In sum, because the
Office provided a sufficient factual basis for the fee changes
contained in this final rule, and because the Office has considered,
but rejected, all arguments raised regarding the certification in the
notice of proposed rule making, the Deputy General Counsel for General
Law of the United States Patent and Trademark Office has certified to
the Chief Counsel for Advocacy of the Small Business Administration
that changes in this final rule will not have a significant economic
impact on a substantial number of small entities.
Small entity patent activity (as a percentage): Based upon Office
Revenue Accounting and Management (RAM) records, small entity status
was claimed in between 27.0 and 36.7 percent of nonprovisional (since
1995) utility patent applications over the last thirteen fiscal years
(between fiscal years 1990 and 2003), and small entity status was
claimed in between 27.0 and 30.7 percent of nonprovisional utility
patent applications over the last five fiscal years (between fiscal
years 1999 and 2003).
Small entity status for purposes of paying reduced patent fees may
be claimed in a patent application if the applicant is an independent
inventor (foreign or domestic), a small business concern (foreign or
domestic) meeting the SBA's size standards set forth in 13 CFR 121.801
through 121.805, or a qualifying nonprofit organization (foreign or
domestic). See 35 U.S.C. 41(h)(1) and Sec. 1.27(a). Small entities
within the meaning of Regulatory Flexibility Act analysis or
certification are only a subset of small entities for purposes of
paying reduced patent fees. The Small Business Administration requires
(13 CFR 121.105) that an entity also have a place of business located
in the United States, and operate primarily within the United States or
make a significant contribution to the U.S. economy through payment of
taxes or use of American products, materials or labor, for that entity
to be considered a small entity or small business for purposes of the
Regulatory Flexibility Act. See Northwest Mining Ass'n v. Babbitt, 5
F.Supp. 2d 9, 16-17 (D.D.C. 1998) (an agency must use the Small
Business Administration's definition of small entity or small business,
rather than its own definition, for a Regulatory Flexibility Act
analysis or certification). Since about forty-five percent of all
nonprovisional applications are filed by residents of foreign countries
(this has been the trend for the last five fiscal years), the number of
small entities (as defined by the Small Business Administration)
impacted by this rule change is actually up to forty-five percent lower
than is being estimated by the Office.
Procedural or interpretative nature of most of the rules involved
in this rule making: As discussed previously, the changes in this final
rule (except for the adjustment to the fees for a number of patent-related
petitions to reflect the actual cost of processing the petitions
(Sec. 1.17)) involve interpretative rules, or rules of agency practice and
procedure under 5 U.S.C. 553(b)(A), and prior notice and an opportunity for
public comment were not required pursuant to 5 U.S.C. 553(b)(A) (or any
other law). For example: (1) Sec. 1.4 sets out the requirements for
correspondence (including signature requirements) with the Office; (2)
Sec. 1.19 sets out the fees for certified and uncertified copies of
Office documents (the Office is not changing the fees set forth in
Sec. 1.19); (3) Sec. 1.53 sets out the application filing date
requirements as provided in 35 U.S.C. 111, and specifies the procedures
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for completing an application and for contesting the filing date
accorded to an application; (4) Sec. 1.57 sets out the procedures for
incorporating material by reference in an application; (5) Sec. 1.78
sets out the procedures for claiming the benefit of prior-filed
provisional applications, nonprovisional applications, or international
applications which designate the U.S.; (6) Sec. 1.98 sets out the
procedures for having information considered by the Office; (7) Sec.
1.105 sets out the procedures to be followed by examiners and
applicants in issuing and replying to (respectively) requirements for
information; (8) Sec. 1.111 sets out the conditions under which a
supplemental reply to an Office action may entered; and (9) Sec. 1.115
sets out the conditions under which a preliminary amendment filed on or
before the filing date of an application will be treated as part of the
original disclosure. As indicated by the U.S. Court of Appeals for the
District of Columbia Circuit:
Our oft-cited formulation holds that the "critical feature" of the
procedural exception [of the Administrative Procedure Act] "is that
it covers agency actions that do not themselves alter the rights or
interests of parties, although it may alter the manner in which the
parties present themselves or their viewpoints to the agency."
JEM Broad. Co. v. FCC, 22 F.3d 320, 326 (D.C. Cir. 1994) (quoting
Batterton v. Marshall, 648 F.2d 694, 707 (D.C. Cir. 1980)). That a rule
has or may have a substantial impact or burden on parties, or that an
agency receives numerous objections to a rule or proposed rule change,
does not convert a procedural rule into a substantive rule. See James
V. Hurson Assocs., Inc. v. Glickman, 229 F.3d 277, 281-82 (D.C. Cir.
2000).
The Office does agree that individuals (independent inventors) and
small businesses account for a significant portion of the patent
business before the Office, and the Office generally does consider the
impact of rule changes (even for regulations exempt from notice and
comment requirements, for which a regulatory flexibility analysis is
not required under 5 U.S.C. 603) on small entity applicants. For this
reason, the Office has often published a notice of proposed rule making
for rule makings that are exempt from public comment because the Office
is seeking public comment on (inter alia) the impacts that a proposed
rule (if adopted) will have on the public, which includes small
entities. See, e.g., Clarification of Power of Attorney Practice, and
Revisions to Assignment Rules, 68 FR 38258, 38262 (June 27, 2003), 1272
Off. Gaz. Pat. Office 181, 185 (July 29, 2003) (notice seeking comment
on changes to procedural rules). Changes to Implement the 2002 Inter
Partes Reexamination and Other Technical Amendments to the Patent
Statute, 68 FR 22343, 22349 (Apr. 28, 2003), 1270 Off. Gaz. Pat. Office
106, 110 (May 20, 2003) (notice seeking comment on changes to
interpretative and procedural rules), and Changes to Implement
Electronic Maintenance of Official Patent Application Records, 68 FR
14365, 14372 (Mar. 25, 2003), 1269 Off. Gaz. Pat. Office 166, 172 (Apr.
22, 2003) (notice seeking comment on changes to procedural rules).
Nevertheless, since prior notice and an opportunity for public comment
were not required pursuant to 5 U.S.C. 553 (or any other law) for the
changes to Secs. 1.4, 1.19, 1.53, 1.57, 1.105, and 1.111 in this
final rule, a final regulatory flexibility analysis under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is not required for
the changes to Secs. 1.4, 1.19, 1.53, 1.57, 1.105, and 1.111 in
this final rule.
Discussion of specific sections alleged to increase the burden and
economic costs on small entities: The following is a section-by-section
discussion of the changes to Secs. 1.4, 1.17, 1.19, 1.53, 1.57,
1.105, and 1.111 (the changes that the Office is adopting in this final
rule that the intellectual property law organization alleges will
increase the burden and economic costs on small entities).
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Section 1.4: The intellectual property law organization provides no
specific explanation as to how or why the change to Sec. 1.4 will
increase the burden and economic costs on small entities. There is no
reasonable basis for contending that the change to Sec. 1.4 in this
final rule will have a significant economic impact on any entity. The
change to this section simply provides additional means of signing
certain documents being submitted to the Office. Any entity may
continue to either provide correspondence which bears an original
handwritten signature, or provide a copy of correspondence which bears
an original handwritten signature (where permitted), as provided in
former Sec. 1.4(d). Because small entities are not required to use the
alternatives to a handwritten signature (and the alternative signatures
does not require the purchase of any special software), the final rule
does not have any economic impact on small entities. The Office
anticipates that the alternative to a handwritten signature now
provided for in Sec. 1.4 will be used primarily by residents of
foreign countries and large business entities, and that the number of
small entities (as defined by the SBA) who will use the alternative to
a handwritten signature now provided for in Sec. 1.4 will be very low
(less than 1.0%). Therefore, the Office has determined that the change
to Sec. 1.4 in this final rule will not have a significant economic
impact on a substantial number of small entities.
Section 1.17: The change to this section revises the petition fees
set under the authority provided in 35 U.S.C. 41(d) to reflect the
actual costs of processing these petitions. The intellectual property
law organization argues that: (1) Certain petition fees (e.g., the fee
for a petition under Sec. 1.53) are more than the small entity fee for
filing an application; (2) there is no reduction in these petition fees
for small entities; and (3) no petition fee should be required for any
small entity. The arguments do not explain how or why the change to
Sec. 1.17 in this final rule has a significant economic impact on a
substantial number of small entities, or explain how or why the
Office's analysis that this change would impact relatively few (less
than 2% of) patent applicants is not correct. The arguments simply
present the changes that the intellectual property law organization
would like to see made with regard to the Office's proposed change to
the petition fees set forth in Sec. 1.17. The Office is not adopting
these suggestions because (as discussed with respect to the comments on
the proposed change to Sec. 1.17): (1) The comparison of a petition
fee set on a cost-recovery basis under 35 U.S.C. 41(d) to a small
entity basic filing fee set under 35 U.S.C. 41(a) is inapt as the full
(non-small entity) basic filing fee does not recover the cost of
initial processing and examination of an application; (2) the small
entity fee reduction in 35 U.S.C. 41(h) only applies to fees charged
under 35 U.S.C. 41(a) or (b), where the petition fee amounts being
changed in this final rule are charged under the authority provided in
35 U.S.C. 41(d); and (2) there is no authority in the patent statute to
reduce a fee charged under 35 U.S.C. 41 by one hundred percent for small
entities. As discussed above, the petition fee increase would be either
$70.00 or $270.00 depending upon the type of petition, and this petition
fee change would impact relatively few (less than 2% of) patent applicants.
Therefore, the Office has determined that the change to Sec. 1.17 in
this final rule will not have a significant economic impact on a
substantial number of small entities.
Section 1.19: The intellectual property law organization argues
that the imposition of additional document supply fees will increase
the burden and economic costs on small entity applicants. The Office is
not revising the document supply fees set forth in Sec. 1.19. The
Office is revising Sec. 1.19 to provide that the Office may supply
documents on paper or on an electronic medium (i.e., compact disc or by
electronic mail message via the Internet) regardless of the form in
which the document was originally submitted to the Office, and to
provide that the applicable fee is based upon the medium (paper or
electronic) upon which the document is being supplied by the Office
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rather than the medium upon which the document was originally submitted
to the Office. This change to Sec. 1.19 will result in many requesters
paying less because the fee for the Office to provide a document in an
electronic medium ($55.00 for the first compact disc) is lower than the
fee for the Office to provide the document in paper form ($200 for the
first 400 pages). The Office receives fewer than 10,000 requests for a
copy of the file wrapper and contents of a patent or patent application
each year. Since the changes in this final rule will reduce or have no
effect on the document fees under Sec. 1.19, this change to Sec. 1.19
will not have a significant economic impact on a substantial number of
small entities even if all 10,000 requests for a copy of the file
wrapper and contents of a patent or patent application received by the
Office each year are by a small entity. In any event, the document
supply fees set forth in Sec. 1.19 are not fees that an applicant for
patent must pay as part of the patent application process; rather, the
document supply fees set forth in Sec. 1.19 are fees that the Office
charges for persons who wish to purchase patent documents (i.e., Office
patent products) from the Office. Therefore, the Office has determined
that the change to Sec. 1.19 in this final rule will not have a
significant economic impact on a substantial number of small entities.
Section 1.53: The intellectual property law organization argues
that, where an application has been filed with omitted drawings or
pages of specification, the Office should permit applicants the option
of retaining the original filing date and proceeding with the
application as filed. The only change to Sec. 1.53 in this final rule
is to provide that a petition under Sec. 1.53 requires the petition
fee under Sec. 1.17(f) ($400.00), rather than the petition fee under
Sec. 1.17(h) ($130.00). The Office estimates that fewer than 2,000
petitions under Sec. 1.53 are filed each year (and since the small
entity filing rate has not exceeded 31.0% during the last five fiscal
years, the Office further estimates that there will be fewer than 620
petitions under Sec. 1.53 by a small entity), and these petitions are
included in the fewer than 5,000 petitions indicated as being affected
by the fee change from $130.00 to $400.00 (see discussion of the change
to Sec. 1.17). The Office is otherwise retaining the practice for
treating applications filed with omitted drawings or pages of
specification set forth in MPEP 601.01(d) through 601.01(g). Therefore,
the Office has determined that the change to Sec. 1.53 in this final
rule will not have a significant economic impact on a substantial
number of small entities.
Section 1.57: The intellectual property law organization argues
that Sec. 1.57 is too rigid and inflexible and that incorporation by
reference should be more liberal and open. Section 1.57 is adopted to
codify the current incorporation by reference practice set forth in
MPEP 608.01(p), and also provide the conditions under which a claim for
priority or benefit of a prior-filed application would be considered an
incorporation by reference of the prior-filed application. The
codification of the current incorporation by reference practice set
forth in MPEP 608.01(p) is not a change in practice. While the
intellectual property law organization complains that the requirement
in Sec. 1.57(b) that an applicant express the incorporation by
reference by using the root words "incorporat(e)" and "reference,"
and identify the referenced patent, application, or publication in the
manner set forth in Secs. 1.98(b)(1) through (b)(5) are too rigid,
the requirement that a patent applicant provide this information when
incorporating material by reference into an application (i.e., that an
applicant be clear when making an incorporation by reference) has no
economic impact, let alone a "significant economic impact" on any
entity. Any entity who considers the conditions set forth in Sec.
1.57(a) under which a claim for priority or benefit of a prior-filed
application may now be considered an incorporation by reference of the
prior-filed application to be too onerous, rigid, and inflexible may
simply decline to take advantage of this provision by not amending the
application to include any omitted portion of the specification or
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drawing(s) that is disclosed in a prior-filed application.
Therefore, the Office has determined that the change to Sec. 1.57
in this final rule will not have a significant economic impact on a
substantial number of small entities.
Section 1.105: Section 1.105(a)(1) provides that in the course of
examining or treating a matter in a pending or abandoned application
filed under 35 U.S.C. 111 or 371 (including a reissue application), in
a patent, or in a reexamination proceeding, the examiner or other
Office employee may require the submission of such information as may
be reasonably necessary to properly examine or treat the matter.
Section 1.105(a)(1) then proceeds to set forth examples of information
requirements. The change to Sec. 1.105(a)(1) in this final rule is to
add the following example: technical information known to applicant
concerning the interpretation of the related art, the disclosure, the
claimed subject matter, other factual information pertinent to
patentability, or the accuracy of the examiner's stated interpretation
of such items. Section 1.105(a)(3) sets forth examples of formats that
requirements for factual information may be presented in any
appropriate form, namely: (1) A requirement for information; (2)
interrogatories in the form of specific questions seeking applicant's
factual knowledge; or (3) stipulations as to facts with which the
applicant may agree or disagree. The Office estimates that a
requirement for information will be issued in fewer than one hundred
(0.03% of) nonprovisional patent applications each fiscal year. Since a
requirement for information under Sec. 1.105 is issued only rarely
during the course of examining a nonprovisional application (fewer than
one hundred each year), the change to Sec. 1.105 in this final rule
would not impact a substantial number of small entities no matter what
percentage of requirements for information under Sec. 1.105 are issued
in small entity nonprovisional applications.
Moreover, Sec. 1.105 does not place any new requirements on
applicants, but is simply a codification of the Office's (and the
examiner's) inherent authority under 35 U.S.C. 131 and 132 to require
information that is reasonably necessary to properly examine or treat a
matter in an application. See Changes to Implement the Patent Business
Goals, 65 FR at 54633, 1238 Off. Gaz. Pat. Office at 103; see also
Jaskiewicz v. Mossinghoff, 822 F.2d at 1061, 3 USPQ2d at 1301
(practitioners have a duty to honestly and forthrightly answer requirements
for information from the Office). The change to Sec. 1.105 in this final
rule adds no new requirements. Section 1.105 has been in effect for over
three years (since November of 2000). Section 1.105 now merely provides an
additional example of information that may be required by the Office, and
the format by which the Office may require the information, which is
permitted under the Office's (and the examiner's) authority under 35 U.S.C.
131 and 132 and former Sec. 1.105 to require information that is reasonably
necessary to properly examine or treat a matter in an application).
Finally, the Office does not believe that Sec. 1.105, or the changes to
Sec. 1.105 to provide an additional example of information that may be
required by the Office and the format by which the Office may require the
information, will have a "significant economic impact" on any entity
because this provision requires the entity to provide only the factual
information that is readily available. See Sec. 1.105(a)(4).
Therefore, the Office has determined that the change to Sec. 1.105 in
this final rule will not have a significant economic impact on a
substantial number of small entities.
Section 1.111: The change to Sec. 1.111 in this final rule is to
provide that a supplemental reply will not (with certain exceptions) be
entered as a matter of right. Based upon Office PALM records, over
235,500 replies to non-final Office actions were filed in fiscal year
2003 in applications that were pending before the Office, and fewer
than 8,270 of these replies were followed by a supplemental reply.
Since the small entity filing rate has not exceeded 31.0% during the
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last five fiscal years, the Office further estimates that fewer 2,564
replies in a small entity nonprovisional application were followed by a
supplemental reply. In addition, the Office will enter a supplemental
reply that is filed within the period during which action is suspended
by the Office under Sec. 1.103(a) or (c). Thus, if a patent applicant
has good cause to file a supplemental reply, the applicant may file the
initial reply with a petition for suspension of action under Sec.
1.103(a). Moreover, even if a patent applicant does not have good cause
to file a supplemental reply, the applicant may file the initial reply
with an RCE under Sec. 1.114 (assuming that the conditions of Sec.
1.114 are otherwise met) with a petition for suspension of action under
Sec. 1.103(c). The Office is not adjusting the fees for an RCE or for
a petition for suspension of action under Sec. 1.103(c), and the
change to the fee for a petition for suspension of action under Sec.
1.103(a) (from $130.00 to $200.00) is covered in the discussion of the
change to Sec. 1.17. Therefore, the Office has determined that the
change to Sec. 1.111 in this final rule will not have a significant
economic impact on a substantial number of small entities.
Executive Order 13132: This rule making does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866: This rule making has been determined to be
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act: This rule making involves information
collection requirements which are subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.). The collections of information involved in
this final rule have been reviewed and previously approved by OMB under
the following control numbers: 0651-0016, 0651-0020, 0651-0031, 0651-
0032, 0651-0033, 0651-0034 and 0651-0036.
The title, description and respondent description of each of the
information collections is shown below with an estimate of the annual
reporting burdens. Included in the estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information. The principal impacts of
the changes in this final rule are to (1) expressly provide for an
alternative signature on a number of submissions; (2) adjust the fees
for many of the petitions listed under Sec. 1.17(h) to reflect the
Office's actual cost of processing these petitions; and (3) expand the
submissions that can be filed on a compact disc.
OMB Number: 0651-0016.
Title: Rules for Patent Maintenance Fees.
Form Numbers: PTO/SB/45/47/65/66.
Type of Review: Approved through May of 2006.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 348,140.
Estimated Time Per Response: Between 20 seconds and 8 hours.
Estimated Total Annual Burden Hours: 30,735 hours.
Needs and Uses: Maintenance fees are required to maintain a patent,
except for design or plant patents, in force under 35 U.S.C. 41(b).
Payment of maintenance fees are required at 3 1/2, 7 1/2 and 11 1/2
years after the grant of the patent. A patent number and application
number of the patent on which maintenance fees are paid are required in
order to ensure proper crediting of such payments.
OMB Number: 0651-0020.
Title: Patent Term Extension.
Form Numbers: None.
Type of Review: Approved through October of 2004.
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Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms, Federal
Government and State, Local and Tribal Governments.
Estimated Number of Respondents: 26,859.
Estimated Time Per Response: Between 1 and 25 hours.
Estimated Total Annual Burden Hours: 30,905 hours.
Needs and Uses: The information supplied to the United States
Patent and Trademark Office (USPTO) by an applicant requesting
reconsideration of a patent term adjustment determination under 35
U.S.C. 154(b) (Sec. 1.702 et seq.) is used by the United States Patent
and Trademark Office to determine whether its determination of patent
term adjustment under 35 U.S.C. 154(b) is correct, and whether the
applicant is entitled to reinstatement of reduced patent term
adjustment. The information supplied to the United States Patent and
Trademark Office by an applicant seeking a patent term extension under
35 U.S.C. 156 (Sec. 1.710 et seq.) is used by the United States Patent
and Trademark Office, the Department of Health and Human Services, and
the Department of Agriculture to determine the eligibility of a patent
for extension and to determine the period of any such extension. The
applicant can apply for patent term and interim extensions, petition
the USPTO to review final eligibility decisions, withdraw patent term
applications, and declare his or her eligibility to apply for a patent
term extension.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08A, PTO/SB/08B, PTO/SB/17i, PTO/SB/17P, PTO/
SB/21-27, PTO/SB/30-37, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/67-68, PTO/
SB/91-92, PTO/SB/96-97, PTO-2053-A/B, PTO-2054-A/B, PTO-2055-A/B, PTOL-
413A.
Type of Review: Approved through July of 2006.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms, Federal
Government and State, Local and Tribal Governments.
Estimated Number of Respondents: 2,223,639.
Estimated Time Per Response: 1 minute and 48 seconds to 8 hours.
Estimated Total Annual Burden Hours: 2,724,957 hours.
Needs and Uses: During the processing for an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the United States Patent and Trademark Office
concerning the examination of a specific application. The specific
information required or which may be submitted includes: Information
Disclosure Statements; Submission of priority documents and Amendments.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07, PTO/SB/13PCT, PTO/SB/16-19, PTO/SB/29
and 29A, PTO/SB/101-110.
Type of Review: Approved through July of 2006.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions, Farms, Federal
Government, and State, Local, or Tribal Governments.
Estimated Number of Respondents: 454,287.
Estimated Time Per Response: 22 minutes to 10 hours and 45 minutes.
Estimated Total Annual Burden Hours: 4,171,568 hours.
Needs and Uses: The purpose of this information collection is to
permit the Office to determine whether an application meets the
criteria set forth in the patent statute and regulations. The standard
Fee Transmittal form, New Utility Patent Application Transmittal form,
New Design Patent Application Transmittal form, New Plant Patent
Application Transmittal form, Declaration, Provisional Application
Cover Sheet, and Plant Patent Application Declaration will assist
applicants in complying with the requirements of the patent statute and
regulations, and will further assist the USPTO in processing and
examination of the application.
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OMB Number: 0651-0033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/44, PTO/SB/50-51, PTO/SB/51S, PTO/SB/52-53,
PTO/SB/56-58, PTOL-85B.
Type of Review: Approved through April of 2007.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions, Farms, Federal
Government, and State, Local or Tribal Governments.
Estimated Number of Respondents: 223, 411.
Estimated Time Per Response: 1.8 minutes to 2 hours.
Estimated Total Annual Burden Hours: 67,261 hours.
Needs and Uses: This collection of information is required to
administer the patent laws pursuant to Title 35, U.S.C., concerning the
issuance of patents and related actions including correcting errors in
printed patents, refiling of patent applications, requesting
reexamination of a patent, and requesting a reissue patent to correct
an error in a patent. The affected public includes any individual or
institution whose application for a patent has been allowed or who
takes action as covered by the applicable rules.
OMB Number: 0651-0034.
Title: Secrecy and License to Export.
Form Numbers: None.
Type of Review: Approved through May 2007.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions, Farms, Federal
Government, and State, Local, or Tribal Governments.
Number of Respondents: 1,669.
Estimated Time Per Response: Between 30 minutes and 4 hours.
Estimated Total Annual Burden Hours: 1,310 hours.
Needs and Uses: When disclosure of an invention may be detrimental
to national security, the Director of the USPTO must issue a secrecy
order and withhold the publication of the application or grant of a
patent for such period as the national interest requires. The USPTO is
also required to grant foreign filing licenses in certain circumstances
to applicants filing patent applications in foreign countries. This
collection is used by the public to petition the USPTO to allow
disclosure, modification, or rescission of a secrecy order, or to
obtain a general or group permit. Applicants may also petition the
USPTO for a foreign filing license or a retroactive license.
OMB Number: 0651-0036.
Title: Statutory Invention Registration.
Form Number: PTO/SB/94.
Type of Review: Approved through April of 2006.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions, Farms, Federal
Government, and State, Local or Tribal Governments.
Estimated Number of Respondents: 73.
Estimated Time Per Response: 24 minutes.
Estimated Total Annual Burden Hours: 29 hours.
Needs and Uses: This collection of information is necessary to
ensure that the requirements of 35 U.S.C. 157 and 37 CFR 1.293 through
1.297 are met. The public uses form PTO/SB/94, Request for Statutory
Invention Registration, to request and authorize publication of a
regularly filed patent application as a statutory invention
registration, to waive the right to receive a United States patent on
the same invention claimed in the identified patent application, and to
agree that the waiver will be effective upon publication of the
statutory invention registration. The USPTO uses form PTO/SB/94,
Request for a Statutory Invention Registration, to review, grant, or
deny a request for a statutory invention registration. No forms are
associated with the petition to review final refusal to publish a
statutory invention registration or the petition to withdraw a
publication request. The petition to review final refusal to publish a
statutory invention registration is used by the public to petition the
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USPTO's rejection of a request for a statutory invention registration.
The USPTO uses the petition to withdraw a publication request to review
requests to stop publication of a statutory invention registration.
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Robert J. Spar, Director, Office of Patent Legal
Administration, Commissioner for Patents, P.O. Box 1450, Alexandria, VA
22313-1450, or to the Office of Information and Regulatory Affairs,
OMB, 725 17th Street, NW., Washington, DC 20503, (Attn: PTO Desk Officer).
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, Inventions and
patents, Reporting and recordkeeping requirements, Small Businesses.
37 CFR Part 5
Classified information, Foreign relations, Inventions and patents.
37 CFR Part 10
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
37 CFR Part 41
Administrative practice and procedure, Inventions and patents,
Lawyers.
37 CFR Part 104
Administrative practice and procedure, Claims, Courts, Freedom of
Information, Inventions and patents, Tort Claims, Trademarks.
. For the reasons set forth in the preamble, 37 CFR Parts 1, 5 and 41 are
amended as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
. 1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
. 2. Section 1.4 is amended by revising paragraphs (d) and (e), and
adding new paragraph (h) immediately before the section authority
citation to read as follows:
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Sec. 1.4 Nature of correspondence and signature requirements.
* * * * *
(d)(1) Handwritten signature. Each piece of correspondence, except
as provided in paragraphs (d)(2), (d)(3), (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 (Sec. 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
Sec. 1.4(d)(1). An S-signature includes any signature made by
electronic or mechanical means, and any other mode of making or
applying a signature not covered by either a handwritten signature of
Sec. 1.4(d)(1) or an Office Electronic Filing System (EFS) character
coded signature of Sec. 1.4(d)(3). Correspondence being filed in the
Office in paper, by facsimile transmission as provided in Sec. 1.6(d),
with a signature in permanent dark ink or its equivalent, or via the
Office Electronic Filing System as an EFS Tag(ged) Image File Format
(TIFF) attachment, for a patent application, patent, or a reexamination
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) 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 registered practitioner, signing pursuant to Secs.
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 the
S-signature. The number () character may only be used 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) EFS character coded signature. Correspondence in character
coded form being filed via the Office Electronic Filing System for a
patent application or patent may be signed electronically. The
electronic signature must consist only of letters of the English
alphabet, or Arabic numerals, or both, with appropriate spaces and
commas, periods, apostrophes, or hyphens for punctuation. The person
signing the correspondence must personally insert the electronic
signature with a first single forward slash mark before, and a second
single forward slash mark after, the electronic signature (e.g., /Dr.
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James T. Jones, Jr./).
(4) Certifications. (i) Section 10.18 certifications: 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 Sec. 10.18(b) of
this chapter. Violations of Sec. 10.18(b)(2) of this chapter by a
party, whether a practitioner or non-practitioner, may result in the
imposition of sanctions under Sec. 10.18(c) of this chapter. Any
practitioner violating Sec. 10.18(b) of this chapter may also be
subject to disciplinary action. See Secs. 10.18(d) and
10.23(c)(15) of this chapter.
(ii) Certifications as to the signature: (A) Of another: A person
submitting a document signed by another under paragraphs (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.
(B) Self certification: The person inserting a signature under
paragraphs (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.
(C) Sanctions: Violations of the certifications as to the signature
of another or a person's own signature, set forth in paragraphs
(d)(4)(ii)(A) and (B) of this section, may result in the imposition of
sanctions under Sec. 10.18(c) and (d) of this chapter.
(e) Correspondence requiring a person's signature and relating to
registration practice before the Patent and Trademark Office in patent
cases, enrollment and disciplinary investigations, or disciplinary
proceedings must be submitted with an original handwritten signature
personally signed in permanent dark ink or its equivalent by that
person.
* * * * *
(h) Ratification/confirmation/evidence of authenticity: The Office
may require ratification, confirmation (which includes submission of a
duplicate document but with a proper signature), or evidence of
authenticity of a signature, such as when the Office has reasonable doubt
as to the authenticity (veracity) of the signature, e.g., where there are
variations of a signature, or where the signature and the typed or
printed name, do not clearly identify the person signing.
* * * * *
. 3. Section 1.6 is amended by revising paragraph (d)(4) and removing and
reserving paragraph (e) to read as follows:
Sec. 1.6 Receipt of correspondence.
* * * * *
(d) * * *
(4) Color drawings submitted under Secs. 1.81, 1.83 through
1.85, 1.152, 1.165, 1.173, or 1.437;
* * * * *
. 4. Section 1.8 is amended by revising the introductory text of
paragraph (a) and the introductory text of paragraph (b) to read as
follows:
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Sec. 1.8 Certificate of mailing or transmission.
(a) Except in the situations enumerated in paragraph (a)(2) of this
section or as otherwise expressly excluded in this chapter,
correspondence required to be filed in the U.S. Patent and Trademark
Office within a set period of time will be considered as being timely
filed if the procedure described in this section is followed. The
actual date of receipt will be used for all other purposes.
* * * * *
(b) In the event that correspondence is considered timely filed by
being mailed or transmitted in accordance with paragraph (a) of this
section, but not received in the U.S. Patent and Trademark Office after
a reasonable amount of time has elapsed from the time of mailing or
transmitting of the correspondence, or after the application is held to
be abandoned, or after the proceeding is dismissed, terminated, or
decided with prejudice, the correspondence will be considered timely if
the party who forwarded such correspondence:
* * * * *
. 5. Section 1.10 is amended by adding new paragraphs (g), (h), and (i)
to read as follows:
Sec. 1.10 Filing of correspondence by "Express Mail."
* * * * *
(g) Any person who mails correspondence addressed as set out in
Sec. 1.1(a) to the Office with sufficient postage utilizing the
"Express Mail Post Office to Addressee" service of the USPS, but has
the correspondence returned by the USPS due to an interruption or
emergency in "Express Mail" service, may petition the Director to
consider such correspondence as filed on a particular date in the
Office, provided that:
(1) The petition is filed promptly after the person becomes aware
of the return of the correspondence;
(2) The number of the "Express Mail" mailing label was placed on
the paper(s) or fee(s) that constitute the correspondence prior to the
original mailing by "Express Mail";
(3) The petition includes the original correspondence or a copy of
the original correspondence showing the number of the "Express Mail"
mailing label thereon and a copy of the "Express Mail" mailing label
showing the "date-in"; and
(4) The petition includes a statement which establishes, to the
satisfaction of the Director, the original deposit of the
correspondence and that the correspondence or copy of the
correspondence is the original correspondence or a true copy of the
correspondence originally deposited with the USPS on the requested
filing date. The Office may require additional evidence to determine if
the correspondence was returned by the USPS due to an interruption or
emergency in "Express Mail" service.
(h) Any person who attempts to mail correspondence addressed as set
out in Sec. 1.1(a) to the Office with sufficient postage utilizing the
"Express Mail Post Office to Addressee" service of the USPS, but has
the correspondence refused by an employee of the USPS due to an
interruption or emergency in "Express Mail" service, may petition the
Director to consider such correspondence as filed on a particular date
in the Office, provided that:
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(1) The petition is filed promptly after the person becomes aware
of the refusal of the correspondence;
(2) The number of the "Express Mail" mailing label was placed on
the paper(s) or fee(s) that constitute the correspondence prior to the
attempted mailing by "Express Mail";
(3) The petition includes the original correspondence or a copy of
the original correspondence showing the number of the "Express Mail"
mailing label thereon; and
(4) The petition includes a statement by the person who originally
attempted to deposit the correspondence with the USPS which
establishes, to the satisfaction of the Director, the original attempt
to deposit the correspondence and that the correspondence or copy of
the correspondence is the original correspondence or a true copy of the
correspondence originally attempted to be deposited with the USPS on
the requested filing date. The Office may require additional evidence
to determine if the correspondence was refused by an employee of the
USPS due to an interruption or emergency in "Express Mail" service.
(i) Any person attempting to file correspondence under this section
that was unable to be deposited with the USPS due to an interruption or
emergency in "Express Mail" service which has been so designated by
the Director, may petition the Director to consider such correspondence
as filed on a particular date in the Office, provided that:
(1) The petition is filed in a manner designated by the Director
promptly after the person becomes aware of the designated interruption
or emergency in "Express Mail" service;
(2) The petition includes the original correspondence or a copy of
the original correspondence; and
(3) The petition includes a statement which establishes, to the
satisfaction of the Director, that the correspondence would have been
deposited with the USPS but for the designated interruption or
emergency in "Express Mail" service, and that the correspondence or
copy of the correspondence is the original correspondence or a true
copy of the correspondence originally attempted to be deposited with
the USPS on the requested filing date.
. 6. Section 1.12 is amended by revising paragraph (c)(1) to read as
follows:
Sec. 1.12 Assignment records open to public inspection.
* * * * *
(c) * * *
(1) Be in the form of a petition including the fee set forth in
Sec. 1.17(g); or
* * * * *
. 7. Section 1.14 is amended by revising paragraph (h)(1) to read as
follows:
Sec. 1.14 Patent applications preserved in confidence.
* * * * *
(h) * * *
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(1) The fee set forth in Sec. 1.17(g); and
* * * * *
. 8. Section 1.17 is amended by revising paragraphs (h) and (i), and
adding new paragraphs (f) and (g) to read as follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(f) For filing a petition under one of the following sections which
refers to this paragraph: $400.00.
Sec. 1.53(e) - to accord a filing date.
Sec. 1.57(a) - to accord a filing date.
Sec. 1.182 - for decision on a question not specifically provided for.
Sec. 1.183 - to suspend the rules.
Sec. 1.378(e) - for reconsideration of decision on petition
refusing to accept delayed payment of maintenance fee in an expired
patent.
Sec. 1.741(b) - to accord a filing date to an application under
Sec. 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
Sec. 1.12 - for access to an assignment record.
Sec. 1.14 - for access to an application.
Sec. 1.47 - for filing by other than all the inventors or a person
not the inventor.
Sec. 1.59 - for expungement of information.
Sec. 1.103(a) - to suspend action in an application.
Sec. 1.136(b) - for review of a request for extension of time when
the provisions of Sec. 1.136(a) are not available.
Sec. 1.295 - for review of refusal to publish a statutory invention
registration.
Sec. 1.296 - to withdraw a request for publication of a statutory
invention registration filed on or after the date the notice of
intent to publish issued.
Sec. 1.377 - for review of decision refusing to accept and record
payment of a maintenance fee filed prior to expiration of a patent.
Sec. 1.550(c) - for patent owner requests for extension of time in
ex parte reexamination proceedings.
Sec. 1.956 - for patent owner requests for extension of time in
inter partes reexamination proceedings.
Sec. 5.12 - for expedited handling of a foreign filing license.
Sec. 5.15 - for changing the scope of a license.
Sec. 5.25 - for retroactive license.
(h) For filing a petition under one of the following sections which
refers to this paragraph: $130.00.
Sec. 1.19(g) - to request documents in a form other than that
provided in this part.
Sec. 1.84 - for accepting color drawings or photographs.
Sec. 1.91 - for entry of a model or exhibit.
Sec. 1.102(d) - to make an application special.
Sec. 1.138(c) - to expressly abandon an application to avoid
publication.
Sec. 1.313 - to withdraw an application from issue.
Sec. 1.314 - to defer issuance of a patent.
(i) Processing fee for taking action under one of the following
sections which refers to this paragraph: $130.00.
Sec. 1.28(c)(3) - for processing a non-itemized fee deficiency
based on an error in small entity status.
Sec. 1.41 - for supplying the name or names of the inventor or
inventors after the filing date without an oath or declaration as
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prescribed by Sec. 1.63, except in provisional applications.
Sec. 1.48 - for correcting inventorship, except in provisional
applications.
Sec. 1.52(d) - for processing a nonprovisional application filed
with a specification in a language other than English.
Sec. 1.53(b)(3) - to convert a provisional application filed under
Sec. 1.53(c) into a nonprovisional application under Sec. 1.53(b).
Sec. 1.55 - for entry of late priority papers.
Sec. 1.99(e) - for processing a belated submission under Sec. 1.99.
Sec. 1.103(b) - for requesting limited suspension of action,
continued prosecution application for a design patent (Sec. 1.53(d)).
Sec. 1.103(c) - for requesting limited suspension of action,
request for continued examination (Sec. 1.114).
Sec. 1.103(d) - for requesting deferred examination of an
application.
Sec. 1.217 - for processing a redacted copy of a paper submitted in
the file of an application in which a redacted copy was submitted for
the patent application publication.
Sec. 1.221 - for requesting voluntary publication or republication
of an application.
Sec. 1.291(c)(5) - for processing a second or subsequent protest by
the same real party in interest.
Sec. 1.497(d) - for filing an oath or declaration pursuant to 35
U.S.C. 371(c)(4) naming an inventive entity different from the
inventive entity set forth in the international stage.
Sec. 3.81 - for a patent to issue to assignee, assignment submitted
after payment of the issue fee.
* * * * *
. 9. Section 1.19 is amended by revising its introductory text and
paragraph (b), and by adding paragraph (g), to read as follows:
Sec. 1.19 Document supply fees.
The United States Patent and Trademark Office will supply copies of
the following patent-related documents upon payment of the fees
indicated. Paper copies will be in black and white unless the original
document is in color, a color copy is requested and the fee for a color
copy is paid.
* * * * *
(b) Copies of Office documents to be provided in paper, or in
electronic form, as determined by the Director (for other patent-
related materials see Sec. 1.21(k)):
(1) Copy of a patent application as filed, or a patent-related file
wrapper and contents, stored in paper in a paper file wrapper, in an
image format in an image file wrapper, or if color documents, stored in
paper in an Artifact Folder:
(i) If provided on paper:
(A) Application as filed: $20.00.
(B) File wrapper and contents of 400 or fewer pages: $200.00.
(C) Additional fee for each additional 100 pages or portion thereof
of file wrapper and contents: $40.00.
(D) Individual application documents, other than application as
filed, per document: $25.00.
(ii) If provided on compact disc or other physical electronic
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medium in a single order:
(A) Application as filed: $20.00.
(B) File wrapper and contents, first physical electronic medium:
$55.00.
(C) Additional fee for each continuing physical electronic medium
in the single order of paragraph (b)(1)(ii)(B) of this section: $15.00.
(iii) If provided electronically (e.g., by electronic transmission)
other than on a physical electronic medium as specified in paragraph
(b)(1)(ii) of this section:
(A) Application as filed: $20.00.
(B) File wrapper and contents: $55.00.
(2) Copy of patent-related file wrapper contents that were
submitted and are stored on compact disc or other electronic form
(e.g., compact discs stored in an Artifact Folder), other than as
available in paragraph (b)(1) of this section:
(i) If provided on compact disc or other physical electronic medium
in a single order:
(A) First physical electronic medium in a single order: $55.00.
(B) Additional fee for each continuing physical electronic medium
in the single order of paragraph (b)(2)(i) of this section: $15.00.
(ii) If provided electronically other than on a physical electronic
medium per order: $55.00.
(3) Copy of Office records, except copies available under paragraph
(b)(1) or (2) of this section: $25.00.
(4) For assignment records, abstract of title and certification,
per patent: $25.00.
* * * * *
(g) Petitions for documents in a form other than that provided by
this part, or in a form other than that generally provided by the
Director, will be decided in accordance with the merits of each
situation. Any petition seeking a decision under this section must be
accompanied by the petition fee set forth in Sec. 1.17(h) and, if the
petition is granted, the documents will be provided at cost.
. 10. Section 1.27 is amended by revising paragraph (a) to read as
follows:
Sec. 1.27 Definition of small entities and establishing status as a
small entity to permit payment of small entity fees; when a
determination of entitlement to small entity status and notification of
loss of entitlement to small entity status are required; fraud on the
Office.
(a) Definition of small entities. A small entity as used in this
chapter means any party (person, small business concern, or nonprofit
organization) under paragraphs (a)(1) through (a)(3) of this section.
(1) Person. A person, as used in paragraph (c) of this section,
means any inventor or other individual (e.g., an individual to whom an
inventor has transferred some rights in the invention) who has not
assigned, granted, conveyed, or licensed, and is under no obligation
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under contract or law to assign, grant, convey, or license, any rights
in the invention. An inventor or other individual who has transferred
some rights in the invention to one or more parties, or is under an
obligation to transfer some rights in the invention to one or more
parties, can also qualify for small entity status if all the parties
who have had rights in the invention transferred to them also qualify
for small entity status either as a person, small business concern, or
nonprofit organization under this section.
(2) Small business concern. A small business concern, as used in
paragraph (c) of this section, means any business concern that:
(i) Has not assigned, granted, conveyed, or licensed, and is under
no obligation under contract or law to assign, grant, convey, or
license, any rights in the invention to any person, concern, or
organization which would not qualify for small entity status as a
person, small business concern, or nonprofit organization; and
(ii) Meets the size standards set forth in 13 CFR 121.801 through
121.805 to be eligible for reduced patent fees. Questions related to
standards for a small business concern may be directed to: Small
Business Administration, Size Standards Staff, 409 Third Street, SW.,
Washington, DC 20416.
(3) Nonprofit Organization. A nonprofit organization, as used in
paragraph (c) of this section, means any nonprofit organization that:
(i) Has not assigned, granted, conveyed, or licensed, and is under
no obligation under contract or law to assign, grant, convey, or
license, any rights in the invention to any person, concern, or
organization which would not qualify as a person, small business
concern, or a nonprofit organization; and
(ii) Is either:
(A) A university or other institution of higher education located
in any country;
(B) An organization of the type described in section 501(c)(3) of
the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from
taxation under section 501(a) of the Internal Revenue Code (26 U.S.C.
501(a));
(C) Any nonprofit scientific or educational organization qualified
under a nonprofit organization statute of a state of this country (35
U.S.C. 201(i)); or
(D) Any nonprofit organization located in a foreign country which
would qualify as a nonprofit organization under paragraphs
(a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it
were located in this country.
(4) License to a Federal agency. (i) For persons under paragraph
(a)(1) of this section, a license to the Government resulting from a
rights determination under Executive Order 10096 does not constitute a
license so as to prohibit claiming small entity status.
(ii) For small business concerns and nonprofit organizations under
paragraphs (a)(2) and (a)(3) of this section, a license to a Federal
agency resulting from a funding agreement with that agency pursuant to
35 U.S.C. 202(c)(4) does not constitute a license for the purposes of
paragraphs (a)(2)(i) and (a)(3)(i) of this section.
(5) Security Interest. A security interest does not involve an
obligation to transfer rights in the invention for the purposes of
paragraphs (a)(1) through (a)(3) of this section unless the security
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interest is defaulted upon.
* * * * *
. 11. Section 1.47 is amended by revising paragraphs (a) and (b) to read
as follows:
Sec. 1.47 Filing when an inventor refuses to sign or cannot be
reached.
(a) If a joint inventor refuses to join in an application for
patent or cannot be found or reached after diligent effort, the
application may be made by the other inventor on behalf of himself or
herself and the nonsigning inventor. The oath or declaration in such an
application must be accompanied by a petition including proof of the
pertinent facts, the fee set forth in Sec. 1.17(g), and the last known
address of the nonsigning inventor. The nonsigning inventor may
subsequently join in the application by filing an oath or declaration
complying with Sec. 1.63.
(b) Whenever all of the inventors refuse to execute an application
for patent, or cannot be found or reached after diligent effort, a
person to whom an inventor has assigned or agreed in writing to assign
the invention, or who otherwise shows sufficient proprietary interest
in the matter justifying such action, may make application for patent
on behalf of and as agent for all the inventors. The oath or
declaration in such an application must be accompanied by a petition
including proof of the pertinent facts, a showing that such action is
necessary to preserve the rights of the parties or to prevent
irreparable damage, the fee set forth in Sec. 1.17(g), and the last
known address of all of the inventors. An inventor may subsequently
join in the application by filing an oath or declaration complying with
Sec. 1.63.
* * * * *
. 12. Section 1.52 is amended by revising the section heading and
paragraphs (b)(2)(ii), (e)(1), (e)(3)(i) and (e)(3)(ii) to read as
follows:
Sec. 1.52 Language, paper, writing, margins, compact disc
specifications.
* * * * *
(b) * * *
(2) * * *
(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
* * * * *
(e) * * *
(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 Sec. 1.96);
(ii) A "Sequence Listing" (submitted under Sec. 1.821(c)); or
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(iii) Any individual table (see Sec. 1.58) if the table is more
than 50 pages in length, or if the total number of pages of all of 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 Sec. 1.58(c).
* * * * *
(3)(i) Each compact disc must conform to the International
Standards Organization (ISO) 9660 standard, and the contents of each
compact disc must be in compliance with the American Standard Code for
Information Interchange (ASCII). CD-R discs must be finalized so that they
are closed to further writing to the CD-R.
(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.
* * * * *
. 13. Section 1.53 is amended by revising paragraph (e)(2) to read as
follows:
Sec. 1.53 Application number, filing date, and completion of
application.
* * * * *
(e) * * *
(2) Any request for review of a notification pursuant to paragraph
(e)(1) of this section, or a notification that the original application
papers lack a portion of the specification or drawing(s), must be by
way of a petition pursuant to this paragraph accompanied by the fee set
forth in Sec. 1.17(f). In the absence of a timely (Sec. 1.181(f))
petition pursuant to this paragraph, the filing date of an application
in which the applicant was notified of a filing error pursuant to
paragraph (e)(1) of this section will be the date the filing error is
corrected.
* * * * *
. 14. Section 1.57 is added to read as follows:
Sec. 1.57 Incorporation by reference.
(a) 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
Sec. 1.55 for priority of a prior-filed foreign application, or a
claim under Sec. 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 Sec. 1.55 or Sec. 1.78 shall
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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 Sec. 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 this
paragraph 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 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 (Sec. 1.491) or the filing of
an application under 35 U.S.C. 111(a) which claims benefit of the
international application.
(3) If an application is not otherwise entitled to a filing date
under Sec. 1.53(b), the amendment must be by way of a petition
pursuant to this paragraph accompanied by the fee set forth in Sec.
1.17(f).
(b) Except as provided in paragraph (a) 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.
(c) "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
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 the first
paragraph of 35 U.S.C. 112;
(2) Describe the claimed invention in terms that particularly point
out and distinctly claim the invention as required by the second
paragraph of 35 U.S.C. 112; or
(3) Describe the structure, material, or acts that correspond to a
claimed means or step for performing a specified function as required
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by the sixth paragraph of 35 U.S.C. 112.
(d) 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.
(e) 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.
(f) 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.
(g) An incorporation of material by reference that does not comply
with paragraphs (b), (c), or (d) 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 Sec. 1.114(b), or abandonment of the application, whichever
occurs earlier. In addition:
(1) A correction to comply with paragraph (b)(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 (b)(2) of this section is
only permitted for material that was sufficiently described to uniquely
identify the document.
. 15. Section 1.58 is revised to read as follows:
Sec. 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 may only be included in both the drawings
and description portion of the specification if the application was
filed under 35 U.S.C. 371. Claims may contain tables either if
necessary to conform to 35 U.S.C. 112 or if otherwise found to be
desirable.
(b) Tables that are submitted in electronic form (Secs.
1.96(c) and 1.821(c)) must maintain the spatial relationships (e.g.,
alignment of columns and rows) of the table elements when displayed so
as to visually preserve the relational information they convey.
Chemical and mathematical formulae must be encoded to maintain the
proper positioning of their characters when displayed in order to
preserve their intended meaning.
(c) Chemical and mathematical formulae and tables must be presented
in compliance with Sec. 1.52(a) and (b), except that chemical and
mathematical formulae or tables may be placed in a landscape
orientation if they cannot be presented satisfactorily in a portrait
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orientation. Typewritten characters used in such formulae and tables
must be chosen from a block (nonscript) type font or lettering style
having capital letters which should be at least 0.422 cm. (0.166 inch)
high (e.g., preferably Arial, Times Roman, or Courier with a font size
of 12), but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a
font size of 6). A space at least 0.64 cm. (1/4 inch) high should be
provided between complex formulae and tables and the text. Tables
should have the lines and columns of data closely spaced to conserve
space, consistent with a high degree of legibility.
. 16. Section 1.59 is amended by revising paragraph (b) to read as
follows:
Sec. 1.59 Expungement of information or copy of papers in application
file.
* * * * *
(b) An applicant may request that the Office expunge information,
other than what is excluded by paragraph (a)(2) of this section, by
filing a petition under this paragraph. Any petition to expunge
information from an application must include the fee set forth in Sec.
1.17(g) and establish to the satisfaction of the Director that the
expungement of the information is appropriate in which case a notice
granting the petition for expungement will be provided.
* * * * *
. 17. Section 1.63 is amended by revising paragraph (d)(4) to read as
follows:
Sec. 1.63 Oath or declaration.
* * * * *
(d) * * *
(4) Where the power of attorney or correspondence address was
changed during the prosecution of the prior application, the change in
power of attorney or correspondence address must be identified in the
continuation or divisional application. Otherwise, the Office may not
recognize in the continuation or divisional application the change of
power of attorney or correspondence address during the prosecution of
the prior application.
* * * * *
. 18. Section 1.69 is amended by revising paragraph (b) to read as
follows:
Sec. 1.69 Foreign language oaths and declarations.
* * * * *
(b) Unless the text of any oath or declaration is in a language
other than English, or in a form provided in accordance with PCT Rule
4.17(iv), it must be accompanied by an English translation together
with a statement that the translation is accurate, except that in the
case of an oath or declaration filed under Sec. 1.63, the translation
may be filed in the Office no later than two months from the date
applicant is notified to file the translation.
* * * * *
. 19. Section 1.76 is amended by revising paragraphs (a), (b)(4), (c)(2)
and (d) to read as follows:
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Sec. 1.76 Application data sheet.
(a) Application data sheet. An application data sheet is a sheet or
sheets, that may be voluntarily submitted in either provisional or
nonprovisional applications, which contains bibliographic data,
arranged in a format specified by the Office. An application data sheet
must be titled "Application Data Sheet" and must contain all of the
section headings listed in paragraph (b) of this section, with any
appropriate data for each section heading. If an application data sheet
is provided, the application data sheet is part of the provisional or
nonprovisional application for which it has been submitted.
(b) * * *
(4) Representative information. This information includes the
registration number of each practitioner having a power of attorney in
the application (preferably by reference to a customer number).
Providing this information in the application data sheet does not
constitute a power of attorney in the application (see Sec. 1.32).
* * * * *
(c) * * *
(2) Must be titled "Supplemental Application Data Sheet," include
all of the section headings listed in paragraph (b) of this section,
include all appropriate data for each section heading, and must
identify the information that is being changed, preferably with
underlining for insertions, and strike-through or brackets for text
removed.
(d) Inconsistencies between application data sheet and other
documents. For inconsistencies between information that is supplied by
both an application data sheet under this section and other documents.
(1) The latest submitted information will govern notwithstanding
whether supplied by an application data sheet, an amendment to the
specification, a designation of a correspondence address, or by a Sec.
1.63 or Sec. 1.67 oath or declaration, except as provided by paragraph
(d)(3) of this section;
(2) The information in the application data sheet will govern when
the inconsistent information is supplied at the same time by an
amendment to the specification, a designation of correspondence
address, or a Sec. 1.63 or Sec. 1.67 oath or declaration, except as
provided by paragraph (d)(3) of this section;
(3) The oath or declaration under Sec. 1.63 or Sec. 1.67 governs
inconsistencies with the application data sheet in the naming of
inventors (Sec. 1.41(a)(1)) and setting forth their citizenship (35
U.S.C. 115);
(4) The Office will capture bibliographic information from the
application data sheet (notwithstanding whether an oath or declaration
governs the information). Thus, the Office shall generally, for
example, not look to an oath or declaration under Sec. 1.63 to see if
the bibliographic information contained therein is consistent with the
bibliographic information captured from an application data sheet
(whether the oath or declaration is submitted prior to or subsequent to
the application data sheet). Captured bibliographic information derived
from an application
data sheet containing errors may be corrected if applicant submits a
request therefor and a supplemental application data sheet.
. 20. Section 1.78 is amended by revising paragraphs (a)(1), (a)(2)(iii),
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(a)(5)(iii), and (c) to read as follows:
Sec. 1.78 Claiming benefit of earlier filing date and cross-
references to other applications.
(a)(1) A nonprovisional application or international application
designating the United States of America may claim an invention
disclosed in one or more prior-filed copending nonprovisional
applications or international applications designating the United
States of America. In order for an application to claim the benefit of
a prior-filed copending nonprovisional application or international
application designating the United States of America, each prior-filed
application must name as an inventor at least one inventor named in the
later-filed application and disclose the named inventor's invention
claimed in at least one claim of the later-filed application in the
manner provided by the first paragraph of 35 U.S.C. 112. In addition,
each prior-filed application must 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) Entitled to a filing date as set forth in Sec. 1.53(b) or
Sec. 1.53(d) and include the basic filing fee set forth in Sec. 1.16;
or
(iii) Entitled to a filing date as set forth in Sec. 1.53(b) and
have paid therein the processing and retention fee set forth in Sec.
1.21(l) within the time period set forth in Sec. 1.53(f).
(2) * * *
(iii) If the later-filed application is a nonprovisional
application, the reference required by this paragraph must be included
in an application data sheet (Sec. 1.76), or the specification must
contain or be amended to contain such reference in the first
sentence(s) following the title.
* * * * *
(5) * * *
(iii) If the later-filed application is a non-provisional
application, the reference required by this paragraph must be included
in an application data sheet (Sec. 1.76), or the specification must
contain or be amended to contain such reference in the first
sentence(s) following the title.
* * * * *
(c) If an application or a patent under reexamination and at least
one other application naming different inventors are owned by the same
person and contain conflicting claims, and there is no statement of
record indicating that the claimed inventions were commonly owned or
subject to an obligation of assignment to the same person at the time
the later invention was made, the Office may require the assignee to
state whether the claimed inventions were commonly owned or subject to
an obligation of assignment to the same person at the time the later
invention was made, and if not, indicate which named inventor is the
prior inventor. Even if the claimed inventions were commonly owned, or
subject to an obligation of assignment to the same person, at the time
the later invention was made, the conflicting claims may be rejected
under the doctrine of double patenting in view of such commonly owned
or assigned applications or patents under reexamination.
* * * * *
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. 21. Section 1.83 is amended by revising paragraph (a) to read as
follows:
Sec. 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 and sequence listings that are
included in the specification are, except for applications filed under
35 U.S.C. 371, not permitted to be included in the drawings.
* * * * *
. 22. Section 1.84 is amended by revising paragraphs (a)(2) and (c) to
read as follows:
Sec. 1.84 Standards for drawings.
(a) * * *
(2) Color. On rare occasions, color drawings may be necessary as
the only practical medium by which to disclose the subject matter
sought to be patented in a utility or design patent application or the
subject matter of a statutory invention registration. The color
drawings must be of sufficient quality such that all details in the
drawings are reproducible in black and white in the printed patent.
Color drawings are not permitted in international applications (see PCT
Rule 11.13), or in an application, or copy thereof, submitted under the
Office electronic filing system. The Office will accept color drawings
in utility or design patent applications and statutory invention
registrations only after granting a petition filed under this paragraph
explaining why the color drawings are necessary. Any such petition must
include the following:
(i) The fee set forth in Sec. 1.17(h);
(ii) Three (3) sets of color drawings; and
(iii) An amendment to the specification to insert (unless the
specification contains or has been previously amended to contain) the
following language as the first paragraph of the brief description of
the drawings:
The patent or application file contains at least one drawing
executed in color. Copies of this patent or patent application
publication with color drawing(s) will be provided by the Office
upon request and payment of the necessary fee.
* * * * *
(c) Identification of drawings. Identifying indicia should be
provided, and if provided, should include the title of the invention,
inventor's name, and application number, or docket number (if any) if
an application number has not been assigned to the application. If this
information is provided, it must be placed on the front of each sheet
within the top margin. Each drawing sheet submitted after the filing
date of an application must be identified as either "Replacement
Sheet" or "New Sheet" pursuant to Sec. 1.121(d). If a marked-up
copy of any amended drawing figure including annotations indicating the
changes made is filed, such marked-up copy must be clearly labeled as
"Annotated Sheet" pursuant to Sec. 1.121(d)(1).
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* * * * *
. 23. Section 1.85 is amended by revising paragraph (c) to read as
follows:
Sec. 1.85 Corrections to drawings.
* * * * *
(c) If a corrected drawing is required or if a drawing does not
comply with Sec. 1.84 at the time an application is allowed, the
Office may notify the applicant and set a three-month period of time
from the mail date of the notice of allowability within which the
applicant must file a corrected drawing in compliance with Sec. 1.84
to avoid abandonment. This time period is not extendable under Sec.
1.136(a) or Sec. 1.136(b).
. 24. Section 1.91 is amended by adding paragraph (c) to read as follows:
Sec. 1.91 Models or exhibits not generally admitted as part of
application or patent.
* * * * *
(c) Unless the model or exhibit substantially conforms to the
requirements of Sec. 1.52 or Sec. 1.84 under paragraph (a)(1) of this
section, it must be accompanied by photographs that show multiple views
of the material features of the model or exhibit and that substantially
conform to the requirements of Sec. 1.84.
. 25. Section 1.94 is revised to read as follows:
Sec. 1.94 Return of models, exhibits or specimens.
(a) Models, exhibits, or specimens may be returned to the applicant
if no longer necessary for the conduct of business before the Office.
When applicant is notified that a model, exhibit, or specimen is no
longer necessary for the conduct of business before the Office and will
be returned, applicant must arrange for the return of the model,
exhibit, or specimen at the applicant's expense. The Office will
dispose of perishables without notice to applicant unless applicant
notifies the Office upon submission of the model, exhibit or specimen
that a return is desired and makes arrangements for its return promptly
upon notification by the Office that the model, exhibit or specimen is
no longer necessary for the conduct of business before the Office.
(b) Applicant is responsible for retaining the actual model,
exhibit, or specimen for the enforceable life of any patent resulting
from the application. The provisions of this paragraph do not apply to
a model or exhibit that substantially conforms to the requirements of
Sec. 1.52 or Sec. 1.84, where the model or exhibit has been described
by photographs that substantially conform to Sec. 1.84, or where the
model, exhibit or specimen is perishable.
(c) Where applicant is notified, pursuant to paragraph (a) of this
section, of the need to arrange for return of a model, exhibit or
specimen, applicant must arrange for the return within the period set
in such notice, to avoid disposal of the model, exhibit or specimen by
the Office. Extensions of time are available under Sec. 1.136, except
in the case of perishables. Failure to establish that the return of the
item has been arranged for within the period set or failure to have the
item removed from Office storage within a reasonable amount of time
notwithstanding any arrangement for return, will permit the Office to
dispose of the model, exhibit or specimen.
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. 26. Section 1.98 is amended by revising paragraphs (a) and (c) and
removing paragraph (e) to read as follows:
Sec. 1.98 Content of information disclosure statement.
(a) Any information disclosure statement filed under Sec. 1.97
shall include the items listed in paragraphs (a)(1), (a)(2) and (a)(3)
of this section.
(1) A list of all patents, publications, applications, or other
information submitted for consideration by the Office. U.S. patents and
U.S. patent application publications must be listed in a section
separately from citations of other documents. Each page of the list
must include:
(i) The application number of the application in which the
information disclosure statement is being submitted;
(ii) A column that provides a space, next to each document to be
considered, for the examiner's initials; and
(iii) A heading that clearly indicates that the list is an information
disclosure statement.
(2) A legible copy of:
(i) Each foreign patent;
(ii) Each publication or that portion which caused it to be listed,
other than U.S. patents and U.S. patent application publications unless
required by the Office;
(iii) For each cited pending unpublished U.S. application, the
application specification including the claims, and any drawing of the
application, or that portion of the application which caused it to be
listed including any claims directed to that portion; and
(iv) All other information or that portion which caused it to be
listed.
(3)(i) A concise explanation of the relevance, as it is presently
understood by the individual designated in Sec. 1.56(c) most
knowledgeable about the content of the information, of each patent,
publication, or other information listed that is not in the English
language. The concise explanation may be either separate from
applicant's specification or incorporated therein.
(ii) A copy of the translation if a written English-language
translation of a non-English-language document, or portion thereof, is
within the possession, custody, or control of, or is readily available
to any individual designated in Sec. 1.56(c).
* * * * *
(c) When the disclosures of two or more patents or publications
listed in an information disclosure statement are substantively
cumulative, a copy of one of the patents or publications as specified
in paragraph (a) of this section may be submitted without copies of the
other patents or publications, provided that it is stated that these
other patents or publications are cumulative.
* * * * *
. 27. Section 1.102 is amended by revising paragraph (c) to read as
follows:
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Sec. 1.102 Advancement of examination.
* * * * *
(c) A petition to make an application special may be filed without
a fee if the basis for the petition is:
(1) The applicant's age or health; or
(2) That the invention will materially:
(i) Enhance the quality of the environment;
(ii) Contribute to the development or conservation of energy
resources; or
(iii) Contribute to countering terrorism.
* * * * *
. 28. Section 1.103 is amended by revising paragraph (a)(2) to read as
follows:
Sec. 1.103 Suspension of action by the Office.
(a) * * *
(2) The fee set forth in Sec. 1.17(g), unless such cause is the
fault of the Office.
* * * * *
. 29. Section 1.105 is amended by revising paragraph (a)(3) and by adding
new paragraphs (a)(1)(viii) and (a)(4) to read as follows:
Sec. 1.105 Requirements for information.
(a)(1) * * *
(viii) Technical information known to applicant. Technical
information known to applicant concerning the related art, the
disclosure, the claimed subject matter, other factual information
pertinent to patentability, or concerning the accuracy of the
examiner's stated interpretation of such items.
* * * * *
(3) Requirements for factual information known to applicant may be
presented in any appropriate manner, for example:
(i) A requirement for factual information;
(ii) Interrogatories in the form of specific questions seeking
applicant's factual knowledge; or
(iii) Stipulations as to facts with which the applicant may agree
or disagree.
(4) Any reply to a requirement for information pursuant to this
section that states either that the information required to be
submitted is unknown to or is not readily available to the party or
parties from which it was requested may be accepted as a complete
reply.
* * * * *
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. 30. Section 1.111 is amended by revising paragraph (a)(2) to read as
follows:
Sec. 1.111 Reply by applicant or patent owner to a non-final Office
action.
(a) * * *
(2) Supplemental replies. (i) A reply that is supplemental to a reply
that in compliance with Sec. 1.111(b) will not be entered as a matter of
right except as provided in paragraph (a)(2)(ii) of this section. The Office
may enter a supplemental reply if the supplemental reply is clearly limited
to:
(A) Cancellation of a claim(s);
(B) Adoption of the examiner suggestion(s);
(C) Placement of the application in condition for allowance;
(D) Reply to an Office requirement made after the first reply was
filed;
(E) Correction of informalities (e.g., typographical errors); or
(F) Simplification of issues for appeal.
(ii) A supplemental reply will be entered if the supplemental reply
is filed within the period during which action by the Office is
suspended under Sec. 1.103(a) or (c).
* * * * *
. 31. Section 1.115 is revised to read as follows:
Sec. 1.115 Preliminary amendments.
(a) A preliminary amendment is an amendment that is received in the
Office (Sec. 1.6) on or before the mail date of the first Office
action under Sec. 1.104. The patent application publication may
include preliminary amendments (Sec. 1.215(a)).
(1) A preliminary amendment that is present on the filing date of
an application is part of the original disclosure of the application.
(2) A preliminary amendment filed after the filing date of the
application is not part of the original disclosure of the application.
(b) A preliminary amendment in compliance with Sec. 1.121 will be
entered unless disapproved by the Director.
(1) A preliminary amendment seeking cancellation of all the claims
without presenting any new or substitute claims will be disapproved.
(2) A preliminary amendment may be disapproved if the preliminary
amendment unduly interferes with the preparation of a first Office
action in an application. Factors that will be considered in
disapproving a preliminary amendment include:
(i) The state of preparation of a first Office action as of the
date of receipt (Sec. 1.6) of the preliminary amendment by the Office;
and
(ii) The nature of any changes to the specification or claims that
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would result from entry of the preliminary amendment.
(3) A preliminary amendment will not be disapproved under (b)(2) of
this section if it is filed no later than:
(i) Three months from the filing date of an application under Sec.
1.53(b);
(ii) The filing date of a continued prosecution application under
Sec. 1.53(d); or
(iii) Three months from the date the national stage is entered as
set forth in Sec. 1.491 in an international application.
(4) The time periods specified in paragraph (b)(3) of this section
are not extendable.
. 32. Section 1.121 is amended by revising paragraph (d) to read as
follows:
Sec. 1.121 Manner of making amendments in applications.
* * * * *
(d) Drawings: One or more application drawings shall be amended in
the following manner: Any changes to an application drawing must be in
compliance with Sec. 1.84 and must be submitted on a replacement sheet
of drawings which shall be an attachment to the amendment document and,
in the top margin, labeled "Replacement Sheet." Any replacement sheet
of drawings shall include all of the figures appearing on the immediate
prior version of the sheet, even if only one figure is amended. Any new
sheet of drawings containing an additional figure must be labeled in
the top margin as "New Sheet." All changes to the drawings shall be
explained, in detail, in either the drawing amendment or remarks
section of the amendment paper.
(1) A marked-up copy of any amended drawing figure, including
annotations indicating the changes made, may be included. The marked-up
copy must be clearly labeled as "Annotated Sheet" and must be
presented in the amendment or remarks section that explains the change
to the drawings.
(2) A marked-up copy of any amended drawing figure, including
annotations indicating the changes made, must be provided when required
by the examiner.
* * * * *
. 33. Section 1.131 is amended by revising paragraph (b) to read as
follows:
Sec. 1.131 Affidavit or declaration of prior invention.
* * * * *
(b) The showing of facts shall be such, in character and weight, as
to establish reduction to practice prior to the effective date of the
reference, or conception of the invention prior to the effective date
of the reference coupled with due diligence from prior to said date to
a subsequent reduction to practice or to the filing of the application.
Original exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their
absence must be satisfactorily explained.
. 34. Section 1.136 is amended by revising paragraph (b) to read as
follows:
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Sec. 1.136 Extensions of time.
* * * * *
(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
affect 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. See Sec. 1.304 for extensions of time to appeal
to the U.S. Court of Appeals for the Federal Circuit or to commence a
civil action; Sec. 1.645 for extensions of time in interference
proceedings; Sec. 1.550(c) for extensions of time in ex parte
reexamination proceedings; and Sec. 1.956 for extensions of time in
inter partes reexamination proceedings. Any request under this section
must be accompanied by the petition fee set forth in Sec. 1.17(g).
* * * * *
. 35. Section 1.137 is amended by revising paragraph (d)(3) to read as
follows:
Sec. 1.137 Revival of abandoned application, terminated reexamination
proceedings, or lapsed patent.
* * * * *
(d) * * *
(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 lapsed patents, to reissue applications, or to
reexamination proceedings.
* * * * *
. 36. Section 1.165 is amended by revising paragraph (b) to read as
follows:
Sec. 1.165 Plant drawings.
* * * * *
(b) The drawings may be in color. The drawing must be in color if
color is a distinguishing characteristic of the new variety. Two copies
of color drawings or photographs must be submitted.
. 37. Section 1.173 is amended by revising paragraph (b) introductory
text to read as follows:
Sec. 1.173 Reissue specification, drawings, and amendments.
* * * * *
(b) Making amendments in a reissue application. An amendment in a
reissue application is made either by physically incorporating the changes
into the specification when the application is filed, or by a separate
amendment paper. If amendment is made by incorporation, markings
pursuant to paragraph (d) of this section must be used. If amendment is
made by an amendment paper, the paper must direct that specified
changes be made, as follows:
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* * * * *
. 38. Section 1.175 is amended by adding a new paragraph (e) to read as
follows:
Sec. 1.175 Reissue oath or declaration.
* * * * *
(e) The filing of any continuing reissue application which does not
replace its parent reissue application must include an oath or
declaration which, pursuant to paragraph (a)(1) of this section,
identifies at least one error in the original patent which has not been
corrected by the parent reissue application or an earlier reissue
application. All other requirements relating to oaths or declarations
must also be met.
. 39. Section 1.178 is amended by revising paragraph (a) to read as
follows:
Sec. 1.178 Original patent; continuing duty of applicant.
(a) The application for reissue of a patent shall constitute an
offer to surrender that patent, and the surrender shall take effect
upon reissue of the patent. Until a reissue application is granted, the
original patent shall remain in effect.
* * * * *
Sec. 1.179 [Removed and Reserved]
. 40. Section 1.179 is removed and reserved.
. 41. Section 1.182 is revised to read as follows:
Sec. 1.182 Questions not specifically provided for.
All situations not specifically provided for in the regulations of
this part will be decided in accordance with the merits of each
situation by or under the authority of the Director, subject to such
other requirements as may be imposed, and such decision will be
communicated to the interested parties in writing. Any petition seeking
a decision under this section must be accompanied by the petition fee
set forth in Sec. 1.17(f).
. 42. Section 1.183 is revised to read as follows:
Sec. 1.183 Suspension of rules.
In an extraordinary situation, when justice requires, any
requirement of the regulations in this part which is not a requirement
of the statutes may be suspended or waived by the Director or the
Director's designee, sua sponte, or on petition of the interested
party, subject to such other requirements as may be imposed. Any
petition under this section must be accompanied by the petition fee set
forth in Sec. 1.17(f).
. 43. Section 1.215 is amended by revising paragraphs (a) and (c) to read
as follows:
Sec. 1.215 Patent application publication.
(a) The publication of an application under 35 U.S.C. 122(b) shall
include a patent application publication. The date of publication shall
be indicated on the patent application publication. The patent
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application publication will be based upon the specification and
drawings deposited on the filing date of the application, as well as
the executed oath or declaration submitted to complete the application.
The patent application publication may also be based upon amendments to
the specification (other than the abstract or the claims) that are
reflected in a substitute specification under Sec. 1.125(b),
amendments to the abstract under Sec. 1.121(b), amendments to the
claims that are reflected in a complete claim listing under Sec.
1.121(c), and amendments to the drawings under Sec. 1.121(d), provided
that such substitute specification or amendment is submitted in
sufficient time to be entered into the Office file wrapper of the
application before technical preparations for publication of the
application have begun. Technical preparations for publication of an
application generally begin four months prior to the projected date of
publication. The patent application publication of an application that
has entered the national stage under 35 U.S.C. 371 may also include
amendments made during the international stage. See paragraph (c) of
this section for publication of an application based upon a copy of the
application submitted via the Office electronic filing system.
* * * * *
(c) At applicant's option, the patent application publication will
be based upon the copy of the application (specification, drawings, and
oath or declaration) as amended, provided that applicant supplies such
a copy in compliance with the Office electronic filing system
requirements within one month of the mailing date of the first Office
communication that includes a confirmation number for the application,
or fourteen months of the earliest filing date for which a benefit is
sought under title 35, United States Code, whichever is later.
* * * * *
. 44. Section 1.291 is revised to read as follows:
Sec. 1.291 Protests by the public against pending applications.
(a) A protest may be filed by a member of the public against a
pending application, and it will be matched with the application file
if it adequately identifies the patent application. A protest submitted
within the time frame of paragraph (b) of this section, which is not
matched, or not matched in a timely manner to permit review by the
examiner during prosecution, due to inadequate identification, may not
be entered and may be returned to the protestor where practical, or, if
return is not practical, discarded.
(b) The protest will be entered into the record of the application
if, in addition to complying with paragraph (c) of this section, the
protest has been served upon the applicant in accordance with Sec.
1.248, or filed with the Office in duplicate in the event service is
not possible; and, except for paragraph (b)(1) of this section, the
protest was filed prior to the date the application was published under
Sec. 1.211, or a notice of allowance under Sec. 1.311 was mailed,
whichever occurs first.
(1) If a protest is accompanied by the written consent of the
applicant, the protest will be considered if the protest is matched
with the application in time to permit review during prosecution.
(2) A statement must accompany a protest that it is the first
protest submitted in the application by the real party in interest who
is submitting the protest; or the protest must comply with paragraph
(c)(5) of this section. This section does not apply to the first
protest filed in an application.
(c) In addition to compliance with paragraphs (a) and (b) of this
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section, a protest must include:
(1) A listing of the patents, publications, or other information
relied upon;
(2) A concise explanation of the relevance of each item listed
pursuant to paragraph (c)(1) of this section;
(3) A copy of each listed patent, publication, or other item of
information in written form, or at least the pertinent portions
thereof;
(4) An English language translation of all the necessary and
pertinent parts of any non-English language patent, publication, or
other item of information relied upon; and
(5) If it is a second or subsequent protest by the same real party
in interest, an explanation as to why the
issue(s) raised in the second or subsequent protest are significantly
different than those raised earlier and why the significantly different
issue(s) were not presented earlier, and a processing fee under Sec.
1.17(i) must be submitted.
(d) A member of the public filing a protest in an application under
this section will not receive any communication from the Office
relating to the protest, other than the return of a self-addressed
postcard which the member of the public may include with the protest in
order to receive an acknowledgment by the Office that the protest has
been received. The limited involvement of the member of the public
filing a protest pursuant to this section ends with the filing of the
protest, and no further submission on behalf of the protestor will be
considered, unless the submission is made pursuant to paragraph (c)(5)
of this section.
(e) Where a protest raising inequitable conduct issues satisfies
the provisions of this section for entry, it will be entered into the
application file, generally without comment on the inequitable conduct
issues raised in it.
(f) In the absence of a request by the Office, an applicant has no
duty to, and need not, reply to a protest.
(g) Protests that fail to comply with paragraphs (b) or (c) of this
section may not be entered, and if not entered, will be returned to the
protestor, or discarded, at the option of the Office.
. 45. Section 1.295 is amended by revising paragraph (a) to read as
follows:
Sec. 1.295 Review of decision finally refusing to publish a statutory
invention registration.
(a) Any requester who is dissatisfied with the final refusal to
publish a statutory invention registration for reasons other than
compliance with 35 U.S.C. 112 may obtain review of the refusal to
publish the statutory invention registration by filing a petition to
the Director accompanied by the fee set forth in Sec. 1.17(g) within
one month or such other time as is set in the decision refusing
publication. Any such petition should comply with the requirements of
Sec. 1.181(b). The petition may include a request that the petition
fee be refunded if the final refusal to publish a statutory invention
registration for reasons other than compliance with 35 U.S.C. 112 is
determined to result from an error by the Patent and Trademark Office.
* * * * *
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. 46. Section 1.296 is revised to read as follows:
Sec. 1.296 Withdrawal of request for publication of statutory
invention registration.
A request for a statutory invention registration, which has been
filed, may be withdrawn prior to the date on which the notice of the
intent to publish a statutory invention registration issued pursuant to
Sec. 1.294(c) by filing a request to withdraw the request for
publication of a statutory invention registration. The request to
withdraw may also include a request for a refund of any amount paid in
excess of the application filing fee and a handling fee of $130.00
which will be retained. Any request to withdraw the request for
publication of a statutory invention registration filed on or after the
date on which the notice of intent to publish issued pursuant to Sec.
1.294(c) must be in the form of a petition accompanied by the fee set
forth in Sec. 1.17(g).
. 47. Section 1.311 is amended by revising paragraph (b) to read as
follows:
Sec. 1.311 Notice of allowance.
* * * * *
(b) An authorization to charge the issue fee or other post-
allowance fees set forth in Sec. 1.18 to a deposit account may be
filed in an individual application only after mailing of the notice of
allowance. The submission of either of the following after the mailing
of a notice of allowance will operate as a request to charge the
correct issue fee or any publication fee due to any deposit account
identified in a previously filed authorization to charge such fees:
(1) An incorrect issue fee or publication fee; or
(2) A fee transmittal form (or letter) for payment of issue fee or
publication fee.
. 48. Section 1.324 is amended by revising paragraph (a) and the
introductory text of paragraph (b) to read as follows:
Sec. 1.324 Correction of inventorship in patent, pursuant to 35
U.S.C. 256.
(a) Whenever through error a person is named in an issued patent as
the inventor, or through error an inventor is not named in an issued
patent and such error arose without any deceptive intention on his or
her part, the Director, pursuant to 35 U.S.C. 256, may, on application
of all the parties and assignees, or on order of a court before which
such matter is called in question, issue a certificate naming only the
actual inventor or inventors. A request to correct inventorship of a
patent involved in an interference must comply with the requirements of
this section and must be accompanied by a motion under Sec. 1.634.
(b) Any request to correct inventorship of a patent pursuant to
paragraph (a) of this section must be accompanied by:
* * * * *
. 49. Section 1.377 is amended by revising paragraph (b) to read as
follows:
Sec. 1.377 Review of decision refusing to accept and record payment
of a maintenance fee filed prior to expiration of patent.
* * * * *
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(b) Any petition under this section must be filed within two months
of the action complained of, or within such other time as may be set in
the action complained of, and must be accompanied by the fee set forth
in Sec. 1.17(g). The petition may include a request that the petition
fee be refunded if the refusal to accept and record the maintenance fee
is determined to result from an error by the Patent and Trademark
Office.
* * * * *
. 50. Section 1.378 is amended by revising paragraph (e) to read as
follows:
Sec. 1.378 Acceptance of delayed payment of maintenance fee in
expired patent to reinstate patent.
* * * * *
(e) Reconsideration of a decision refusing to accept a maintenance
fee upon petition filed pursuant to paragraph (a) of this section may
be obtained by filing a petition for reconsideration within two months
of, or such other time as set in the decision refusing to accept the
delayed payment of the maintenance fee. Any such petition for
reconsideration must be accompanied by the petition fee set forth in
Sec. 1.17(f). After the decision on the petition for reconsideration,
no further reconsideration or review of the matter will be undertaken
by the Director. If the delayed payment of the maintenance fee is not
accepted, the maintenance fee and the surcharge set forth in Sec.
1.20(i) 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. Any petition fee under
this section will not be refunded unless the refusal to accept and
record the maintenance fee is determined to result from an error by the
Patent and Trademark Office.
. 51. Section 1.550 is amended by revising paragraph (c) to read as
follows:
Sec. 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 will be extended only for sufficient cause and
for a reasonable time specified. Any request for such extension must be
filed on or before the day on which action by the patent owner is due,
but in no case will the mere filing of a request effect any extension.
Any request for such extension must be accompanied by the petition fee
set forth in Sec. 1.17(g). See Sec. 1.304(a) 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.
* * * * *
. 52. Section 1.741 is amended by revising paragraph (b) to read as
follows:
Sec. 1.741 Complete application given a filing date; petition
procedure.
* * * * *
(b) If an application for extension of patent term is incomplete
under this section, the Office will so notify the applicant. If
applicant requests review of a notice that an application is
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incomplete, or review of the filing date accorded an application under
this section, applicant must file a petition pursuant to this paragraph
accompanied by the fee set forth in Sec. 1.17(f) within two months of
the mail date of the notice that the application is incomplete, or the
notice according the filing date complained of. Unless the notice
indicates otherwise, this time period may be extended under the
provisions of Sec. 1.136.
. 53. Section 1.956 is revised to read as follows:
Sec. 1.956 Patent owner extensions of time in inter partes
reexamination.
The time for taking any action by a patent owner in an inter partes
reexamination proceeding will be extended only for sufficient cause and
for a reasonable time specified. Any request for such extension must be
filed on or before the day on which action by the patent owner is due,
but in no case will the mere filing of a request effect any extension.
Any request for such extension must be accompanied by the petition fee
set forth in Sec. 1.17(g). See Sec. 1.304(a) for extensions of time
for filing a notice of appeal to the U.S. Court of Appeals for the
Federal Circuit.
PART 5 - SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND
FILE APPLICATIONS IN FOREIGN COUNTRIES
. 54. The authority citation for 37 CFR part 5 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 41, 181-188, as amended by the
Patent Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418,
102 Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C.
2751 et seq.; the Atomic Energy Act of 1954, as amended, 42 U.S.C.
2011 et seq.; the Nuclear Non Proliferation Act of 1978, 22 U.S.C.
3201 et seq.; and the delegations in the regulations under these
Acts to the Director (15 CFR 370.10(j), 22 CFR 125.04, and 10 CFR
810.7).
. 55. Section 5.12 is amended by revising paragraph (b) to read as
follows:
Sec. 5.12 Petition for license.
* * * * *
(b) A petition for license must include the fee set forth in Sec.
1.17(g) of this chapter, the petitioner's address, and full
instructions for delivery of the requested license when it is to be
delivered to other than the petitioner. The petition should be
presented in letter form.
* * * * *
. 56. Section 5.15 is amended by revising paragraph (c) to read as
follows:
Sec. 5.15 Scope of license.
* * * * *
(c) A license granted under Sec. 5.12(b) pursuant to Sec. 5.13 or
Sec. 5.14 shall have the scope indicated in paragraph (a) of this
section, if it is so specified in the license. A petition, accompanied
by the required fee (Sec. 1.17(g) of this chapter), may also be filed
to change a license having the scope indicated in paragraph (b) of this
section to a license having the scope indicated in paragraph (a) of
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this section. No such petition will be granted if the copy of the
material filed pursuant to Sec. 5.13 or any corresponding United
States application was required to be made available for inspection
under 35 U.S.C. 181. The change in the scope of a license will be
effective as of the date of the grant of the petition.
* * * * *
. 57. Section 5.25 is amended by revising paragraph (a)(4), redesignating
paragraph (b) as paragraph (c), and adding a new paragraph (b) to read
as follows:
Sec. 5.25 Petition for retroactive license.
(a) * * *
(4) The required fee (Sec. 1.17(g) of this chapter).
(b) The explanation in paragraph (a) of this section must include a
showing of facts rather than a mere allegation of action through error
and without deceptive intent. The showing of facts as to the nature of
the error should include statements by those persons having personal
knowledge of the acts regarding filing in a foreign country and should
be accompanied by copies of any necessary supporting documents such as
letters of transmittal or instructions for filing. The acts which are
alleged to constitute error without deceptive intent should cover the
period leading up to and including each of the proscribed foreign
filings.
* * * * *
PART 10 - REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE
. 58. The authority citation for 37 CFR part 10 continues to read as
follows:
Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2, 6, 32, 41.
. 59. Section 10.18 is amended by revising paragraph (a) to read as
follows:
Sec. 10.18 Signature and certificate for correspondence filed in the
Patent and Trademark Office.
(a) For all documents filed in the Office in patent, trademark, and
other non-patent matters, except for correspondence that is required to
be signed by the applicant or party, each piece of correspondence filed
by a practitioner in the Patent and Trademark Office must bear a
signature by such practitioner complying with the provisions of Sec.
1.4(d), Sec. 1.4(e), or Sec. 2.193(c)(1) of this chapter.
* * * * *
PART 41 - PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
. 60. The authority citation for 37 CFR Part 41 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134,
135.
. 61. Section 41.20 is amended by revising paragraph (a) to read as
follows:
Sec. 41.20 Fees.
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(a) Petition fee. The fee for filing a petition under this part is:
$400.00
* * * * *
PART 104 - LEGAL PROCESSES
. 62. The authority citation for 37 CFR part 104 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 10, 23, 25; 44 U.S.C. 3101, except
as otherwise indicated.
. 63. Section 104.3 is revised to read as follows:
Sec. 104.3 Waiver of rules.
In extraordinary situations, when the interest of justice requires,
the General Counsel may waive or suspend the rules of this part, sua
sponte or on petition of an interested party to the Director, subject
to such requirements as the General Counsel may impose. Any such
petition must be accompanied by a petition fee of $130.00.
September 9, 2004 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and
Director of the United States
Patent and Trademark Office
[1287 OG 67]