(295) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 1 and 5
RIN 0651-AB05
Changes to Implement Eighteen-Month Publication of
Patent Applications
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
revising the rules of practice in patent cases to implement certain
provisions of the American Inventors Protection Act of 1999. These
provisions of the American Inventors Protection Act of 1999 provide,
with certain exceptions, for the publication of pending patent
applications (other than design applications) at eighteen months from
the earliest claimed priority date.
DATES: Effective Date: November 29, 2000.
Applicability Date: Sections 1.103(d), 1.211, 1.213, 1.215, 1.217,
1.219, and 1.221, and the changes to §§ 1.14, 1.55, 1.72, 1.78, 1.85,
1.99, 1.137, 1.138, and 1.311, apply to any patent application filed on
or after November 29, 2000, and to any patent application in which
applicant requests voluntary publication.
FOR FURTHER INFORMATION CONTACT: Concerning this final rule: Robert W.
Bahr, Karin L. Tyson, or Robert A. Clarke by telephone at (703)
308-6906, or by mail addressed to: Box Comments - Patents, Assistant
Commissioner for Patents, Washington, D.C. 20231, or by facsimile to
(703) 872-9411, marked to the attention of Robert W. Bahr.
Concerning the electronic filing system (EFS): Jay Lucas or Michael
Lewis by electronic mail message via the Internet addressed to
jay.lucas@uspto.gov.
SUPPLEMENTARY INFORMATION: The American Inventors Protection Act of 1999
(Title IV of the Intellectual Property and Communications Omnibus Reform
Act of 1999 (S. 1948) as introduced in the 106th Congress on November
17, 1999) was incorporated and enacted into law on November 29, 1999, by
section 1000(a)(9), Division B, of Public Law 106 - 113, 113 Stat. 1501
(1999). The American Inventors Protection Act of 1999 contains a number
of changes to title 35, United States Code. This notice revises the
rules of practice to implement the provisions of sections 4501 through
4508 (Subtitle E, Domestic Publication of Patent Applications Published
Abroad) of the American Inventors Protection Act of 1999. These
provisions of the American Inventors Protection Act of 1999 provide
that, with certain exceptions, applications for patent shall be
published promptly 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 (`eighteen-month publication').
Section 4502 of the American Inventors Protection Act of 1999 amends 35
U.S.C. 122 (35 U.S.C. 122(b)) to provide that applications for patent
shall be published promptly 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, and that an application may be published
earlier than the end of such eighteen-month period at the request of the
applicant. Section 4502 of the American Inventors Protection Act of 1999
(35 U.S.C. 122(b)) also contains a number of exceptions to eighteen-
month publication of patent applications.
First: An application shall not be published if it is: (1) No longer
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pending; (2) subject to a secrecy order under 35 U.S.C. 181 or an
application for which publication or disclosure would be detrimental to
national security; (3) a provisional application under 35 U.S.C. 111(b);
or (4) an application for a design patent under 35 U.S.C. chapter 16.
See 35 U.S.C. 122(b)(2)(A) and (d).
Second: An application shall not be published if an applicant makes a
request upon filing, certifying that the invention disclosed in the
application has not and will not be the subject of an application filed
in another country, or under a multilateral international agreement,
that requires eighteen-month publication. An applicant may rescind such
a request at any time. In addition, an applicant who has made such a
request but who subsequently files an application directed to the
invention disclosed in the application filed in the Office in a foreign
country, or under a multilateral international agreement, that requires
eighteen-month publication, must notify the Office of such filing within
forty-five days after the date of the filing of such foreign or
international application. An applicant’s failure to timely provide such
a notice to the Office will result in abandonment of the application
(subject to revival if it is shown that the delay in submitting the
notice was unintentional). If an applicant rescinds such a request or
notifies the Office that an application was filed in a foreign country,
or under a multilateral international agreement, that requires eighteen-
month publication, the application is subject to eighteen-month
publication. See 35 U.S.C. 122(b)(2)(B)(i)-(iv).
Third: If an applicant has filed applications in one or more foreign
countries, directly or through a multilateral international agreement,
and such foreign-filed applications or the description of the invention
in such foreign-filed applications is less extensive than the
application or description of the invention in the application filed in
the Office, the applicant may submit a redacted copy of the application
filed in the Office eliminating any part or description of the invention
in such application that is not also contained in any of the
corresponding applications filed in a foreign country. If the redacted
copy of the application is received within sixteen months after the
earliest filing date for which a benefit is sought under title 35,
United States Code, the Office may publish only the redacted copy of the
application. See 35 U.S.C. 122(b)(2)(B)(v).
Section 4503(a) of the American Inventors Protection Act of 1999 amends
35 U.S.C. 119(b) to provide that no application for patent shall be
entitled to a right of priority under 35 U.S.C. 119(a)-(d) unless a
claim is filed in the Office, identifying the foreign application by
specifying the application number of that foreign application, the
intellectual property authority or country in or for which the
application was filed, and the date of filing the application, at such
time during the pendency of the application as required by the Office.
Section 4503(a) of the American Inventors Protection Act of 1999 also
amends 35 U.S.C. 119(b) to provide that the Office may consider the
failure of the applicant to timely file a claim for priority as a waiver
of any such claim, and may establish procedures, including the payment
of a surcharge, to accept an unintentionally delayed claim under 35
U.S.C. 119(b)-(d). Section 4503(a) of the American Inventors Protection
Act of 1999 also amends 35 U.S.C. 119(b) to authorize the Office to
determine whether to require a certified copy of the original foreign
application.
Section 4503(b)(1) of the American Inventors Protection Act of 1999
amends 35 U.S.C. 120 to provide that no application shall be entitled to
the benefit of an earlier filed application under 35 U.S.C. 120 unless
an amendment containing the specific reference to the earlier filed
application is submitted at such time during the pendency of the
application as required by the Office. Section 4503(b)(1) of the
American Inventors Protection Act of 1999 also amends 35 U.S.C. 120 to
provide that the Office may consider the failure to submit such an
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amendment within that time period as a waiver of any benefit under 35
U.S.C. 120, and may establish procedures, including the payment of a
surcharge, to accept an unintentionally delayed submission of an
amendment under 35 U.S.C. 120.
Section 4503(b)(2) of the American Inventors Protection Act of 1999
amends 35 U.S.C. 119(e) to provide that no application shall be entitled
to the benefit of an earlier filed provisional application under 35
U.S.C. 119(e) unless an amendment containing the specific reference to
the earlier filed provisional application is submitted at such time
during the pendency of the application as required by the Office.
Section 4503(b)(2) of the American Inventors Protection Act of 1999 also
amends 35 U.S.C. 119(e) to provide that the Office may consider the
failure to submit such an amendment within that time period as a waiver
of any benefit under 35 U.S.C. 119(e), and the Office may establish
procedures, including the payment of a surcharge, to accept an
unintentionally delayed submission of an amendment under 35 U.S.C.
119(e) during the pendency of the application.
Case law has indicated that, in certain instances, priority claims may
be perfected after issuance. The U.S. Court of Appeals for the District
of Columbia has held that the equitable or remedial provisions of 35
U.S.C. 251 authorize patentees to correct or perfect a claim for
priority under 35 U.S.C. 119 in an issued patent by reissue. See Brenner
v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968). The
U.S. District Court for the District of Columbia applied this rationale
to permit a patentee to amend an intermediate abandoned application in a
chain of applications for which a benefit was claimed under 35 U.S.C.
120 to include the specific reference required by 35 U.S.C. 120. See
Sampson v. Commissioner, 195 USPQ 136 (D.D.C. 1976). In appropriate
circumstances, the Office has permitted patentees to perfect claims
under 35 U.S.C. 119, 120, or 121 in an issued patent by certificate of
correction under 35 U.S.C. 255 and 1.323. See In re Schuurs, 218 USPQ
443 (Comm’r Pat. 1983); In re Lambrech, 202 USPQ 620 (Comm’r Pat. 1976);
In re Van Esdonk, 187 USPQ 671 (Comm’r Pat. 1975).
The amendments to 35 U.S.C. 119 and 120 provide that the Office may
consider the failure of the applicant to file a timely claim under 35
U.S.C. 119 or 120 as a waiver of any such claim. Sections 1.55 and 1.78
implement these amendments to 35 U.S.C. 119 and 120 by specifying time
periods during the pendency of the application within which claims under
35 U.S.C. 119(a)-(d), 119(e), and 120 must be stated or are considered
waived. 35 U.S.C. 119(b), 119(e), and 120 each provide that the Office
may establish procedures to accept an unintentionally delayed submission
of a claim under 35 U.S.C. 119(b), 119(e), or 120 (respectively);
however, 35 U.S.C. 119(e) requires that such unintentionally delayed
claim (amendment) be submitted during the pendency of the application.
Thus, a claim under 35 U.S.C. 119(a)-(d) or 120 for the benefit of a
prior application may be added (or corrected) in an issued patent by
reissue or certificate of correction (assuming the conditions for
reissue or certificate of correction are otherwise met) by submitting
such untimely claim under the procedures established in § 1.55 or § 1.78
(including payment of any applicable surcharge). A claim under 35 U.S.C.
119(e) for the benefit of a prior provisional application, however, must
be added or corrected during the pendency of the application.
Section 4504 of the American Inventors Protection Act of 1999 amends 35
U.S.C. 154 to provide that, subject to a number of conditions, a patent
includes the right to obtain a reasonable royalty during the period
beginning on the date of publication of the application for such patent
under 35 U.S.C. 122(b) (or the date of publication under Patent
Cooperation Treaty (PCT) Article 21(2) of an international application
designating the United States) and ending on the date the patent is
issued ('provisional rights').
Section 4505 of the American Inventors Protection Act of 1999 amends 35
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U.S.C. 102(e) to, inter alia, set forth the conditions under which an
application published under 35 U.S.C. 122(b) or under PCT Article 21(2)
is prior art as of its filing date.
Section 4506 of the American Inventors Protection Act of 1999 provides
that the Office shall recover the cost of early publication required by
35 U.S.C. 122(b) by charging a separate publication fee after a notice
of allowance is given under 35 U.S.C. 151.
Section 4508 of the American Inventors Protection Act of 1999 provides
that its eighteen-month publication provisions take effect on November
29, 2000, and apply to applications (other than for a design patent)
filed under 35 U.S.C. 111(a) on or after November 29, 2000, and to
applications in compliance with 35 U.S.C. 371 that resulted from
international applications filed under 35 U.S.C. 363 on or after
November 29, 2000.
The Office published a notice proposing changes to the rules of practice
to implement the provisions of 4501 through 4508 (Subtitle E,
Domestic Publication of Patent Applications Published Abroad) of the
American Inventors Protection Act of 1999. See Changes to Implement
Eighteen-Month Publication of Patent Applications, Notice of Proposed
Rulemaking, 65 FR 17946 (Apr. 5, 2000), 1233 Off. Gaz. Pat. Office 121
(Apr. 25, 2000) (notice of proposed rulemaking). This final rule adopts
changes to the rules of practice to implement the provisions of 4501
through 4508 of the American Inventors Protection Act of 1999.
The Office’s planning approach to eighteen-month publication includes:
(1) Disseminating a publication document (patent application
publication) for each published application; and (2) providing (under
conditions set forth below) any member of the public with access to the
file wrapper and contents of each published application (which may be
limited to a copy of the file wrapper and contents of the application).
Patent application publication: The patent application publication will
include a front page containing information similar to that contained on
the front page of a patent, and the drawings (if any) and specification
(including claims) of the published application. To create the patent
application publication, the Office plans to use its Patent Application
Capture and Review (PACR) system to create an electronic database (PACR
database) containing: (1) The application papers and drawings deposited
on the filing date of the application; and (2) any subsequently filed
application papers and drawings needed to create the patent application
publication. The application information contained in the Office’s PACR
database will be used to create the patent application publication,
unless the applicant provides a copy of the application via the Office’s
electronic filing system (EFS) to be used to create the patent
application publication (discussed below).
The Office currently uses the PACR database as the Office’s record of
the application papers submitted on the filing date of the application
(i.e., the original disclosure of the invention). The application papers
submitted on the filing date of the application, however, may not
include the content needed (e.g., an abstract), and the application
papers or drawings may not be of sufficient quality (e.g., papers not
having sufficient contrast to permit electronic capture by digital
imaging and conversion to text by optical character recognition or
drawings not having sufficient quality) to be used to create a patent
application publication. Since the patent application publication will
be a prior art document (and, in most cases, the prior art document
having the earliest effective date under 35 U.S.C. 102(a), (b), and
(e)), the Office must consider the usability of the patent application
publication as a prior art document when determining what drawing
quality is needed to create the patent application publication.
If the application papers submitted on the filing date of the
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application do not include the content needed, or the application papers
or drawings are not of sufficient quality to be used, to create a patent
application publication, the Office of Initial Patent Examination (OIPE)
will issue a notice requiring that the applicant submit the needed
application content, or application papers or drawings of sufficient
quality, for use in creating a patent application publication. The
applicant’s reply to that notice (application papers and drawings needed
to create the patent application publication) will then be added to the
PACR database. The Office must separate the application papers and
drawings deposited on the filing date of the application and the
subsequently filed application papers and drawings in its PACR database
because the PACR database is also used to create any requested certified
copy of the application (which may only include the application papers
and drawings deposited on the filing date of the application).
Initially, an application filed under 35 U.S.C. 111(a) (nonprovisional)
must be entitled to a filing date (i.e., contains a written description
of the invention, a drawing (if necessary for an understanding of the
invention), and at least one claim) for the application to be in
condition for publication. In addition, if an application filed under 35
U.S.C. 111(a) otherwise entitled to a filing date appears to omit a
portion of the description or a drawing figure, the omitted portion of
the description or drawing figure(s) must be supplied, or the period for
supplying such portion of the description or drawing figure(s) must have
expired, for the application to be in condition for publication. The
requirements for an application filed under 35 U.S.C. 111(a) to be
entitled to a filing date and the treatment of an application filed
under 35 U.S.C. 111(a) that appears to omit a portion of the description
or a drawing figure is set forth in sections 601.01(d) through 601.01(g)
of the Manual of Patent Examining Procedure (7th ed. 1998) (Rev. 1, Feb.
2000) (MPEP).
In addition, an application filed under 35 U.S.C. 111(a) must include an
executed oath or declaration (§ 1.63), an abstract (§ 1.72(b)), and an
English translation (if filed in a language other than English), for the
application to have the content necessary to create the patent
application publication. For eighteen-month publication purposes, the
oath or declaration must at a minimum: (1) Name each inventor at least
by a family and given name; and (2) be signed by each inventor or a
party qualified to sign under §§ 1.42, 1.43, or 1.47 in compliance with
§ 1.64. Finally, an application filed under 35 U.S.C. 111(a) will not be
published until the basic filing fee (§ 1.16(a) or (g)) is paid.
A PCT international application must satisfy the requirements of 35
U.S.C. 371 to be subject to eighteen-month publication under 35 U.S.C.
122(b) (and to have the content necessary to create the patent
application publication).
Even if an application has the content necessary to create the patent
application publication, the application papers and drawings must also
be reviewed to determine whether they are of sufficient quality to be
used in creating the patent application publication. To be of sufficient
quality to create the patent application publication, the specification
must be on sheets of paper that: (1) Are flexible, strong, smooth, non-
shiny, durable, and white; (2) are either A4 (21 cm x 29.7 cm) or 8 1/2"
x 11" with each sheet having a left margin of at least 2.5 cm (1") and
top, bottom, and right margins of at least 2.0 cm (3/4"); (3) are
written on one side only in portrait orientation; (4) are plainly and
legibly written either by a typewriter or machine printer in permanent
dark ink or its equivalent; (5) have lines that are either 11/2 or
double-spaced; and (6) have sufficient clarity and contrast between the
paper and the writing on the paper to permit direct reproduction and
electronic capture by digital imaging and optical character recognition.
These quality standards and requirements are currently set forth in
1.52(a) and (b). In addition, the title must meet the length requirement
of 1.72(a); the abstract must commence on a separate sheet and meet
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the word-length requirement of 1.72(b); the claims must commence on a
separate sheet; and the sequence listing (if applicable) must comply
with 1.821 through 1.825.
As discussed above, the Office must consider not only whether drawings
are of sufficient quality to create a publication (the patent
application publication), but whether they are sufficient for the
publication to be routinely used as a prior art document. Thus, the
drawing sheets (if drawings are included) must comply with the following
requirements of § 1.84. Drawings must be done in dark ink (not pencil),
except where color drawings or photographs are permitted. Photographs
(or photomicrographs) are not permitted unless they are reproducible and
the invention cannot be clearly illustrated in an ink drawing. See
Interim Waiver of 37 CFR § 1.84(b)(1) for Petitions to Accept Black and
White Photographs and Advance Notice of Change to M.P.E.P. 608.02,
Notice, 1213 Off. Gaz. Pat. Office 108 (Aug. 4, 1998). Drawing sheets
must be reasonably free from erasures and must be free from alterations,
overwritings, interlineations, folds, and copy marks. Drawing sheets
must be either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm
(8 1/2 by 11 inches). Each drawing sheet must include a top margin of at
least 2.5 cm (1 inch), a left side margin of at least 2.5 cm (1 inch), a
right side margin of at least 1.5 cm (5/8 inch), and a bottom margin of
at least 1.0 cm (3/8 inch). Lines, numbers, and letters must be clean,
dark (not of poor line quality), uniformly thick, and well defined. The
English alphabet must be used for letters, except where another alphabet
is customarily used (such as the Greek alphabet to indicate angles,
wavelengths, and mathematical formulas). Numbers, letters, and reference
characters must measure at least 0.32 cm (1/8 inch) in height. Lead
lines are required for each reference character (except for those which
indicate the surface or cross section on which they are placed, in which
case the reference character must be underlined to make it clear that a
lead line has not been left out by mistake). The drawing views must also
be numbered in consecutive Arabic numerals, starting with 1.
Finally, the specification (including the claims) must not contain
drawings or flow diagrams. See § 1.58(a).
In September of 1996, the Office revised the standard and format
requirements for the specification (including the abstract and claims),
drawings, and other application papers set forth in 1.52 and 1.84
for the purpose of obtaining initial application papers in condition for
eighteen-month publication. See Miscellaneous Changes in Patent
Practice, Final Rule Notice, 61 FR 42790 (Aug. 19, 1996), 1190 Off. Gaz.
Pat. Office 67 (Sept. 17, 1996). Applicants are advised that the Office
will: (1) Begin enforcement of the provisions of § 1.52(a) and (b) and
1.84 during the pre-examination processing of patent applications; and
(2) not permit applicants to request that objections under § 1.52(a) and
(b) and § 1.84 made during the pre-examination processing of a patent
application be held in abeyance pending allowance of the application.
As discussed below, if applicant timely provides the Office with a copy
of the application via the Office electronic filing system, the Office
will use the electronic copy provided by the applicant (rather than the
PACR database records) to create the patent application publication.
Applicants may use this procedure to obtain inclusion of amendments
submitted during prosecution in the patent application publication.
Applicants must use this procedure when requesting: (1) Voluntary
publication of an application; (2) republication of a previously
published application; or (3) publication of only a redacted copy of an
application.
Electronic filing system: The electronic filing system (EFS) is an
electronic system for the submission of patent applications to the
Office. The EFS encompasses the preparation of the application parts in
a special manner on the applicant’s computer (authoring), the assembling
of the pieces of the application so authored, and the secure
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communication of that application to the Office. The same EFS software
must be used by applicants who wish to submit a copy of the application
for the patent application publication.
The steps for submission of an electronic version of a patent
application are as follows: (1) Obtaining a digital certificate; (2)
obtaining the authoring and the submission-software packages from the
Office; (3) authoring the patent application; and (4) assembling the
parts of the application, and validating, digitally signing, and
submitting the application.
To file a copy of an application using the EFS, an applicant (or
representative) must submit a request and receive an Office digital
certificate to enable secure communication between the applicant and the
Office. A digital certificate will allow the authorized person to
conduct electronic filing of one or more applications, as well as have
access to the Office's Patent Application Information Retrieval (PAIR)
software to display patent application status information.
The digital certificate is given to individuals and firms that obtain a
customer number, and also request a digital certificate. Instructions on
how to obtain the necessary digital certificate are located at the
Office's Electronic Business Center on the Office’s Internet Web site
(http://www.uspto.gov) (under the section Electronic Business Center,
select New User for the PAIR system).
The Office makes its branded version of the security software product
called Entrust Direct software available to authorized persons. The
software operates in conjunction with an Office Public Key
Infrastructure (PKI) that is secure and enables communication only
between the Office and authorized persons who are registered with the
Office.
A person signing up for EFS application filing receives a package with
his or her digital certificate including: (1) the software that will
attach a digital signature to a document or set of documents; (2) an
authoring tool that will allow the applicant to convert a standard
patent application into a specialized format; and (3) the electronic
Packaging and Validation Engine (ePave) program that will assemble the
parts of the application, validate that the parts are complete, encrypt
and digitally sign them, and then send them to the Office.
The applicant is responsible for correctly authoring the electronic
application, which is defined as reformatting the application into a
form that complies with the requirements of XML (the standard eXtensible
Markup Language of Internet authoring). The XML requires that all the
pieces of information in the application (e.g., the inventor’s name,
title of the invention, and the claims) are tagged with standard XML
named tags before and after each piece of information. For example, XML
could require that the title be tagged:
<app title> MAKING A WIDGIT </app title>
The tagged information, in turn, is ordered and positioned on the
submitted document according to the formula for that document in the
document type definition (DTD). The DTD contains a list of all the
tagged data elements (pieces of information) that should be on that
document, and the relative positioning of the elements. When combined
with the document's style sheet (which contains formatting information),
the DTD will completely define what the document should contain and,
when printed or viewed, what it will look like.
The applicant does the authoring using the software authoring tool given
to him or her by the Office and operating on the applicant's computer.
The authoring tool displays a template on applicant's computer screen
listing all of the data elements that should be in a patent application
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(according to the Office's DTD). The applicant clicks in the desired
data element and types information into the template. For example, the
applicant clicks the data element `TITLE' and types `MAKING A WIDGIT'
into the template. The authoring tool will add the tags, paragraph
numbers, and other elements that are required by XML. The applicant can
continue through this whole process adding the required information to
each of the data elements in the template until the application is fully
authored.
The applicant can also use the authoring tool to `cut and paste' a
previously written application into the proper format. In this mode, the
applicant will open up that written application, and also open up the
authoring tool template to reveal the data elements. When the applicant
clicks in the data element, the applicant will copy the relevant section
from the previously written application and paste that section into the
template (for tagging by the authoring tool).
Paper copies of the oath or declaration (§ 1.63), drawings, and certain
other documents are scanned on the applicant’s digital scanner and
stored in tagged image file format (TIFF). The TIFF is not tagged by the
authoring tool, but is similar to an electronic photograph.
Using either mode, the applicant will produce a copy of the application
in compliance with the Office EFS, including a specification and claims
(in XML), an oath or declaration (in TIFF), and drawings (also in TIFF).
Once the various parts of the application are prepared, the applicant
will use the software tool ePave to assemble those parts and submit the
application to the Office. The ePave software interacts with the
applicant to fill out an electronic transmittal and fee information
letter. This document is developed in the tagged XML format. The
applicant then uses the ePave software to associate these documents with
the previously produced application.
This association of the related files to be submitted is called
bundling. The bundle of files that will be sent to the Office will be
compressed using Zip technology to reduce their size. Then ePave will
apply the digital signature to the compressed bundle, to indicate who is
sending the package to the Office, and check the file's integrity. The
digital signature process also encrypts the bundle, for safety during
transmission.
The authoring tool and ePave software on the applicant's computer
perform all of this activity almost invisibly. The applicant must enter
a password to apply the digital signature, and the software will finish
processing the application for submission to the Office. During the
processing of a copy of an application for submission to the Office for
use in a patent application publication, the applicant will be advised
that the application of a digital signature constitutes a statement that
the EFS copy of the application contains no new matter, and, except for
a redacted copy of an application (which requires the concurrent
submission of other certifications on paper), that the EFS copy of the
application corresponds to the application as amended by any amendment
filed in the application. When processing is finished, the software will
ask the applicant if the list of displayed files should be sent to the
Office. The applicant will click or otherwise express his or her
concurrence, and the EFS application files are electronically
transmitted to the Office.
On receipt of the bundle of files comprising the application, the Office
stores the bundle and takes it apart. The bundle is decrypted, the
digital signature is checked, and the integrity of the package is
confirmed. In the course of events, the Office sends an acknowledgment
back to the applicant’s computer providing the date and time of
submission, the names and sizes of the files received, and other
information to confirm the submission.
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Obviously, an application submitted via EFS cannot include a payment by
check or money order. Therefore, any publication fee or processing fee
required for a copy of an application submitted via EFS for use in the
patent application publication must be paid by an authorization to
charge the fee to a credit card or Office deposit account.
The Office originally indicated that if a copy of an application being
submitted to the Office for eighteen-month publication purposes contains
a sequence listing, and the sequence listing is identical to a sequence
listing previously submitted to the Office in compliance with 1.821
through 1.825, the EFS copy of the application may contain a reference
to the previously filed sequence listing in lieu of a copy of the
previously filed sequence listing. See Changes to Implement Eighteen-
Month Publication of Patent Applications, 65 FR at 17950, 1233 Off. Gaz.
Pat. Office at 124. The Office, however, has determined that permitting
an EFS copy of an application to reference a previously filed sequence
listing (rather than include a copy of the sequence listing) will
increase the chance for errors in the sequence listing included in the
patent application publication. Thus, the Office is requiring that if a
copy of an application being submitted to the Office for eighteen-month
publication purposes contains a sequence listing, the EFS copy of the
application must contain a text file copy of the sequence listing that
if printed out on paper would be in compliance with 1.823.
Finally, if the file containing a copy of an application being submitted
to the Office for eighteen-month publication purposes occupies ten
megabytes of memory or more, the copy of the application should be
submitted on a Compact Disk-Read Only Memory (CD-ROM) or Compact Disk-
Recordable (CD-R). The CD-ROM or CD-R containing the copy of the
application should be addressed to: Box PGPub.
While the Office is using EFS for both new application filing and
submission of a copy of a previously filed application for publication
purposes, an EFS submission of a copy of an application for publication
purposes will be different from the EFS submission of a new application.
For example, the EFS submission of a copy of an application for
publication purposes will not require an oath or declaration (in TIFF).
In addition, the acknowledgment receipts issued by the Office will be
different for the EFS submission of a copy of an application for
publication purposes than it will be for the EFS submission of a new
application.
Publication process: The current planning approach involves a fourteen-
week publication cycle that results in the publication of patent
application publications on Thursday of each week. Ideally, the
publication date of an application will be the first Thursday after the
date that is eighteen months after the filing date of the application,
or if the application claims the benefit of an earlier filing date, the
first Thursday after the date that is eighteen months after the earliest
filing date for which a benefit is sought. An application, however, may
not be published the first Thursday after the date that is eighteen
months after the earliest filing date for which a benefit is sought if
the application is not in condition for publication approximately
fourteen months after the earliest filing date for which a benefit is
sought (eighteen months less the fourteen-week publication cycle).
Obviously, there are events that will delay publication of some
applications until a later date: e.g., (1) The application claims the
benefit under 35 U.S.C. 120 of an application filed more than eighteen
months before the actual filing date of the application; (2) the basic
filing fee or oath (or declaration) is not provided within eighteen
months after the earliest filing date for which a benefit is sought; or
(3) the application does not contain papers or drawings of publication
quality within eighteen months after the earliest filing date for which
a benefit is sought. In such situations, the publication date of an
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application will be the first Thursday after the date that is fourteen
weeks after the application is in condition for publication. Applicants
who attempt to delay publication by intentionally delaying the
submission of the application content necessary for publication,
however, may encounter a reduction in any patent term adjustment under
35 U.S.C. 154(b) (see 35 U.S.C. 154(b)(2)(C)(ii) and § 1.704(b)).
The Office plans to indicate a projected publication date on the filing
receipt or indicate `to be determined' if the application is not in
condition for publication. If events change the projected publication
date by more than two weeks (e.g., claim for priority under 35 U.S.C.
119(e) presented after mailing of the filing receipt) or the application
content necessary for publication is provided, the Office will issue a
change notification indicating the revised projected publication date.
The publication process involves producing weekly volumes of patent
application publications on a variety of media: e.g., the Office's
Examiner Automated Search Tool (EAST) and Web-based Examiner Search Tool
(WEST) search systems, optical disk products for sale to the public, and
exchange with the Office’s Intellectual Property exchange partners.
Patent application publications will be available for viewing by the
public in the Public Search Room via an on-line search system. The
Office does not plan to provide paper copies of the patent application
publications for placement in either the Public Search Room or the
examiners’ search rooms. The Office, however, will provide paper copies
of the patent application publications to any member of the public on
request (for a fee) in the manner that paper copies of patents are
currently provided.
The publication process provides for: (1) Assembly of application
bibliographic information for the patent application publication at
fourteen weeks prior to the projected publication date; (2) assembly of
the technical content (specification, including claims and abstract, and
drawings) of the application for the patent application publication at
nine weeks prior to the projected publication date; and (3) placement of
the application information as assembled into the patent application
publication on publication media (e.g., optical disks, magnetic tape) at
four weeks prior to the projected publication date.
Any applicant seeking to abandon the application for the purpose of
avoiding publication must take appropriate action (see § 1.138 discussed
below) well prior to the projected publication date. If the application
is not expressly abandoned at least four weeks prior to the projected
publication date, the Office will probably not be able to avoid
publication of the application or at least some application information
because the Office will place the application (along with the thousands
of other applications being published each week) on publication media
(e.g., optical disks, magnetic tape) four weeks prior to the projected
date. This does not imply that a request to expressly abandon an
application to avoid publication (§ 1.138) filed prior to this `four-week'
time frame will ensure that the Office will be able to remove an
application from publication. The Office simply cannot ensure that it
can remove an application from publication or avoid publication of
application information any time after the publication process for the
application is initiated.
Access to the file wrapper and contents of a published application: The
Office plans to permit: (1) Any member of the public to obtain (for a
fee) a copy of the complete file wrapper and contents of, or a copy of a
specific paper in, any published application, provided that no redacted
copy was timely submitted for publication; (2) any member of the public
to obtain (for a fee) an appropriately redacted copy of the file wrapper
and contents of, or a copy of a specific paper in, any published
application for which a redacted copy was timely submitted for
publication; and (3) any member of the public to physically inspect
(subject to the same conditions that apply to inspection of patented
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files) the file of any abandoned published application, provided that no
redacted copy was timely submitted for publication.
Any member of the public may obtain status information concerning any
published application via the Office’s PAIR system. Permitting physical
inspection of pending published applications, however, would interfere
with the Office’s ability to act on the applications within the time
frames set forth in 35 U.S.C. 154(b)(1)(A) and (B). Thus, the Office
must limit public access to the file wrapper of pending published
applications to obtaining a copy produced by the Office (for a fee) to
avoid conferring patent term adjustment on the applicant due to actions
by members of the public.
Section 4805 of the American Inventors Protection Act of 1999 provides
that the Comptroller General (in consultation with the Office) shall
conduct a study and submit a report to Congress on the potential risks
to the United States biotechnology industry relating to biological
deposits in support of biotechnology patents, and that the Office shall
consider the recommendations of such study in drafting regulations
affecting biological deposits (including any modification of § 1.801 et
seq.). Therefore, this notice does not contain any amendment to § 1.801
et seq. concerning the treatment of biological deposits in applications
subject to eighteen-month publication.
Section 4732 of the American Inventors Protection Act of 1999 changed
(among other things) the title `Commissioner' to `Director.' The title
`Commissioner,' however, is not being changed to `Director' where it
appears in the rules of practice involved in this final rule because
legislation is pending before Congress that (if enacted) would restore
the former title `Commissioner.' See Intellectual Property Technical
Amendments Act of 2000, H.R. 4870, 106th Cong. (2000).
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Parts 1 and 5, are amended
as follows:
Section 1.9: Section 1.9(c) is amended to define a published application
as used in 37 CFR chapter I to mean an application for patent which has
been published under 35 U.S.C. 122(b).
Section 1.11: Section 1.11(a) is amended to include the file of an
abandoned published application (except if a redacted copy of the
application was used for the patent application publication) among the
files that are open to inspection by the public.
Section 1.12: Section 1.12(a)(1) is amended to include the assignment
records of a published patent application among the patent assignment
records that are available to the public. Section 1.12(b) is amended to
provide that the patent assignment records, digests, and indexes are
available to the public unless they relate to pending or abandoned
patent applications that have not been published under 35 U.S.C. 122(b).
Section 1.13: Section 1.13 is amended to include patent application
publications among the records of the United States Patent and Trademark
Office that are open to the public, and of which a copy (certified or
uncertified) will be furnished (upon payment of the appropriate fee).
Section 1.14: Section 1.14(a) is amended to generally maintain the
confidentiality of applications that have not been published as a U.S.
patent application publication (see 35 U.S.C. 122(b)) pursuant to 35
U.S.C. 122(a). Status information is defined to include identification
of whether the application has been published under 35 U.S.C. 122(b), as
well as whether the application is pending, abandoned, or patented, and
the application numerical identifier.
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Section 1.14(b) is amended to provide that status information may also
be supplied when the application is referred to by its numerical
identifier in a U.S. patent application publication as well as a U.S.
patent or a published international application. Section 1.14(b) is also
amended to provide that status information may be supplied for an
application which claims the benefit of the filing date of an
application for which status information may be supplied. As a result,
the public will be able to obtain continuity data for applications that
have been published as a U.S. patent application publication or as a
U.S. patent.
Section 1.14(c)(1) provides that a copy of an application-as-filed or a
file wrapper and contents may be supplied where the appropriate fee is
paid, and: (1) The application is incorporated by reference in a U.S.
patent application publication or U.S. patent; or (2) the application is
relied upon for priority under 35 U.S.C. 119(e) or 120 in a U.S. patent
application publication or U.S. patent.
Section 1.14(c)(2) provides that copies of the file wrapper and contents
of an application are available to the public when the application has
been published as a U.S. patent application publication.
Section 1.14(e) is amended to provide public access to an abandoned
application that is referenced in a U.S. patent application publication,
as well as a U.S. patent, or another application that is open to public
inspection.
Section 1.14(i) provides for greater access to international application
files kept by the Office and applies to applications having an
international filing date on or after November 29, 2000. Specifically,
35 U.S.C. 374 equates the publication under the PCT of an international
application designating the U.S. to the publication of a U.S.
application under 35 U.S.C. 122(b). After publication of an application
under 35 U.S.C. 122(b), the Office will make available copies of the
application files and also allow for access to those files in accordance
with 1.14(c) and (e), respectively. Therefore, after publication of an
international application designating the U.S. under PCT Article 21, the
Office will make available copies of, and allow access to, those
international application files which are kept in the Office (the Home,
Search, and Examination Copies) to the extent permitted under the PCT.
Additionally, 1.14(i)(2) provides that copies of English language
translations of international applications, which were published in a
non-English language and which designated the U.S., and which have been
submitted to the Office pursuant to 35 U.S.C. 154(d)(4), will also be
available to the public. Requests for copies of, or access to, an
application file under § 1.14(i) must be in the form of a written
request and must include a showing that the international application
has been published and that the U.S. was designated. Such a showing
should preferably be in the form of the submission of a copy of the
front page of the published international application. Additionally,
requests for copies of international application files must also be
accompanied by the appropriate fee.
Section 1.14(j) is amended to provide that this section not only applies
when the Office provides access to or copies of the application, but
also when the Office provides access to or copies of a part of an
application.
Section 1.17: The heading of § 1.17 is amended to include a reference to
reexamination to clarify that the enumerated fees in 1.17 may also
apply during reexamination proceedings, as well as to patent
applications.
Section 1.17(h) is amended to include a petition under § 1.138(c) to
expressly abandon an application to avoid publication among the
petitions requiring the fee ($130) set forth in § 1.17(h).
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Section 1.17(i) is amended to include 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 ( 1.217),
processing a request for voluntary publication or republication of an
application (§ 1.221), and processing a belated submission under 1.99
( 1.99(e)) to the processing services requiring the processing fee
($130) set forth in 1.17(i).
Sections 1.17(l) and 1.17(m) are amended to set forth the fees for
filing a petition under § 1.137 for revival of a terminated
reexamination proceeding (on the basis of unavoidable and unintentional
delay). Section 1.17(l) is amended to reflect that its $110 petition fee
($55 for a small entity) is required for a petition under § 1.137(a) to
revive a terminated reexamination proceeding on the basis of an
unavoidable failure of the patent owner to timely respond. Section
1.17(m) is amended to reflect that its $1,240 petition fee ($620 for a
small entity) is required for a petition under § 1.137(b) to revive a
terminated reexamination proceeding on the basis of an unintentional
failure to timely respond. Note, however, that the newly enacted
unintentional revival provisions of the American Inventors Protection
Act of 1999 are not effective in any reexamination until November 29,
2000.
Section 1.17(p) is amended to make its fee ($180) applicable to a third-
party submission under 1.99, as well as an information disclosure
statement under § 1.97(c) or (d).
Section 1.17(t) is added to set forth the surcharge ($1,240) for
accepting an unintentionally delayed claim for priority under 35 U.S.C.
119, 120, 121, or 365(a) or 365(c) (§ 1.55 and 1.78).
Section 1.18: Section 1.18(d) is added to specify the publication fee
($300). In view of this addition to § 1.18, the heading of § 1.18 is
also amended to refer to `post-allowance (including issue) fees'
(instead of only `issue fees').
Section 1.19: Section 1.19(a) is amended to provide that its $3 (regular
service), $6 (next business day delivery to Office Box), or $25
(expedited delivery by commercial delivery service) fee would also be
applicable to a request for a copy of the paper portion of a patent
application publication. The $25 fee set forth in § 1.19(a)(4) would
apply to a request for a certified copy of a patent application
publication.
Section 1.24: Section 1.24 is removed and reserved. The practice of
using coupons to purchase, e.g., patents, statutory invention
registrations, and trademark registrations, is inefficient compared to
alternatives such as payment by credit card (especially for orders
placed via the Internet). Coupons sold by the Office (before coupon
practice is abolished) may still be used but cannot be redeemed.
Section 1.52: Section 1.52(d) is amended to provide for nonprovisional
applications and provisional applications filed in a language other than
English. The provisions concerning the treatment of nonprovisional
applications filed in a language other than English are revised for
clarity, but otherwise remain unchanged (§ 1.52(d)(1)).
Section 1.52(d)(2) provides that if a provisional application is filed
in a language other than English, an English translation will not be
required in the provisional application. Section 1.52(d)(2) also
contains a reference to § 1.78(a) concerning the requirements for
claiming the benefit of the filing date of such a provisional
application in a later filed nonprovisional application.
Section 1.55: Section 1.55 is amended to implement the provisions of 35
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U.S.C. 119(b) as amended by section 4503(a) of the American Inventors
Protection Act of 1999, by providing: (1) A time period within which a
claim for the benefit of a prior foreign application must be stated or
waived; and (2) provisions for the acceptance of an unintentionally
delayed submission of a claim to the benefit of a prior foreign
application.
Section 1.55(a) is amended to provide that: (1) In an original
application filed under 35 U.S.C. 111(a) (other than a design
application), the claim for priority must be presented during the
pendency of the application, and within the later of four months from
the actual filing date of the application or sixteen months from the
filing date of the prior foreign application; (2) in an application that
entered the national stage from an international application after
compliance with 35 U.S.C. 371, the claim for priority must be made
during the pendency of the application and within the time limit set
forth in the PCT and the Regulations under the PCT; and (3) the claim
for priority and the certified copy of the foreign application specified
in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before
the patent is granted.
Section 1.55(c) provides that any claim for priority under 35 U.S.C.
119(a)-(d) or 365(a) not presented within the time period provided by
1.55(a) is considered to have been waived. Section-(d) or 365(a) is
presented after the time period provided by - 1.55(a), the claim may be
accepted if the claim identifying the prior foreign application by
specifying its application number, country, and the day, month and year
of its filing was unintentionally delayed. Section 1.55(c) also provides
that a petition to accept a delayed claim for priority under 35 U.S.C.
119(a)-(d) or 365(a) must be accompanied by: (1) The surcharge set forth
in § 1.17(t); and (2) a statement that the entire delay between the date
the claim was due under § 1.55(a)(1) and the date the claim was filed
was unintentional, and that the Commissioner may require additional
information where there is a question whether the delay was
unintentional.
Section 1.72: Section 1.72(a) is amended to provide that the title of
the invention may not exceed 500 characters in length. The title
character number limitation is necessary to ensure that the title can be
captured and recorded in the Office’s Patent Application Locating and
Monitoring (PALM) system. Section 1.72(a) is also amended to provide
that characters that cannot be captured and recorded in the Office’s
automated information systems (e.g., PALM) may not be reflected in the
Office’s records in such systems or in documents created by the Office.
Thus, if a title includes a character (images) that cannot be captured
by PALM, that title will not appear in the Office's PALM records for
that application, and may not be reflected in documents (e.g., a filing
receipt, patent application publication, or patent) created by the
Office.
Section 1.76: Section 1.76 is amended to provide for the inclusion of
assignee information in a new 1.76(b)(7). Section 1.76(b)(7) provides
that: (1) assignee information includes the name (either person or
juristic entity) and address of the assignee of the entire right, title,
and interest in an application; and (3) the inclusion of this
information on the application data sheet does not substitute for
compliance with any requirement of 37 CFR part 3 to have an assignment
recorded by the Office. Providing assignee information on the
application data sheet is considered a request to include such
information on the patent application publication, since there is no
other reason for including such information on the application data
sheet.
Section 1.78: Section 1.78(a) is amended to implement the provisions of
35 U.S.C. 119(e) and 120 as amended by 4503(b) of the American
Inventors Protection Act of 1999, by providing: (1) A time period within
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which a claim to the benefit of a prior nonprovisional or provisional
application must be stated or waived; and (2) provisions for the
acceptance of the unintentionally delayed submission of a claim to the
benefit of a prior nonprovisional or provisional application.
Section 1.78(a)(2) is amended to provide that (except for a continued
prosecution application filed under 1.53(d)) any claim to the benefit
of a nonprovisional application or international application must be
made during the pendency of the application and within the later of four
months from the actual filing date of the application or sixteen months
from the filing date of the prior application. Section 1.78(a)(2) also
provides that the failure to timely submit the reference required by 35
U.S.C. 120 and § 1.78(a)(2) is considered a waiver of any benefit under
35 U.S.C. 120, 121, or 365(c) to such prior application, but that the
time period set forth in § 1.78(a)(2) does not apply to an application
for a design patent.
Section 1.78(a)(2) also provides that if the application claims the
benefit of an international application, the first sentence of the
specification must include an indication of whether the international
application was published under PCT Article 21(2) in English (regardless
of whether benefit to such application is claimed in the application
data sheet).
Sections 1.78(a)(3) and 1.78(a)(4) are redesignated as § 1.78(a)(4) and
1.78(a)(5), respectively.
Section 1.78(a)(3) provides that if the reference required by 35 U.S.C.
120 and § 1.78(a)(2) is presented in a nonprovisional application after
the time period provided by 1.78(a)(2), the claim under 35 U.S.C. 120,
121, or 365(c) for the benefit of a prior filed copending nonprovisional
application or international application designating the United States
may be accepted if the reference identifying the prior application by
application number or international application number and international
filing date was unintentionally delayed. Section 1.78(a)(3) also
provides that a petition to accept an unintentionally delayed claim
under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior filed
copending application must be accompanied by: (1) The surcharge set
forth in § 1.17(t); and (2) a statement that the entire delay between
the date the claim was due under § 1.78(a)(2) and the date the claim was
filed was unintentional, but the Commissioner may require additional
information where there is a question whether the delay was
unintentional.
Section 1.78(a)(4) is amended to provide that, for a nonprovisional
application to claim the benefit of a provisional application, the
provisional application must be entitled to a filing date as set forth
in 1.53(c), and the basic filing fee set forth in § 1.16(k) must be
paid within the time period set forth in § 1.53(g).
Section 1.78(a)(5) provides that any nonprovisional application claiming
the benefit of a provisional application filed in a language other than
English must (in addition to the reference required by 35 U.S.C. 119(e)
and § 1.78(a)(5)) contain an English language translation of the non-
English language provisional application and a statement that the
translation is accurate. Section 1.78(a)(5) also provides any claim for
the benefit of a provisional application and English language
translation of a non-English language provisional application must be
submitted during the pendency of the nonprovisional application, and
within the later of four months from the actual filing date of the
nonprovisional application or sixteen months from the filing date of the
prior provisional application. Section 1.78(a)(5) also provides that the
failure to timely submit the reference and English language translation
of a non-English language provisional application required by 35 U.S.C.
119(e) and § 1.78(a)(5) is considered a waiver of any benefit under 35
U.S.C. 119(e) to such prior provisional application.
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Section 1.78(a)(6) provides that if the reference or English language
translation of a non-English language provisional application required
by 35 U.S.C. 119(e) and § 1.78(a)(5) is presented in a nonprovisional
application after the time period provided by § 1.78(a)(5), the claim
under 35 U.S.C. 119(e) for the benefit of a prior filed provisional
application may be accepted during the pendency of the nonprovisional
application if the reference identifying the prior application by
provisional application number and any English language translation of a
non-English language provisional application were unintentionally
delayed. Section 1.78(a)(6) also provides that a petition to accept an
unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of
a prior filed provisional application must be accompanied by: (1) The
surcharge set forth in 1.17(t); and (2) a statement that the entire
delay between the date the claim was due under § 1.78(a)(5) and the date
the claim was filed was unintentional, but that the Commissioner may
require additional information where there is a question whether the
delay was unintentional.
Section 1.84: Section 1.84(a)(2) is amended to provide that color
drawings are not permitted in an application, or copy thereof, submitted
under the Office electronic filing system. Section 1.84(a)(2) is also
amended to provide that any petition to accept color drawings must
include a black and white photocopy that accurately depicts, to the
extent possible, the subject matter shown in the color drawing. Since
1.84(b) provides that color photographs will be accepted in utility
patent applications if the conditions for accepting color drawings have
been satisfied, the provisions and restrictions in amended § 1.84(a)(2)
would also apply to color photographs.
Section 1.84(e) is amended to provide that photographs must be developed
on paper meeting the sheet-size requirements of § 1.84(f) and the margin
requirements of § 1.84(g).
Section 1.84(j) is amended to refer to the view suitable for the front
page of the patent application publication and patent, rather than the
view suitable for the Official Gazette, since the front page of the
patent (and patent application publication) includes the information
that is (or would be) included in the Official Gazette, and the Office
does not plan on creating an Official Gazette for patent application
publications. Section 1.84(j) is also amended to provide that: (1) One
of the views should be suitable for inclusion on the front page of the
patent application publication and patent as the illustration of the
invention; and (2) applicant may suggest a single view (by figure
number) for inclusion on the front page of the patent application
publication and patent. Applicants should indicate in the application
transmittal letter the figure number of the view suggested for inclusion
on the front page of the patent application publication and patent. The
Office, however, is not bound by applicant's suggestion.
Section 1.85: Section 1.85(a) is amended to provide that a utility or
plant application will not be placed on the files for examination until
objections to the drawings have been corrected. As discussed above,
these objections will concern deficiencies that must be corrected for
the drawings to be of sufficient quality for use in creating a patent
application publication. For example, the drawings must be reproducible
and any text in the drawings must be in the English language. Since the
Office plans to use the copy of the application (including the drawings)
from its PACR database to create the patent application publication, the
Office must require that new or corrected drawings correcting the
objections to the drawings be filed before the application is released
from OIPE and placed on the files for examination.
Even if an applicant files the application with a request that the
application not be published pursuant to 35 U.S.C. 122(b), the applicant
may rescind that request at any time. See 35 U.S.C. 122(b)(2)(B)(ii). In
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addition, at the time the Office is recording a copy of the application
in its PACR database, the Office is not in a position to know whether
the applicant will file an electronic filing system copy of the
application for use in creating the patent application publication.
Therefore, the Office must be prepared to create a patent application
publication from its PACR database for each application and insist that
objections to the drawings be corrected in all utility and plant
applications before the application can be released from OIPE.
Section 1.85(a) is also amended to provide that (except as provided in
1.215(c)) any patent application publication will not include drawings
filed after the application has been placed on the files for
examination. Thus, corrected drawings submitted after the application
has been released from OIPE will not be added to the PACR database or
used to create the patent application publication.
Section 1.85(a) is also amended to provide that, unless applicant is
otherwise notified in an Office action, objections to the drawings in a
utility or plant application will not be held in abeyance, and a request
to hold objections to the drawings in abeyance will not be considered a
bona fide attempt to advance the application to final action (§ 1.135(c)).
That is, if an Office action or notice contains an objection
to the drawings (and does not expressly permit such objection to be held
in abeyance) and the applicant’s reply does not correct the objection,
the applicant will be advised that the reply is non-responsive and given
the remainder of the period set in the original Office action or notice
(and not a new period under § 1.135(c)) within which to correct the
objection.
Since design applications are not subject to the eighteen-month
publication provisions of 35 U.S.C. 122(b), drawings in a design
application will continue to be admitted for examination if the drawings
meet the requirements of § 1.84(e), (f), and (g) and are suitable for
reproduction.
Section 1.98: Section 1.98(a)(2)(i) is amended to also refer to U.S.
patent application publications. Section 1.98(b) is amended to provide
that each U.S. patent application publication listed in an information
disclosure statement shall be identified by applicant, patent
application publication number, and publication date.
Section 1.99: Section 1.99(a) provides that a submission by a member of
the public of patents or publications relevant to a pending published
application will be entered in the application file if the submission
complies with the requirements of § 1.99 and the application is still
pending when the submission and application file are brought before the
examiner. The entry of such a submission does not mean that the patents
or printed publications contained in the submission will be necessarily
considered and cited by the examiner. If the examiner considers a patent
or printed publication contained in the submission to be pertinent in
determining patentability, the examiner will initial that patent or
printed publication on the listing of the patents or publications
submitted for consideration by the Office. Unless, however, a patent or
publication in a submission under § 1.99 is discussed during
prosecution, the patent or publication will not be deemed to have been
'considered' pursuant to the Office's Portola guidelines. See Guidelines
for Reexamination of Cases in View of In re Portola Packaging, Inc., 110
F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), Notice, 64 FR 15346 (Mar. 31,
1999), 1223 Off. Gaz. Pat. Office 124 (June 22, 1999).
Section 1.99(b) provides that a submission under § 1.99 must identify
the application to which it is directed by application number and
include: (1) The fee set forth in § 1.17(p); (2) a listing of the
patents or publications submitted for consideration by the Office
(including the date of publication of each patent or publication);
(3) a copy of each listed patent or publication in written form or at least
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the pertinent portions; and (4) an English language translation of all
the necessary and pertinent parts of any non-English language patent or
publication in written form relied upon.
Section 1.99(c) provides that a submission under § 1.99 must be served
upon the applicant in accordance with 1.248.
Section 1.99(d) provides that a submission under § 1.99 may not include
any explanation of the patents or publications, or any other
information, and that a submission under § 1.99 is limited to ten total
patents or publications. Section 1.99(d) also provides that the Office
will dispose of such explanation or information if included in a
submission under § 1.99. The Office plans to review submissions under
1.99 (e.g., by a Supervisory Patent Examiner) to determine whether they
are limited to patents and publications before the submission is placed
in the file of the application and forwarded to the examiner, and to
remove any explanations or information (other than patents and
publications) from the submission before it is placed in the file of the
application and forwarded to the examiner.
Section 1.99(e) provides that a submission under § 1.99 must be filed
within two months from the date of publication of the application
(§ 1.215(a)), or prior to the mailing of a notice of allowance (§ 1.311),
whichever is earlier. Section 1.99(e) also provides that any
submission under § 1.99 not filed within this period is permitted only
when the patents or publications could not have been submitted to the
Office earlier, and must also be accompanied by the processing fee set
forth in § 1.17(i). The phrase `publication of the application (1.215(a))'
means that republication of an application under § 1.211 has
no effect on (e.g., does not restart) the period specified in § 1.99(e).
Section 1.99(e) also provides that a submission by a member of the
public to a pending published application that does not comply with the
requirements of § 1.99 will be returned or discarded.
Section 1.99(f) provides that the involvement of a member of the public
in filing a submission under § 1.99 ends with the filing of the
submission.
Section 1.103: Section 1.103 is amended to provide for deferred
examination for up to three years from the earliest filing date for
which a benefit is claimed under title 35, United States Code, at the
request of the applicant. The Office previously proposed a `deferred
examination' practice (in addition to the current suspension of action
practices) to implement the Patent Business Goals. See Changes to
Implement the Patent Business Goals, Advance Notice of Proposed
Rulemaking, 63 FR 53498, 53516-17 (Oct. 5, 1998), 1215 Off. Gaz. Pat.
Office 87, 104-05 (Oct. 27, 1998). The Office, however, did not proceed
with proposing changes to § 1.103 to implement a `deferred examination'
practice. See Changes to Implement the Patent Business Goals, Notice of
Proposed Rulemaking, 64 FR 53772, 53775 (Oct. 4, 1999), 1228 Off. Gaz.
Pat. Office 15, 18 (Nov. 2, 1999). The Office is now proceeding with
changes to § 1.103 to implement a `deferred examination' practice.
Section 1.103(d) is added to provide for deferral of examination if the
applicant requests deferred examination under § 1.103(d) and pays the
publication fee set forth in § 1.18(d) and the processing fee set forth
in 1.17(i). The following conditions must also be met: (1) the
application must be filed on or after November 29, 2000 (or be an
application for which applicant requests voluntary publication), and be
an original (i.e., non-reissue) utility or plant application filed under
§ 1.53(b) (i.e., not a continued prosecution application under § 1.53(d))
or an application resulting from entry of an international
application into the national stage after compliance with § 1.494 or
§ 1.495; (2) the applicant must not have filed a nonpublication request
under § 1.213(a), or have filed a request under § 1.213(b) to rescind a
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previously filed nonpublication request; (3) the application must be in
condition for publication as provided in § 1.211(c); and (4) the Office
must not have issued either an Office action under 35 U.S.C. 132 or a
notice of allowance under 35 U.S.C. 151.
The reasons given for opposition to the October 1998 proposal concerning
'deferred examination' were that: (1) The 'deferred examination' of an
application under an extended suspension of action and the publication
of an application under such suspension of action would create
uncertainty over legal rights; and (2) the publication provisions of
such a suspension of action procedure amount to an eighteen-month
publication system that is not authorized by 35 U.S.C. 122. The Office
is adopting its deferred examination proposal because: (1) Since the
deferral of examination under § 1.103(d) is limited to three years from
the earliest filing date for which a benefit is claimed under title 35,
United States Code, there will be no greater uncertainty over legal
rights than currently exists under reissue or continuing application
practice; and (2) 35 U.S.C. 122(b) now provides for eighteen-month
publication of patent applications (with certain exceptions).
Section 1.104: Section 1.104(a) is amended by eliminating the provisions
concerning the circumstances under which an examiner will consider
applications to be copending (§ 1.104(a)(5)). This material pertains
only to internal instructions to examiners and is considered appropriate
for inclusion in the MPEP rather than the rules of practice.
Section 1.104(d) is amended to provide that if domestic (U.S.) patent
application publications are cited by the examiner, their publication
number, publication date, and the names of the applicants will be
stated.
Section 1.130: Section 1.130(a) is amended to refer to published
applications (as well as patents). Specifically, § 1.130 is also
applicable to a rejection of a claim in an application or patent under
reexamination based upon a patent application publication in the
situation in which the application or patent under reexamination and the
published application are currently owned by the same party.
Section 1.131: Section 1.131(a) is amended to provide that: (1) The
effective date of a U.S. patent, U.S. patent application publication, or
international application publication under PCT Article 21(2) is the
earlier of its publication date or the date that it is effective as a
reference under 35 U.S.C. 102(e); and (2) prior invention may not be
established under § 1.131 if the rejection is based upon either a U.S.
patent or a U.S. patent application publication of a pending or patented
application to another or others which claims the same patentable
invention as defined in § 1.601(n).
Section 1.132: Section 1.132 is revised to provide that when any claim
of an application or a patent under reexamination is rejected or
objected to, any evidence submitted to traverse the rejection or
objection on a basis not otherwise provided for must be by way of an
oath or declaration under this section. This adopts the long-standing
policy that any oath or declaration not otherwise provided for is
considered under § 1.132. See MPEP 716.
Section 1.132 as adopted does not provide that an oath or declaration
may not be submitted under § 1.132 to traverse a rejection if the
rejection is based upon a U.S. patent or a U.S. patent application
publication of a pending or patented application to another or others
which claims the same patentable invention as defined in § 1.601(n). If
an oath or declaration is submitted under § 1.132 to traverse a
rejection, and the rejection is based upon a U.S. patent or a U.S.
patent application publication of a pending or patented application to
another or others which claims the same patentable invention as defined
in § 1.601(n), the Office will consider on a case-by-case basis whether
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the oath or declaration may be considered sufficient to overcome the
rejection, or whether the applicant will be required to establish
priority of invention through an interference proceeding.
Section 1.137: Section 1.137 is amended to: (1) Make its provisions
applicable to the revival of a terminated reexamination proceeding;
(2) provide for the revival of an application abandoned pursuant to 35
U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office of the
filing of an application in a foreign country or under a multinational
treaty; and (3) reorganize certain provisions for clarity.
Section 1.137 (including its heading) is amended to provide for revival
of ex parte reexamination proceedings terminated under § 1.550(d), for
revival of inter partes reexamination proceedings terminated under
§ 1.957(b), or for revival of rejected claims terminated under § 1.957(c)
in an inter partes reexamination proceeding where further prosecution
has been limited to claims found allowable at the time of the failure to
respond. These changes to § 1.137 were discussed in the notice of
proposed rulemaking to implement the optional inter partes reexamination
provisions of the American Inventors Protection Act of 1999. See Rules
to Implement Optional Inter Partes Reexamination Proceedings, Notice of
Proposed Rulemaking, 65 FR 18154 (Apr. 6, 2000), 1234 Off. Gaz. Pat.
Office 93 (May 23, 2000).
Specifically, § 1.137(a) is amended to include revival of unavoidably
terminated reexamination proceedings. The unavoidable delay provisions
of 35 U.S.C. 133 are imported into and are applicable to reexamination
proceedings by 35 U.S.C. 305 and 314. See In re Katrapat, 6 USPQ2d 1863
(Comm'r Pats. 1988). Section 1.137(b) is amended to provide for revival
of unintentionally terminated reexamination proceedings. The
unintentional delay fee provisions of 35 U.S.C. 41(a)(7) are imported
into and are applicable to all reexamination proceedings by § 4605 of
the American Inventors Protection Act of 1999. Note that these changes
pertain to all reexaminations (i.e., both ex parte reexaminations filed
under § 1.510 and inter partes reexaminations filed under § 1.913) and
become effective on November 29, 2000 (one year after enactment of the
American Inventors Protection Act of 1999).
The reconsideration provisions of § 1.137 (formerly § 1.137(d), and
§ 1.137(e) as adopted) are amended to provide that extensions of time for
requesting reconsideration of a decision dismissing or denying a
petition requesting revival of a terminated reexamination proceeding
under § 1.137(a) or § 1.137(b) must be filed under § 1.550(c) for a
terminated ex parte reexamination proceeding, or under § 1.956 for a
terminated inter partes reexamination proceeding.
Section 1.137(f) provides for the revival of an application abandoned
for failure to timely notify the Office of a foreign filing. As
discussed above, if an applicant makes a request (nonpublication
request) upon filing with the appropriate certifications, the
application will not be published under 35 U.S.C. 122(b)(1). See 35
U.S.C. 122(b)(2)(B)(i). An applicant who has made a nonpublication
request but who subsequently files an application directed to the
invention disclosed in the application filed in the Office in a foreign
country, or under a multilateral international agreement, that requires
eighteen-month publication, must notify the Office of such filing within
forty-five days after the date of such filing, with the failure to
timely provide such a notice to the Office resulting in abandonment of
the application. See 35 U.S.C. 122(b)(2)(B)(iii). 35 U.S.C. 122(b)(2)(B)
(iii), however, also provides that an application abandoned as a result
of the failure to timely provide such a notice to the Office is subject
to revival if the “delay in submitting the notice was unintentional.”
See id.
35 U.S.C. 122(b)(2)(B)(iii) provides for revival only on the basis of
unintentional delay, and not on the basis of unavoidable delay. Compare
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35 U.S.C. 122(b)(2)(B)(iii) (“delay * * * was unintentional”) with 35
U.S.C. 111(a)(4) (1delay * * * was unavoidable or unintentional').
Therefore, § 1.137(f) provides that a nonprovisional application
abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely
notify the Office of the filing of an application in a foreign country
or under a multinational treaty that requires eighteen-month publication
may be revived only pursuant to § 1.137(b). Section 1.137(f) also
provides that the reply requirement of § 1.137(c) is met by the
notification of such filing in a foreign country or under a
multinational treaty, but the filing of a petition under § 1.137 will
not operate to stay any period for reply that may be running against the
application. Since the Office cannot ascertain whether an application is
abandoned under 35 U.S.C. 122(b)(2)(B)(iii), the Office may continue to
process and examine the application until the applicant notifies the
Office that the application is abandoned. Therefore, § 1.137(f) provides
that the filing of a petition under § 1.137 to revive such an
application will not operate to stay any period for reply that may be
running against the application.
Section 1.137 is also amended to locate the `reply requirement'
provisions in § 1.137(c), rather than include duplicative provisions
concerning the reply requirement in each of § 1.137(a) and (b). Thus,
the terminal disclaimer provisions of § 1.137(c), reconsideration
provisions of § 1.137(d), and provisional application provisions of
§1.137(e) are moved to §§ 1.137(d), 1.137(e), and 1.137(g),
respectively. In addition, § 1.137(c) also provides that in an
application abandoned for failure to pay the publication fee, the
required reply must include payment of the publication fee. Thus, even
if an application abandoned for failure to pay the publication fee is
being revived solely for purposes of continuity with a continuing
application, the petition to revive under § 1.137 must include payment
of the publication fee (unless previously submitted).
Section 1.137 is also amended to take into account the provisions of 35
U.S.C. 119(e)(3), which extend the pendency of a provisional application
to the next succeeding secular or business day if the day that is twelve
months after the filing date of the provisional application falls on a
Saturday, Sunday, or Federal holiday within the District of Columbia.
Section 1.138: Section 1.138(a) is amended to add `or publication' to
clarify that a letter of express abandonment may not be recognized by
the Office unless it is actually received by appropriate officials in
time to act before the date of publication.
Section 1.138(c) is added to provide for a petition for express
abandonment to avoid publication. Section 1.138(c) provides that an
applicant seeking to abandon an application to avoid publication of the
application (see § 1.211(a)(1)) must submit a declaration of express
abandonment by way of a petition including the fee set forth in
§ 1.17(h) in sufficient time to permit the appropriate officials to
recognize the abandonment and remove the application from the
publication process. The petition will be granted when it is recognized
in sufficient time to avoid publication of application information and
will be denied when it is not recognized in sufficient time to avoid
publication of application information. This will avert the situation in
which an applicant files a letter of express abandonment to avoid
publication, the letter of express abandonment is not recognized in
sufficient time to avoid publication, upon publication the applicant
wishes to rescind the letter of express abandonment, and the Office
cannot revive the application (once the letter of express abandonment is
recognized) because the application was expressly and intentionally
abandoned by the applicant.
As discussed above, the publication process is a fourteen-week process,
and the applicant should expect that the petition will not be granted
and the application will be published in regular course unless such
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declaration of express abandonment and petition are received by the
appropriate officials more than four weeks prior to the projected date
of publication.
Section 1.165: Section 1.165(b) is amended to provide that if plant
application drawings include a color drawing or photograph, a black and
white photocopy that accurately depicts, to the extent possible, the
subject matter shown in the color drawing or photograph must be
submitted.
Section 1.211: Sections 1.211, 1.213, 1.215, 1.217, 1.219, and 1.221 are
added to provide for the pre-grant publication of applications under 35
U.S.C. 122(b).
Section 1.211(a) provides that (with certain exceptions) each U.S.
national application for patent filed in the Office under 35 U.S.C.
111(a) and each international application in compliance with 35 U.S.C.
371 will be published promptly 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.
Section 1.211(a)(1) provides that the Office will not publish
applications that are recognized as no longer pending. The phrase
'recognized by the Office as no longer pending' covers the situation in
which the period for reply (either the shortened statutory period or the
maximum extendable period for reply) to an Office action has expired,
but the Office has not yet entered the change of status (to abandoned)
of the application in the PALM system and mailed a notice of
abandonment. An application will remain in the publication process until
the PALM system indicates that the application is abandoned. Obviously,
once the PALM system indicates that an application is abandoned, the
Office will attempt to remove the application from the publication
process and avoid dissemination of application information. How much
dissemination of application information can be avoided depends upon how
close it is to the publication date when the Office recognizes the
application as abandoned. Unless an applicant has received a notice of
abandonment, an applicant who wants to abandon the application to avoid
publication must file a petition under § 1.138(c) to expressly abandon
the application and avoid publication. An applicant permitting an
application to become abandoned (for failure to reply to an Office
action) to avoid publication by passively waiting for the Office to
recognize that the application has become abandoned must bear the risk
that the Office will not recognize that the application has become
abandoned and change the status of the application in the PALM system in
sufficient time to avoid publication.
Section 1.211(a)(2) provides that the Office will not publish
applications that are national security classified (see § 5.2(c)),
subject to a secrecy order under 35 U.S.C. 181, or under national
security review.
Section 1.211(a)(3) provides that the Office will not publish
applications that have issued as patents in sufficient time to be
removed from the publication process. If the pre-grant publication
process coincides with the patent issue process, the Office will
continue with the pre-grant publication process until a patent actually
issues. This is because there are many instances in which the Office
mails a notice of allowance (§ 1.311) in an application but the
application does not issue as a patent in regular course (abandonment
due to failure to pay the issue fee, or withdrawal from issue either sua
sponte by the Office or on petition of the applicant). Therefore, the
Office will not discontinue the pre-grant publication process until a
patent has actually issued. Since the Office cannot discontinue the pre-
grant publication process during the last two weeks of the publication
process, this will result in a few applications being issued as patents
and subsequently being published as patent application publications. The
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Office will refund the publication fee (if paid) if the application is
not published as a patent application publication, but will not refund
the publication fee if the application is published as a patent
application publication, even if it is published after the patent
issues.
Section 1.211(a)(4) also provides that the Office will not publish
applications that were filed with a nonpublication request in compliance
with § 1.213(a).
Section 1.211(b) provides that provisional applications under 35 U.S.C.
111(b) shall not be published. Section 1.211(b) also provides that
design applications under 35 U.S.C. chapter 16 and reissue applications
under 35 U.S.C. chapter 25 shall not be published under § 1.211.
Provisional applications under 35 U.S.C. 111(b) and design applications
under 35 U.S.C. chapter 16 are excluded from the pre-grant publication
provisions of 35 U.S.C. 122(b). See 35 U.S.C. 122(b)(2)(A)(iii) and
(iv). Reissue applications under 35 U.S.C. chapter 25 are not maintained
in confidence under 35 U.S.C. 122(a). See § 1.11(b).
Section 1.211(c) provides that the Office will not publish an
application filed under 35 U.S.C. 111(a) until it includes the basic
filing fee, an English translation if in a language other than English,
and an executed oath or declaration. Section 1.211(c) also provides that
publishing may be delayed until the application includes a specification
having papers in compliance with § 1.52 and an abstract (§ 1.72(b)),
drawings in compliance with § 1.84, and a sequence listing in compliance
with 1.821 through 1.825 (if applicable), and until any petition under
§ 1.47 is granted. That is, if an application does not contain the
application content on papers or drawings of sufficient quality to
create a patent application publication by eighteen months from its
earliest claimed filing date, the Office will publish the application as
soon as practical after these deficiencies are corrected.
Section 1.211(d) provides that the Office may refuse to publish an
application, or to include a portion of an application in the patent
application publication (§ 1.215), if publication of the application or
portion thereof would violate Federal or state law, or if the
application or portion thereof contains offensive or disparaging
material. A similar provision exists in PCT practice, in that the
International Bureau (IB) may omit expressions or drawings in an
international application from its publications if the expressions or
drawings are contrary to morality or public order, or contain
disparaging statements. See PCT Article 21(6) and Rule 9.
Section 1.211(e) provides that the publication fee set forth in
§ 1.18(d) must be paid in each application published under this section
before the patent will be granted, but does not require that the
publication fee be paid prior to publication. If an application is
subject to publication under this section, the sum specified in the
notice of allowance under § 1.311 will also include the publication fee
which must be paid within three months from the date of mailing of the
notice of allowance to avoid abandonment of the application. This three-
month period is not extendable. If the application is not published
under this section, the publication fee (if paid) will be refunded.
Section 1.213: Section 1.213 implements the provisions of 35 U.S.C.
122(b)(2)(B)(i)-(iii). An applicant may request that the application not
be published under 35 U.S.C. 122(b) and § 1.211 if the invention
disclosed in an application has not been and will not be the subject of
an application filed in another country, or under a multilateral
international agreement, that requires publication of applications
eighteen months after filing. Section 1.213(a) requires that a request
that an application not be published under 35 U.S.C. 122(b)
(nonpublication request) must: (1) Be submitted with the application
upon filing; (2) state in a conspicuous manner that the application is
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not to be published under 35 U.S.C. 122(b); (3) contain a certification
that the invention disclosed in the application has not been and will
not be the subject of an application filed in another country, or under
a multilateral agreement, that requires publication at eighteen months
after filing; and (4) be signed in compliance with § 1.33(b). The
requirement that a nonpublication request be submitted 'upon filing' is
a requirement of statute (35 U.S.C. 122(b)(2)(B)(i)), and, as such, the
Office must deny any petition requesting a waiver of this provision of
§ 1.213(a).
Section 1.213(b) provides that the applicant may rescind a
nonpublication request at any time. See 35 U.S.C. 122(b)(2)(B)(ii).
Section 1.213(b) also provides that a request to rescind a
nonpublication request under § 1.213(a) must: (1) Identify the
application to which it is directed (§ 1.5); (2) state in a conspicuous
manner that the request that the application is not to be published
under 35 U.S.C. 122(b) is rescinded; and (3) be signed in compliance
with § 1.33(b). Once a request under § 1.213(b) to rescind a
nonpublication request is filed and processed by the Office, the
application will be scheduled for publication in accordance with
§ 1.211(a).
Section 1.213(c) reiterates the provisions of 35 U.S.C. 122(b)(2)(B)
(iii). Section 1.213(c) specifically states that if an applicant who has
submitted a nonpublication request under § 1.213(a) subsequently files
an application directed to the invention disclosed in the application in
which the nonpublication request was submitted in another country, or
under a multilateral international agreement, that requires publication
of applications eighteen months after filing, the applicant must notify
the Office of such filing within forty-five days after the date of the
filing of such foreign or international application. The failure to
timely notify the Office of the filing of such foreign or international
application shall result in abandonment of the application in which the
nonpublication request was submitted. See 35 U.S.C. 122(b)(2)(B)(iii).
Section 1.215: Section 1.215(a) indicates that the publication of an
application under 35 U.S.C. 122(b) shall include a patent application
publication. The Office will not mail a paper copy of the patent
application publication to the applicant, but will mail a notice to the
applicant indicating that the application has been published.
Section 1.215(a) also provides that the date of publication shall be
indicated on the patent application publication.
Section 1.215(a) also provides that (except as discussed below in
§ 1.215(c)) the patent application publication will be based upon the
application papers deposited on the filing date of the application,
except for preliminary amendments, as well as the executed oath or
declaration submitted to complete the application, and any application
papers or drawings submitted in reply to a preexamination notice
requiring a title and abstract in compliance with § 1.72, application
papers in compliance with § 1.52, drawings in compliance with § 1.84, or
a sequence listing in compliance with §§ 1.821 through 1.825. That is,
the patent application publication will not reflect the application as
it was amended during the examination process, but will only reflect the
application as recorded in the Office’s PACR database.
Section 1.215(b) provides a mechanism by which applicants may have
assignee information (the name and address of the assignee of the entire
right, title, and interest in an application) included on the patent
application publication. To have assignee information included on the
patent application publication, the applicant must include the assignee
information on the application transmittal sheet or the application data
sheet under § 1.76. Providing assignee information on the application
transmittal sheet or the application data sheet will be treated as an
indication that the assignee information is being provided for inclusion
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on the patent application publication. Providing assignee information on
the application transmittal sheet or the application data sheet does not
substitute for compliance with any requirement of 37 CFR part 3 to have
an assignment recorded by the Office.
If applicant wants to submit assignee information for inclusion on the
patent application publication after filing (i.e., after the application
transmittal sheet or the application data sheet has been filed),
applicant must file a supplemental application data sheet (§ 1.76)
containing the assignee information. This applies to changes to
previously submitted assignee information, as well as assignee
information being provided for the first time. Nevertheless, assignee
information may not be included on the patent application publication
unless this information is provided on the application transmittal sheet
or application data sheet included with the application on filing.
Section 1.215(c) provides a mechanism by which applicants may have the
patent application publication reflect the application as amended during
the examination process (rather than the application information as
recorded in the Office’s PACR database). Section 1.215(c) provides that
the Office will use an applicant-supplied copy of the application
(specification, drawings, and oath or declaration), provided that: (1)
The copy is in compliance with the Office electronic filing system (EFS)
requirements; and (2) the EFS copy is filed within one month of the
actual filing date of the application or fourteen months of the earliest
filing date for which a benefit is sought, whichever is later.
The fourteen-month period differs from the sixteen-month period provided
in § 1.217 for submitting a redacted copy of an application because the
sixteen-month period provided in § 1.217 is not based upon the fourteen-
week publication cycle but is provided for by statute (35 U.S.C. 122(b)
(2)(B)(v)).
Section 1.215(d) provides that if the copy of the application does not
comply with the Office EFS requirements, the Office will publish the
application based upon the application records in the Office’s PACR
database (as provided in § 1.215(a)). If, however, the Office has not
started the publication process, the Office may use an untimely filed
copy of the application supplied by the applicant under § 1.215(c) in
creating the patent application publication.
Section 1.217: Section 1.217(a) implements the provisions of 35 U.S.C.
122(b)(2)(B)(v), and provides that if an applicant has filed
applications in one or more foreign countries, directly or through a
multilateral international agreement, and such foreign-filed
applications or the description of the invention in such foreign-filed
applications is less extensive than the application or description of
the invention in the application filed in the Office, the applicant may
submit a redacted copy of the application filed in the Office for
publication, eliminating any part or description of the invention that
is not also contained in any of the corresponding applications filed in
a foreign country. Section 1.217(a) also provides that the Office will
publish the application as provided in § 1.215(a) unless the applicant
files a redacted copy of the application in compliance with § 1.217
within sixteen months after the earliest filing date for which a benefit
is sought under title 35, United States Code. This sixteen-month period
is provided by statute (35 U.S.C. 122(b)(2)(B)(v)), and as such,
requests for waiver of this sixteen-month period will be denied.
As discussed above, this sixteen-month period provided in § 1.217
differs from the fourteen-month period provided in § 1.215(c) because
the sixteen-month period provided in § 1.217 is not based upon the
fourteen-week publication cycle but is provided for by statute (35
U.S.C. 122(b)(2)(B)(v)). If a redacted copy of an application is
submitted in compliance with § 1.217 but later than four months prior to
the projected publication date, the Office will be required to reprocess
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the patent application publication (for which assembly will have already
started) using the redacted copy of the application provided by
applicant.
Section 1.217(b) provides that the redacted copy of the application must
be submitted in compliance with the Office EFS requirements. Section
1.217(b) also provides that the title of the invention in the redacted
copy of the application must correspond to the title of the application
at the time the redacted copy of the application is submitted to the
Office. The Office uses the title of the invention (among other
information) as provided in an EFS copy of an application to confirm the
identity of the application for which the EFS copy is submitted. Thus,
if a portion of the title has been redacted such that the title (as
redacted) in the EFS copy of the application is different from the title
of the invention for the application as shown in PALM, it will appear
that the redacted EFS copy of the application incorrectly identifies the
application for which the redacted EFS copy is submitted. If an
applicant wants to redact a portion of the title, the applicant must
first submit an amendment to the title of the invention such that it
will correspond to the title as redacted. Section 1.217(b) also provides
that if the redacted copy of the application does not comply with the
Office EFS requirements, the Office will publish the application based
upon the unredacted records in the Office’s PACR database.
Section 1.217(c) provides that the applicant must also concurrently
submit in paper (§ 1.52(a)) to be filed in the application: (1) A
certified copy of each foreign-filed application that corresponds to the
application for which a redacted copy is submitted; (2) a translation of
each such foreign-filed application that is in a language other than
English, and a statement that the translation is accurate; (3) a marked-
up copy of the application showing the redactions in brackets; and (4) a
certification that the redacted copy of the application eliminates only
the part or description of the invention that is not contained in any
application filed in a foreign country, directly or through a
multilateral international agreement, that corresponds to the
application filed in the Office. The provisions of § 1.217(c) are
designed to ensure that any patent application publication based upon a
redacted copy of an application contains the parts and description of
the invention contained in any of the corresponding applications filed
in a foreign country.
Section 1.217(d) provides a mechanism for obtaining an appropriately
redacted copy of the application contents to provide to members of the
public requesting a copy of the file wrapper and contents of the
application. Section 1.217(d) provides that the Office will provide a
complete unredacted copy of the file wrapper and contents of an
application for which a redacted copy was submitted under § 1.217 (upon
payment of a fee) unless the applicant complies with the requirements of
§ 1.217(d). Since the processing required to provide redacted copies of
the application content is the result of an applicant choosing to submit
a redacted copy under § 1.217, it is appropriate to require the
applicant to timely provide appropriate redacted copies of Office
correspondence and applicant submissions, and to pay a processing fee
for the special handling required for these papers, should the applicant
wish to maintain the redacted portions of the application in confidence
prior to the grant of a patent.
Section 1.217(d)(1) provides that the applicant must accompany the
submission required by § 1.217(c) with: (1) A copy of any Office
correspondence previously received by applicant including any desired
redactions, and a second copy of all Office correspondence previously
received by applicant showing the redacted material in brackets; and (2)
a copy of each submission previously filed by the applicant including
any desired redactions, and a second copy of each submission previously
filed by the applicant showing the redacted material in brackets.
Section 1.217(d)(2) provides that the applicant must also: (1) Within
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one month of the date of mailing of any correspondence from the Office,
file a copy of such Office correspondence including any desired
redactions, and a second copy of such Office correspondence showing the
redacted material in brackets; and (2) with each submission by the
applicant, include a copy of such submission including any desired
redactions, and a second copy of such submission showing the redacted
material in brackets. Section 1.217(d)(3) provides that each submission
under § 1.217(d)(1) or § 1.217(d)(2) must also be accompanied by the
processing fee set forth in § 1.17(i) and a certification that the
redactions are limited to the elimination of material that is relevant
only to the part or description of the invention that is not contained
in the redacted copy of the application submitted for publication. If
the applicant fails to comply with these requirements, the Office will
provide a complete unredacted copy of the file wrapper and contents of
the application to any member of the public (upon payment of a fee).
Section 1.217(e) provides that the certificate of mailing or
transmission procedures set forth in provisions of § 1.8 do not apply to
the time periods set forth in § 1.217.
Section 1.219: Section 1.219 implements the provisions of 35 U.S.C.
122(b)(1) that authorize (but do not require) the Office to publish
earlier than at the eighteen-month period set forth in 35 U.S.C. 122(b)
(1) at the request of the applicant. Section 1.219 provides that any
request for early publication must be accompanied by the publication fee
set forth in § 1.18(d). Section 1.219 provides that if the applicant
does not submit a copy of the application in compliance with the Office
EFS requirements, the Office will publish the application based upon the
application records in the Office’s PACR database (as provided in
§ 1.215(a)). Section 1.219 also provides that no consideration will be
given to requests for publication on a certain date (which includes a
request that certain applications be published on the same date), and
such requests will be treated as a request for publication as soon as
possible.
Section 1.221: Section 1.221 provides for voluntary publication of
applications filed before, but pending on, November 29, 2000, and for
requests for republication of applications previously published under
§ 1.211. Applicants may request republication of an application under
§ 1.221 to obtain a patent application publication that: (1) Corrects
immaterial errors or errors not the result of Office mistake; or (2)
reflects the application as amended during prosecution of the
application.
Section 1.221(a) provides that a request for voluntary publication or
republication must include a copy of the application in compliance with
the Office EFS requirements and be accompanied by the publication fee
set forth in § 1.18(d) and the processing fee set forth in § 1.17(i).
Voluntary publication or republication of applications is not mandated
by 35 U.S.C. 122(b)(1). Thus, if a request for voluntary publication or
republication does not comply with the requirements of § 1.221, or the
copy of the application does not comply with the Office EFS
requirements, the Office will not publish the application based upon the
application records in the Office’s PACR database (as provided in
§ 1.215(a)). Rather, the Office will simply not publish the application
and will refund the publication fee (but not the processing fee).
Section 1.221(b) provides that the Office will grant a request for a
corrected or revised patent application publication other than as
provided in § 1.221(a) only when the Office makes a material mistake
which is apparent from Office records. The phrase `material mistake'
means a mistake that affects the public’s ability to appreciate the
technical disclosure of the patent application publication or determine
the scope of the provisional rights that an applicant may seek to
enforce upon issuance of a patent (e.g., error in the claims, serious
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error in a portion of the written description or drawings that is
necessary to support the claims). The Office will permit applicants to
review the bibliographic information contained in the Office's PALM
database via its PAIR system. Therefore, applicants are expected to
review that information and bring errors to the Office's attention at
least fourteen weeks before the projected date of publication. Section
1.221(b) also provides that any request for a corrected or revised
patent application publication other than as provided in § 1.221(a) must
be filed within two months from the date of the patent application
publication, and that this period is not extendable.
Section 1.291: Section 1.291(a)(1) implements the provisions of 35
U.S.C. 122(c), which specify that the Office shall establish appropriate
procedures to ensure that no protest or other form of pre-issuance
opposition to the grant of a patent may be initiated after publication
of the application without the applicant’s express written consent.
Section 1.291 is amended to provide that a protest must be submitted
prior to the date the application was published or the mailing of a
notice of allowance under § 1.311, whichever occurs first.
Section 1.292: Section 1.292(b)(3) is amended to require that any
petition to institute a public use proceeding be submitted prior to the
date the application was published or mailing of a notice of allowance
under § 1.311, whichever occurs first.
Section 1.311: Section 1.311(a) is amended to provide that the sum
specified in the notice of allowance may (in addition to the issue fee)
also include the publication fee, in which case the issue fee and
publication fee (§ 1.211(f)) must both be paid within three months from
the date of mailing of the notice of allowance to avoid abandonment of
the application. Section 1.311(a) is also amended to provide that this
three-month period is not extendable. Section 1.311(b) is amended to
provide that an authorization to charge any of the post-allowance fees
set forth in § 1.18 to a deposit account may be filed in an individual
application only after mailing of the notice of allowance.
Section 1.417: Section 1.417 is added to provide for the submission of
international publications or English language translations of
international applications pursuant to 35 U.S.C. 154(d)(4). This section
sets forth the requirements for the filing of an English language
international publication or translation of an international application
in order to ensure proper handling by the Office. Section 1.417 provides
that such a submission must clearly identify the international
application to which it pertains under § 1.5(a), and unless it is being
submitted pursuant to § 1.494 or § 1.495, must be clearly identified as
a submission pursuant to 35 U.S.C. 154(d)(4). Failure to properly
identify such submissions will result in the English language
international publication or translation of the international
application being processed as the filing of a national application
under 35 U.S.C. 111(a). Additionally, failure to properly identify the
international publication or translation as a submission under 35 U.S.C.
154(d)(4) may cause the Office to be unable to properly track or
retrieve the international publication or translation in relation to its
international application number. Section 1.417 also provides that such
submissions should be marked `Box PCT.'
The submission of an international publication or translation of an
international application for the purposes of national stage entry in
accordance with § 1.494 or § 1.495 may also be relied upon as the
submission for the purposes of 35 U.S.C. 154(d)(4). Likewise, an earlier
filed international publication or translation (submitted for the
purposes of 35 U.S.C. 154(d)(4) and properly identified as such) may
also be relied upon for the purpose of satisfying the requirement of 35
U.S.C. 371(c)(2). If applicant intends to rely on such an earlier filed
international publication or translation, the submission of documents
under § 1.494(f) and § 1.495(g) should include an indication that the
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international publication or translation has been previously submitted
for the purposes of 35 U.S.C. 154(d)(4) to avoid the mailing of either a
Notice of Abandonment (PCT/DO/EO/ 909) indicating that a copy of the
international application was not timely filed, or a Notice of Missing
Requirements (PCT/DO/EO/905) indicating that a translation of the
international application is required. While (as discussed above)
applicants may rely on an earlier filed international publication or
translation for the purposes of national stage entry and processing, the
Office strongly recommends that a second copy of the international
publication or translation be included with the initial national stage
papers in order to ensure the integrity of the first submitted
international publication or translation. Otherwise, processing of the
national stage application may result in the alteration of the
originally filed international publication or translation through, e.g.,
the entry of amendments.
Section 1.494: Section 1.494(f) is amended to exempt a copy of the
international publication or translation of the international
application identified as provided in § 1.417 from the documents that
must be clearly identified as a submission to enter the national stage
under 35 U.S.C. 371 to avoid being considered a submission under 35
U.S.C. 111(a).
Section 1.495: Section 1.495(g) is amended to exempt a copy of the
international publication or translation of the international
application identified as provided in § 1.417 from the documents that
must be clearly identified as a submission to enter the national stage
under 35 U.S.C. 371 to avoid being considered a submission under 35
U.S.C. 111(a).
Part 5:
Section 5.1: Section 5.1(e) is amended to implement the provisions of 35
U.S.C. 122(d), which specify that the application will not be published
under 35 U.S.C. 122(b)(1) if publication or disclosure of the
application would be detrimental to national security. Section 5.1(e)
provides that an application under national security review will not be
published at least until six months from its filing date or three months
from the date the application was referred to a defense agency,
whichever is later. These are the current national security review
screening time frames for foreign filing license purposes. Section
5.1(e) also provides that a national security classified patent
application will not be published under § 1.211 of this chapter or
allowed under § 1.311 of this chapter until the application is
declassified and any secrecy order under § 5.2(a) has been rescinded.
Response to Comments: The Office received twenty-one written comments
(from Intellectual Property Organizations, Businesses, Law Firms, Patent
Practitioners, and others) in response to the notice of proposed
rulemaking. Comments generally in support of a change are not discussed.
The comments and the Office’s responses to the remaining comments
follow:
Comment 1: One comment questioned whether the Office will withdraw its
reservation under PCT Article 64(3), which provides for no publication
of an international application at eighteen months if only the United
States is designated. The comment also questioned whether the Office
will revise its declaration under PCT Article 64(4)(c) in view of the
amendment to 35 U.S.C. 102(e).
Response: The Office's reservation under PCT Article 64(3) and
declaration under PCT Article 64(4)(c) are not germane to the proposed
changes to the rules of practice to implement the eighteen-month
publication provisions of the American Inventors Protection Act of 1999.
The Office will make the appropriate revisions to its reservation under
PCT Article 64(3) and declaration under PCT Article 64(4)(c) in due
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course.
Comment 2: One comment questioned whether a published English language
international application designating the United States is considered a
published application under § 1.9(b).
Response: An English language international application designating the
United States and published under PCT Article 21(2) is not an
application for patent which has been published under 35 U.S.C. 122(b).
Thus, a published English language international application designating
the United States is not considered a published application for purposes
of § 1.9(b).
Comment 3: One comment suggested that the Office should not provide
copies of the file wrapper and contents of published applications
because 35 U.S.C. 122(b) allows for publishing an application, but not
disclosing the entire content of an application file.
Response: 35 U.S.C. 122(b) provides that '[n]o information concerning
published patent applications shall be made available to the public
except as the Director determines,' and that '[n]otwithstanding any
other provision of law, a determination by the Director to release or
not to release information concerning a published patent application
shall be final and nonreviewable.' See 35 U.S.C. 122(b)(1)(B) and (C).
Therefore, the Office has the authority to disclose, or refuse to
disclose, information contained in the file wrapper contents of a
published application as the Office deems appropriate.
Comment 4: Several comments suggested that the Office should not provide
copies of the file wrapper and contents of pending applications at all
or until such time as the Office can produce such a copy from an
electronic copy (rather than the physical application file). The
comments argue that removing the application file wrapper for copying
will result in disruption of the examination process and the loss or
corruption of a number of application files.
Response: The Office is cognizant of the fact that providing copies of
the file wrapper and contents of a pending published application to any
member of the public on request (and payment of a fee) has the potential
to disrupt the examination process or result in corruption of the
application file. If fulfilling copy orders for the file wrapper and
contents of pending published applications proves to be unmanageable,
the Office will revise § 1.14 to require a member of the public
requesting a copy of the file wrapper and contents of a pending
published application to show cause to obtain such a copy.
Comment 5: One comment suggested that § 1.14(b)(2) should be limited to
those international applications that designate the United States.
Response: The suggested revision has not been adopted. For some time,
the Office has revealed status information for any U.S. application
identified in any published patent document, regardless of whether the
document is a foreign patent (e.g., a Japanese patent or a German
patent) or an international application. The only change intended by
§ 1.14(b)(2) is to make the meaning of 'published patent document' more
clear by adding the parenthetical expression `e.g., a U.S. patent, a
U.S. patent application publication, or an international application
publication.'
Comment 6: One comment contained a number of suggestions and questions
on § 1.14(i): (1) PCT Article 38 does not give the Office the authority
to provide access to the examination and search files of a PCT
application as provided in § 1.14(i)(1); (2) how the public would know
that an English translation has been filed (§ 1.14(i)(2)); (3) whether
§ 1.14(i)(3) requires that the applicant have entered the national stage
under 35 U.S.C. 371 (and what file would be available if no United
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States file wrapper has been prepared); and (4) § 1.14(i)(5) appears to
be in conflict with § 1.14(i)(1)(iii).
Response: Article 38 prohibits direct access to the examination file of
an international application by a third party. Section 1.14(i)(1)
concerns the situation in which the United States acted as the
International Preliminary Examining Authority (IPEA), the United States
was elected, and the International Preliminary Examination Report (IPER)
has issued. PCT Rule 94 provides authority for the Office to provide
copies in these situations. PCT Rule 94.2 provides that after issuance
of the IPER, the IPEA shall provide copies of the examination file (or
any part thereof) to the elected offices upon request, and Rule 94.3
allows the elected offices to provide access to any document in its
files. Therefore, upon receipt of a request under § 1.14(i)(1) by a
third party for a copy of an examination file in an international
application that satisfies the requirements of § 1.14(i)(1)(iii), the
United States Elected Office will request that the United States IPEA
make a copy of its examination file, and the United States Elected
Office will then provide a copy of such file to the requesting party.
The Office will not provide general notification to the public of the
filing of translations under 35 U.S.C. 154. Under 35 U.S.C. 154, it is
the responsibility of the applicant to notify any possible infringers
for the purpose of obtaining provisional rights.
Section 1.14(i)(3) does not require that the applicant have entered the
national stage under 35 U.S.C. 371. Section 1.14(i)(3) concerns access
to international application home and search files (access to the
examination files being prohibited by § 1.14(i)(5)).
Sections 1.14(i)(1)(iii) and 1.14(i)(5) are not in conflict. Section
1.14(i)(1)(iii) concerns the situations in which the United States acted
as the International Preliminary Examining Authority (IPEA), the United
States was elected, and the International Preliminary Examination Report
(IPER) has issued (as discussed above). Section § 1.14(i)(5) concerns
direct access to the examination files which is prohibited by PCT
Article 38.
Comment 7: One comment suggested that the phrase `may be provided' in
§ 1.14(c)(1), (c)(2), and (e) should be changed to `will be provided' for
consistency with § 1.13. Another comment suggested that § 1.14(c)(1) and
(c)(2) be clarified as to what (the application-as-filed or the entire
contents of the file wrapper) may be supplied, and whether the phrase
`may be provided' is intended to mean that supplying such is optional or
discretionary on the part of the Office.
Response: The suggestion has not been adopted. The phrase `may be' is
used throughout §§ 1.11, 1.12, and 1.14 and is retained in § 1.14 for
consistency and because `may be' is the appropriate terminology. For
example, § 1.14(c)(2) provides that a copy of the specification,
drawings, and all papers related to a published patent application may
be provided if a written request with the appropriate fee are filed. The
requested copy will normally be provided, but if the file is not
available because it is being reviewed by a patent examiner or is at the
publishing contractor for printing a patent, the requested copy may be
only provided at a delayed date. Furthermore, in the rare event that the
file is lost (and a replacement copy cannot be obtained), the requested
copy cannot be made and will not be provided.
Comment 8: Several comments suggested that the surcharge for the
unintentionally delayed submission of a priority claim was excessive.
One comment suggested that this surcharge be a nominal ($5) charge or in
line with the publication fee ($300).
Response: If a significant number of unintentionally delayed claims
under 35 U.S.C. 119, 120, 121, or 365(a) or (c) are presented, the
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Office will have difficulty scheduling applications for publication.
Thus, the surcharge amount must be sufficient to provide an incentive
for applicant to exercise care to ensure that any desired claim under 35
U.S.C. 119, 120, 121, or 365(a) or (c) is timely presented. The proposed
surcharge amount tracks the fee amount for a petition to revive an
unintentionally abandoned application (35 U.S.C. 41(a)(7)), and this fee
amount is considered an appropriate surcharge for a petition to accept
an unintentionally delayed claim under 35 U.S.C. 119, 120, 121, or
365(a) or (c). Since the fiscal year 2001 fee amount for a petition to
revive an unintentionally abandoned application (35 U.S.C. 41(a)(7)) is
$1,240 (§ 1.17(m)), this fee amount ($1,240) is considered an
appropriate surcharge for a petition to accept an unintentionally
delayed claim under 35 U.S.C. 119, 120, 121, or 365(a) or (c) (§ 1.17(t)).
Comment 9: Several comments suggested that the $300 publication fee was
excessive. One comment argued that a publication fee should not be
imposed on applicants who do not want publication but do not meet the
requirements to request nonpublication under §213. Several comments
suggested that the publication fee (cost) be included in the other
application (filing or issue) fees. One comment suggested that the
publication fee be reduced by fifty percent for small entities. Another
comment suggested that § 4506 of the American Inventors Protection Act
of 1999 did not authorize the Office to charge a publication fee in
those situations in which an application is issued as a patent and
subsequently published as a patent application publication.
Response: Section 4506 of the American Inventors Protection Act of 1999
requires the Office to `recover the cost of early publication required
by the amendment [to 35 U.S.C. 122] by charging a separate publication
fee.' Section 4506 of the American Inventors Protection Act of 1999
does not provide for the Office to: (1) Not charge the publication fee
to those applicants who would prefer not to have their applications
published under 35 U.S.C. 122(b); (2) build the cost of publication into
other application (filing or issue) fees; or (3) apply the small entity
discount (which otherwise applies only to fees under 35 U.S.C. 41(a) or
(b)) to the publication fee (cf. 35 U.S.C. 132(b)). Finally, even when
an application is issued as a patent and subsequently published as a
patent application publication (because it issues too late in the
publication process to stop publication), the cost of such a publication
is part of the cost of early publication required by 35 U.S.C. 122(b),
and § 4506 of the American Inventors Protection Act of 1999 directs the
Office to also recover that cost by charging a separate publication fee.
Comment 10: A comment supporting the changes to §§ 1.52(d) and 1.78(a)
(5) concerning the translation requirement for a non-English language
provisional application suggested that the Office clarify whether the
translation of the provisional application is to be filed in the
provisional application or in any nonprovisional application claiming
the benefit of the provisional application.
Response: Section 1.78(a)(5) provides that if a provisional application
is filed in a language other than English, any nonprovisional
application claiming the benefit of the provisional application 'must
contain * * * an English language translation of the non-English
language provisional application and a statement that the translation is
accurate.' Thus, § 1.78(a)(5) is clear that the English-language
translation of the provisional application must be filed in any
nonprovisional application claiming the benefit of the provisional
application.
Comment 11: One comment questioned whether an applicant can withdraw a
priority claim to change the date on which the application will be
published, noting that withdrawal of priority claims is provided for in
PCT Rule 90bis.3.
Response: The Office will recalculate the publication date in response
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to any change (withdrawal or addition) in priority claims. If this
recalculation occurs earlier than nine weeks prior to the previously
calculated publication date, the Office will reschedule the application
for publication based upon the recalculated publication date. If this
recalculation occurs later than nine weeks prior to the previously
calculated publication date, the Office will not reschedule the
application for publication based upon the recalculated publication
date.
Comment 12: One comment requested clarification of the meaning of the
term `original' in § 1.55. `original' application is any application other
than a reissue application, which includes continuing applications and
applications claiming the benefit of a foreign-filed application. See
Guidelines Concerning the Implementation of Changes to 35 U.S.C. 102(g)
and 103 and the Interpretation of the Term 'Original Application' in the
American Inventors Protection Act of 1999, 1233 Off. Gaz. Pat. Office
54, 56 (Apr. 11, 2000).
Comment 13: One comment suggested that the time periods set forth in
§§ 1.55 and 1.78 should not apply to an application in which a
nonpublication request under § 1.213 is filed.
Response: A nonpublication request may be rescinded at any time. See 35
U.S.C. 122(b)(2)(B)(ii) and § 1.213(b). Thus, the Office must treat an
application in which a nonpublication request under § 1.213 is filed the
same as other applications for purposes of priority claims as well as
review of the patent application drawing and paper (specification)
during pre-examination processing of the application.
Comment 14: One comment suggested that the time periods set forth in
§§ 1.55 and 1.78 unfairly limit an applicant's ability to delay presenting
priority claims until the claim is necessary to avoid the prior art.
Response: An applicant's desire to delay presenting priority claims
until the claim is necessary to avoid the prior art is subordinate to
the need for the timely presentation of priority claims for publication
promptly after eighteen months from the earliest filing date for which a
benefit is claimed. The Office previously indicated that eighteen-month
publication (if adopted) would require a drastic change in the practice
of the presentation of priority claims filed. See General Agreement on
Tariffs & Trade/North American Free Trade Agreement Student’s Handbook
at 6 (question 3), U.S. Patent and Trademark Office (1995).
Comment 15: One comment suggested that the time periods set forth in
§§ 1.55 and 1.78 should not apply to the addition of priority claims in
the situation in which the application is published within six months of
its actual filing date, since the public has not been harmed by the untimely
priority claim.
Response: The Office will not be able to include such untimely priority
claims on the patent application publication (and the absence of a
priority claim is not considered a `material mistake' warranting
republication of the patent application publication under § 1.221(b)).
Thus, the public will be harmed by such an untimely presentation of a
priority claim because the patent application publication will not
contain the priority claim.
Comment 16: One comment suggested that if priority claims are not
required until the later of four months from the actual filing date or
sixteen months from the earliest claimed priority date, a fourteen-week
publication cycle would be too long since the public could not rely upon
an application being published until twenty months from its earliest
claimed priority date.
Response: The Office plans to publish applications on the first Thursday
after the date that is eighteen months after the filing date of the
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application (or if the application claims the benefit of an earlier
filing date, the first Thursday after the date that is eighteen months
after the earliest filing date for which a benefit is sought). Thus, the
Office will schedule applications to begin the publication cycle on the
date that is fourteen weeks before that date. If a priority claim under
35 U.S.C. 119, 120, 121, or 365(a) or (c) is filed within fourteen weeks
of the date eighteen months after the earliest filing date for which a
benefit is sought, the Office will not be able to publish the
application on the first Thursday after the date that is eighteen months
after the earliest filing date for which a benefit is sought because it
requires a fourteen-week cycle to prepare an application for publication
in view of the volume of applications to be published and preparation
required for the publication.
Comment 17: One comment suggested that the phrase `or intellectual
property authority' be added after `country' in § 1.55(c) for
consistency with § 1.55(a)(1)(i).
Response: The parenthetical `(or intellectual property authority)' has
been added after `country' in § 1.55(c) for consistency with § 1.55(a)
(1)(i).
Comment 18: One comment suggested that the limitation to `500 words' in
§ 1.72(a) was in conflict with PCT Rule 4.3, which specifies that the
`title of the invention shall be short (preferable from two to seven
words when in English or translated into English. * * *'
Response: Section 1.72(a) requires that the title be limited to 500
characters (not words). PCT Rule 4.3 requires that `title of the
invention shall be short,' and a title that exceeds 500 characters is
not short. Therefore, § 1.72(a) does not conflict with PCT Rule 4.3.
Comment 19: One comment suggested that the Office clarify § 1.72(a) to
specify what characters can be included in the title of an application.
Response: Section 1.72(a) as adopted does not prohibit non-keyboard
character (images) in a title. Section 1.72(a) as adopted, however,
provides that characters that cannot be captured and recorded in the
Office’s automated information systems (e.g., PALM) may not be reflected
in the Office's records in such systems or in documents created by the
Office. The Office will post the set of characters that are capable of
being captured and recorded in PALM on its Internet Web site. The Office
will revise the set of characters posted on its Internet Web site as
characters are added to this set as a result of improvements to the
Office’s automated information systems. Applicants are strongly
encouraged to restrict the characters in titles to characters in the set
of characters indicated as capable of capture and recordation in PALM.
Comment 20: One comment questioned why the Office would use the title of
the invention (which does not uniquely identify an application) as the
key for associating an EFS copy of an application with the application
for which the copy is being submitted.
Response: The Office uses the application number as the primary key for
associating an EFS copy of an application with the application for which
the copy is being submitted. In view of the number of applications filed
each day, it is not practical to use the filing date to verify that the
application number is correct (a transposition of the last four digits
of the application number will not be revealed when compared to the
filing date). The Office may also use other information to verify that
the application number correctly indicates the application for which an
EFS copy is being submitted.
Comment 21: One comment questioned how the time period provision of
§ 1.78(a)(2) applied to international applications.
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Response: The time period for claiming priority of a prior application
in an international application is set forth in the PCT and the
Regulations under the PCT.
Comment 22: One comment suggested that the Office clarify whether the
requirement in § 1.78(a)(2) that the first sentence of an application
indicate whether an international application was published in English
applies to international applications filed before November 29, 2000.
Response: The requirement applies to any application filed on or after
November 29, 2000, that claims the benefit of a prior international
application, regardless of the filing date of the international
application for which a benefit is claimed.
Comment 23: One comment suggested that the expression `[c]olor drawings
are not permitted in international applications (see PCT Rule 11.13)' in
§ 1.84 is redundant, since the PCT Rule is sufficient authority.
Response: The rules of practice contain a number of provisions that
reiterate provisions of the PCT Articles and Regulations, as well as
title 35, U.S.C. While such reiterative provisions are (strictly
speaking) redundant, they are included in the rules of practice for
advisory purposes. If there is a change to the PCT Articles or
Regulations (or title 35, U.S.C.), it is likely that the Office's rules
of practice will require conforming changes in any event.
Comment 24: One comment questioned whether there will be an Official
Gazette publication with a figure when an application issues as a
patent.
Response: The Office plans to continue publishing an Official Gazette
containing the weekly patent issues with (among other things) a
representative drawing figure.
Comment 25: One comment suggested that if the Office considers drawings
in compliance with § 1.84 necessary for publication, the Office should
reduce the formality requirements of § 1.84.
Response: As discussed above, the Office plans to enforce the
requirements of § 1.84 necessary for creating a publication (the patent
application publication) containing drawings of sufficient quality for
the patent application publication to be routinely used as a prior art
document.
Comment 26: One comment suggested that the Office should not require
drawings in compliance with § 1.84 until fourteen months from the
earliest claimed priority date. Another comment suggested that the
Office release applications containing drawings that do not comply with
§ 1.84 to the Technology Center, flag the PACR record of such
applications, and simply add the later-filed drawings in compliance with
§ 1.84 to the PACR database for publication.
Response: Since the eighteen-month period is not measured from an
application’s actual filing date, but from the earliest filing date for
which a benefit is claimed, many applications will enter the publication
cycle before being transferred from OIPE to the Technology Centers. The
Office would need to track which applications have been released to the
Technology Center without drawings in compliance with § 1.84 and issue a
notice requiring drawings in compliance with § 1.84 during the
examination process to ensure that drawings in compliance with § 1.84
are filed before an application is scheduled to enter the publication
cycle. Issuing such a notice during the examination process (when the
Office is issuing Office actions) would result in confusion (likelihood
of two different time periods running simultaneously) and would
interfere with the Office’s ability to meet the time frames specified in
35 U.S.C. 154(b)(1)(A)(i) and (ii).
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Comment 27: Several comments opposed the change to § 1.85 requiring
drawings in compliance with § 1.84 before an application will be
released to the Technology Center for examination. Several comments
argued that this change will increase up-front costs for patent
applicants. One comment suggested a two-tiered review: one level for
publication and a second level for printing in a patent.
Response: The patent statute no longer defers publication of an
application until patent grant. Thus, the Office can no longer permit
applicants to defer the submission of publication quality drawings (and
the cost of preparing such drawings) until an application is allowed.
Since the patent application publication will become the primary prior
art and technology dissemination document, there is no point to
providing for higher drawing quality in patents than in patent
application publications.
Comment 28: Several comments suggested that § 1.98(a)(2)(ii) not require
a copy of a cited copending application, especially since the Office has
an electronic database containing copies of applications as filed.
Another comment also argued that this provision in combination with
§ 1.14(c)(2) will allow third parties to obtain a copy of any cited
copending application causing: (1) The cited application to become a
publication that may bar the filing of the cited application in foreign
countries; (2) the disclosure of trade secrets from the cited
application (which may have been abandoned prior to its scheduled
publication date); and (3) an increase in paper submissions to the
Office.
Response: The Office proposed amending § 1.98(a)(2)(ii) to require a
copy of any cited copending application in a rulemaking to implement the
Patent Business Goals. See Changes to Implement the Patent Business
Goals, 64 FR at 53833, 1228 Off. Gaz. Pat. Office at 18. The comments on
this proposed change to § 1.98 are addressed in the final rule to
implement the Patent Business Goals.
Comment 29: One comment questioned whether § 1.99 is consistent with the
requirements of 35 U.S.C. 122(c) (which instruct the Office to ensure
that no protest or opposition be initiated after publication without the
express written consent of the applicant), and suggested that the Office
not adopt this proposed rule.
Response: 35 U.S.C. 122(c) provides that the Office `shall establish
appropriate procedures to ensure that no protest or other form of pre-
issuance opposition to the grant of a patent on an application may be
initiated after publication of the application without the express
written consent of the applicant.' A submission under § 1.99, however,
is different from either an 'opposition' proceeding or a 'protest' that
would fall under the provisions of 35 U.S.C. 122(c).
Unlike a third-party submission of patents and publications under
§ 1.99, an opposition is a very complex, inter partes proceeding. Examples
of oppositions include trademark oppositions and foreign patent office
oppositions.
Trademark oppositions, conducted before the Trademark Trial and Appeal
Board, are full adversarial proceedings similar to a trial, complete
with pleadings, notice, discovery, stipulations, motions, briefs,
evidence, and opportunity for oral argument. A trademark opposition
proceeding is governed by the Federal Rules of Civil Procedure, except
as otherwise provided. 37 CFR 2.101 through 2.107 and 2.116 through
2.136, sections 1503 through 1503.05 of the Trademark Manual of
Examining Procedure, and Chapters 300 through 800 of the Trademark Trial
And Appeal Board Manual of Procedure set forth an overview of the
complex nature of trademark opposition proceedings. In view of the
similarity to an inter partes civil proceeding, it is clear that
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trademark oppositions are much different in character compared to a
third-party submission of patents and publications under § 1.99 (which
bars a third party from even filing a paper arguing against the
patentability of an application).
Similar to the Office’s trademark opposition procedure, oppositions in
patent cases in both the Japanese Patent Office (JPO) and the European
Patent Office (EPO) are lengthy inter partes proceedings in which a
third party has extensive participation in challenging the grant of a
patent. Both the EPO and the JPO allow for evidence, multiple briefs, an
oral hearing, and appeals, and the procedures to be followed are very
technical and complex. See Chapter 66 (Patent Opposition System) of the
JPO’s Manual of Appeal and Trial Proceedings; see also Part D Opposition
Procedure of Guidelines for Examination in the European Patent Office.
Likewise, a third-party submission of patents and publications under
§ 1.99 is not a `protest.' As generally understood, a protest is `a
complaint, objection, or display of unwillingness usually to an idea or
course of action.' See Merriam Webster's Collegiate Dictionary (1993).
Under that commonly understood meaning, a third-party submission of
patents and publications under § 1.99 does not rise to the level of a
protest because § 1.99 does not permit the filing of any complaint or
objection. No form of adversarial argument is allowed under § 1.99.
Instead, a third party is limited to merely submitting prior art without
any corresponding commentary.
The Office does have an existing regulation (§ 1.291) entitled:
“Protests by the public against pending applications.” Under § 1.291, a
member of the public may file a protest in a pending application, which
protest comprises: (1) A list of the prior art references or other
information relied upon; (2) an explanation of the relevance of each
listed item; (3) a copy of each listed item; and (4) an English
translation of each item, if necessary. See § 1.291(b). In direct
contrast to a protest under § 1.291, however, § 1.99 does not permit the
third party to transmit any commentary or adversarial arguments
objecting to a patent application. Rather, § 1.99 is structured so as to
avoid compromising the objectivity of the ex parte character of the
examination process.
Only patents and publications (i.e., prior art documents that are public
information that are theoretically available to the examiner and which
the Office would discover on its own in an ideal world) may be supplied
to the examiner in a submission under § 1.99. As such, the bare
submission of patents and publications is not a protest any more than
the submission of an information disclosure statement under §§ 1.97 and
1.98 by the patent applicant is a `protest.' In addition, patents and
publications may be submitted for various reasons: Individuals may wish
to submit patents or publications to help the examiner understand the
technology or the appropriate field of search. Therefore, third-party
submission of patents and publications under § 1.99 is qualitatively
different from a protest under § 1.291.
Title 35, U.S.C., provides that the Office may issue a patent only if it
appears that the applicant is entitled to a patent in view of the prior
art (35 U.S.C. 102 and 103). 35 U.S.C. 122(c) does not disqualify prior
art simply because that prior art came to the attention of the Office
through a third party. Thus, the Office interprets `protest or
opposition' in 35 U.S.C. 122(c) to mean that the Office is to ensure
that no third party is given the ability (or right) to have input on the
examination of the application after publication and argue against the
applicatio's patentability. Section 1.99 simply sets forth a procedure
under which a third party can bring prior art relevant to a published
application to the attention of the Office. As an important safeguard
for the rights of the applicant, it does not give the third party the
ability or right to participate in the examination of the application as
a result of such prior art being brought to the attention of the Office.
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Accordingly, § 1.99 will improve the quality of examination and at the
same time will ensure that no third parties enter written, adversarial
arguments, thereby coloring the ex parte process.
Comment 30: One comment suggested that the limitations in § 1.99 do not
adequately protect the applicant from misuse of eighteen-month
publication by third parties because third parties may submit
information directly to the applicant (or the applicant's
representative), who in turn may be obligated under § 1.56 to disclose
the information to the Office. The comment suggested amending § 1.56 to
exempt persons associated with an application from considering
information received from a third party.
Response: The Office did not propose changes to the provisions of
§1.56. Given the ex parte nature of the examination of an application for
patent, the obligations placed on an applicant under § 1.56 are
paramount to that examination. Therefore, the Office considers it
inappropriate to alter the provisions of § 1.56 simply because eighteen-
month publication may result in prior art being brought to an
applicant’s attention at an inopportune point in the examination
process.
Comment 31: Several comments suggested that § 1.99 be amended to permit
third parties to provide explanations as to the relevant parts of the
patents or publications, since such explanations may be necessary in the
case of a complex or voluminous patent or publication. Another comment
suggested that since § 1.99(b)(4) permits translations of the necessary
and pertinent parts of non-English language publications, § 1.99 should
permit markings on the necessary and pertinent parts of English language
publications. Another comment also suggested that examiners should be
required to consider patents and publications submitted in compliance
with § 1.99.
Response: To ensure that a third-party submission under § 1.99 does not
amount to a protest or other opposition, the Office cannot permit the
third party to either: (1) Provide explanations (e.g., as to how the
patents or publications render the claims unpatentable) with the patents
and publications; or (2) have the right to insist that the Office
“consider” any of the patents or publications submitted. The third
party, however, may submit redacted versions of a patent or publication
containing only the most relevant portions of the patent or publication.
Comment 32: One comment suggested that the rules of practice should
encourage third parties to submit prior art to the Office (especially
the computer software and business methods areas), and that the $180 fee
(§ 1.17(p)) for a third-party submission will be contrary to the public
interest by discouraging third parties from submitting prior art. The
comment suggested an alternative fee structure based upon the nature of
the third party (small entity, non-small entity) or nature of the
submission (non-patent publications, number of patents or publications).
Response: 35 U.S.C. 41(d) authorizes the Office to establish fees to
recover the estimated average cost of providing services or products not
otherwise provided for. The Office has recently lowered the fee set
forth in § 1.17(p) to $180, which is set at a fee amount to recover the
aggregate costs of handling and reviewing the information (patents and
publications) brought to the attention of the Office subsequent to the
issuance of a first Office action. Since the nature of the third party
(small entity, non-small entity), or nature of the submission (non-
patent publications), or nature of the technology of the submission does
not impact this cost, 35 U.S.C. 41(d) does not authorize the Office to
vary the fee based upon these factors (and § 1.99 places a limit on the
number of patents or publications in the submission).
Comment 33: Several comments suggested that § 1.99 include the following
provisions to avoid becoming a means for third parties to harass the
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applicant or disrupt the examination process: (1) Require that the third
party provide evidence that it has served the information being
submitted on the applicant (rather than expecting the Office to do so);
(2) require the third party to declare (under oath or declaration)
whether he/she is submitting the information pursuant to an agency
relationship (and, if so, to identify the real party in interest); and
(3) permit the third party to submit only five (rather than twenty)
patents or publications and to screen the information to eliminate
patents or publications that have already been cited in the application.
Response: Section 1.99(c) requires that the submission be served on the
applicant in compliance with § 1.248. Section 1.248 requires that: (1)
Service be made by the third party, not the Office (§ 1.248(a)); and (2)
the third party provide evidence that it has served the information
being submitted on the applicant (1.248(b)).
Section 1.99 as adopted limits the number of patents and publications in
such a submission to ten (rather than twenty). Nevertheless, if a patent
or publication is highly probative, it would not be in the third party’s
interest to include such a patent or publication in a submission
containing even ten patents or publications (since the third party
cannot provide any explanation with the submission).
The Office considers further restrictions on the number of patents or
publications in a submission under § 1.99 to be unnecessary. Since the
third party has no ability or right to have input on what will happen
during the examination of the application as a result of the submission
under § 1.99, the real party in interest is of no concern. Finally, the
Office plans (as discussed above) to screen submissions under § 1.99 to
determine whether they are limited to patents and publications before
the submission is placed in the file of the application and forwarded to
the examiner, and to remove any explanations or information (other than
patents and publications) from the submission before it is placed in the
file of the application and forwarded to the examiner.
Comment 34: One comment also suggested that the Office clarify the
condition (e.g., delay was `unavoidable') under which patents and
printed publications submitted later than two months from the date of
publication of the application or prior to the mailing of a notice of
allowance (whichever is earlier) will be considered.
Response: A submission under § 1.99 later than the period specified in
§ 1.99(e) is permitted only when the patents or publications could not
have been submitted to the Office earlier (e.g., an amendment submitted
in the published application after publication changes the scope of the
claims to an extent that could not reasonably have been anticipated by a
person reviewing the published application during the period specified
in § 1.99(e)).
Comment 35: One comment suggested that third parties should be given
three (rather than two) months from the date of publication of the
application or prior to the mailing of a notice of allowance, whichever
is later (rather than whichever is earlier) to submit patents or
publications under § 1.99.
Response: The time period in § 1.99 balances the desirability of
considering the best prior art during examination of an application with
the need to avoid undue interference with the examination of the
application. The Office considers a time period of two months from the
date of publication of the application or prior to the mailing of a
notice of allowance, whichever is earlier, as striking a better balance
between these interests.
Comment 36: One comment questioned how the time period specified in
§ 1.99(e) would apply to an international application.
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Response: The submission must be filed within two months of the
publication of the application under 35 U.S.C. 122(b), and not the IB
publication, or prior to the mailing of a notice of allowance, whichever
is earlier.
Comment 37: One comment contained a number of questions and suggestions
concerning § 1.130: (1) § 1.130 does not address the change to 35 U.S.C.
103(c) in § 4807 of the American Inventors Protection Act of 1999 and
has a confusing heading; (2) the requirement for an oath or declaration
that `the application or patent under reexamination and patent or
published application are currently owned by the same party' is
confusingly written; (3) it is not clear who must make the required oath
or declaration under § 1.130(a)(2); and (4) it is not clear why such an
oath or declaration is necessary since this information is available in
the terminal disclaimer and assignments.
Response: Section 1.130 was adopted in September of 1996 to address
those situations in which: (1) The rejection in an application or patent
under reexamination to be overcome is a rejection under 35 U.S.C. 103 in
view of a U.S. patent which is not prior art under 35 U.S.C. 102(b); (2)
the inventions defined by the claims in the application or patent under
reexamination and by the claims in the U.S. patent are not identical but
are not patentably distinct; and (3) the inventions are owned by the
same party. See MPEP 718; see also Miscellaneous Changes in Patent
Practice, 61 FR at 42795, 1190 Off. Gaz. Pat. Office at 71. Section
1.130 does not address the change to 35 U.S.C. 103(c) in § 4807 of the
American Inventors Protection Act of 1999 (and appears to have a
confusing heading) because § 1.130 is not directed to implementing the
provisions of 35 U.S.C. 103(c).
The phrase `application or patent under reexamination and patent or
published application' is designed to cover four situations: (1) The
rejection of a claim in an application on the basis of a commonly
assigned patent; (2) the rejection of a claim in an application on the
basis of a commonly assigned published application; (3) the rejection of
a claim in a patent under reexamination on the basis of a commonly
assigned patent; and (4) the rejection of a claim in a patent under
reexamination on the basis of a commonly assigned published application.
The oath or declaration under § 1.130(a)(2) may be signed by the
inventor(s), a registered practitioner of record, or the assignee of the
entire interest. See MPEP 718.
Section 1.130 requires such an oath or declaration because the assignee
information in the terminal disclaimer or recorded assignments may not
be current, and the applicant is in the best position to verify that the
application or patent under reexamination and patent or published
application are currently owned by the same party.
Comment 38: One comment suggested that the second sentence of § 1.131 is
unnecessary and inappropriately omits any reference to 35 U.S.C. 102(a),
and that the phrase `by reference to acts' appears to have been
inadvertently omitted in the subsequent two sentences.
Response: The second sentence of § 1.131(a) provides that the effective
date of a U.S. patent, U.S. patent application publication, or
international application publication under PCT Article 21(2) is the
earlier of its publication date or the date that it is effective as a
reference under 35 U.S.C. 102(e). While the second sentence of § 1.131
is technically unnecessary, it serves as a reminder that the effective
date of a U.S. patent, U.S. patent application publication, or
international application publication under PCT Article 21(2), for prior
art purposes, may be earlier than its publication date (i.e., its
effective date under 35 U.S.C. 102(a)). In addition, the phrase “by
reference to acts” has not been omitted in the subsequent two sentences
of § 1.131. See § 1.131(a)(2)(1995)-(2000).
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Comment 39: One comment suggested that § 1.132 be revised to permit an
oath or declaration under § 1.132 to traverse a rejection even if the
rejection is based upon a patent or application to another that claims
the same patentable invention. Another comment suggested that § 1.132 be
revised to permit an oath or declaration under § 1.132 to traverse a
rejection even if the rejection is based upon a published application to
another that claims the same patentable invention.
Response: Section 1.132 as adopted provides that when any claim of an
application or a patent under reexamination is rejected or objected to,
any evidence submitted to traverse the rejection or objection on a basis
not otherwise provided for must be by way of an oath or declaration
under § 1.132.
Comment 40: One comment suggested that the reference in § 1.137(d)(2)
requiring that a terminal disclaimer also apply to utility or plant
applications filed after June 8, 1995, is unnecessary.
Response: Section 1.137(d)(2) as adopted provides that such a terminal
disclaimer also apply to utility or plant applications filed before (not
after) June 8, 1995.
Comment 41: One comment suggested that the requirement for a terminal
disclaimer in an application abandoned due to the applicant's failure to
timely notify the Office of a foreign filing was unfair because such
abandonment will not delay prosecution of the application.
Response: Section 1.137(d) does not require a terminal disclaimer for a
utility or plant application filed on or after June 8, 1995, and the
eighteen-month publication provisions of the American Inventors
Protection Act of 1999 apply only to utility or plant applications filed
on or after November 29, 2000.
Comment 42: One comment suggested that the provisions of § 1.137(f)
should include punitive measures to avoid frivolous or fraudulent
nonpublication requests, since an applicant should make a nonpublication
request only when positive that an application will not be filed in a
foreign country, and would be seriously negligent to intentionally make
such a nonpublication request, subsequently file in a foreign country,
and then fail to satisfy his or her obligation to timely notify the
Office that a corresponding application has been filed in a foreign
country. The comment suggested similar treatment for applications for
which a redacted copy was submitted for publication, and the redacted
copy improperly omitted portions of the application.
Response: Since an applicant would have to be `seriously negligent' to
submit a nonpublication request on filing, subsequently file a
corresponding application in a foreign country, and then unintentionally
fail to timely notify the Office that a corresponding application has
been filed in a foreign country, the Office expects few petitions to
revive an application under the provisions of § 1.137(f). If an
applicant intentionally (or fraudulently) delays notifying the Office
that a corresponding application has been filed in a foreign country,
the applicant cannot revive the application under § 1.137 (or if revival
is obtained on the basis of improper statements, such revival will not
likely survive court review during any attempt to enforce the patent).
An applicant who intentionally submits an improperly redacted copy of an
application for publication is not dealing with the Office consistent
with the duty of candor and good faith (§ 1.56), and will likely meet a
similar fate when attempting to enforce any patent resulting from the
application.
Comment 43: One comment suggested that the language of § 1.137(g) does
not take into account the amendment to 35 U.S.C. 119(e) in § 4801(b) of
the American Inventors Protection Act of 1999.
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Response: Section 1.137(g) contains the phrase “[s]ubject to the
provisions of 35 U.S.C. 119(e)(3) and § 1.7(b),” to take into account
the amendment to 35 U.S.C. 119(e) in § 4801(b) of the American Inventors
Protection Act of 1999.
Comment 44: One comment suggested that the Office create a special box
to which an express abandonment being made to avoid publication are to
be mailed to allow `last minute' express abandonments to achieve their
goal of avoiding publication.
Response: Petitions under § 1.138 should be addressed to: Box PGPUB-
ABN. While addressing a petition under § 1.138 to Box PGPUB-ABN will
increase the chances of such petition being received by the appropriate
officials in sufficient time to avoid publication of an application, it
is unlikely that a petition under § 1.138 filed within four weeks of the
projected date of publication will be effective to avoid publication
under any circumstance. Thus, applicants should not rely upon Box
PGPUB-ABN as permitting `last minute' express abandonments to achieve
their goal of avoiding publication.
Comment 45: One comment suggested that eighteen-month publication will
benefit only large companies since small corporations and independent
inventors rely upon their applications being maintained in confidence,
and that eighteen-month publication does not promote the useful arts and
sciences as to small corporations and independent inventors who rely
upon their applications being maintained in confidence. Another comment
suggested that eighteen-month publication will benefit only large
companies to the detriment of small corporations and independent
inventors, and a patent application should be maintained in confidence
until a patent is granted.
Response: The proposed changes to the rules of practice concern how (and
not whether) the Office will implement the eighteen-month publication
provisions of the American Inventors Protection Act of 1999. In any
event, the eighteen-month publication provisions of the American
Inventors Protection Act of 1999 permit small corporations and
independent inventors (or any applicant) who do not file counterpart
foreign or international applications (which are subject to eighteen-
month publication) to `opt-out' of eighteen-month publication (§ 1.213),
and provide provisional rights protection (35 U.S.C. 154(d)) to those
who do not or cannot `opt-out' of eighteen-month publication.
Comment 46: One comment suggested that the eighteen-month period for
publication of an application should not include a prior application for
which the application claims a benefit as a continuation-in-part
application.
Response: 35 U.S.C. 122(b) provides for publication at eighteen months
`from the earliest filing date for which a benefit is sought under this
title.' Thus, 35 U.S.C. 122(b) provides that this eighteen-month period
is measured from the earliest claimed filing date, whether the benefit
of that filing date is claimed as a continuation, divisional, or
continuation-in-part application.
Comment 47: Several comments suggested that it is inefficient and
inappropriate to (re)publish an international application if the
international application has been published by the IB under PCT Article
21 in English. One comment suggested that PCT Article 29 and 35 U.S.C.
374 equate the IB publication of an international application to the
publication of the application under 35 U.S.C. 122(b). Another comment
suggested that if the Office means to publish an international
application even if the international application has been published by
the IB under PCT Article 21 in English, the Office should amend §
1.211(a) to explicitly state as much.
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Response: The IB publication of an international application will not be
included in the Office’s patent application publication search database.
The Office must (re)publish international applications that entered the
national stage to place these applications into its patent application
publication search database. The benefit gained by ensuring that these
prior art documents will be included in the Office’s patent application
publication search database outweighs the cost of (re)publishing these
applications.
Since § 1.211(a) states that `each international application in
compliance with 35 U.S.C. 371 will be published promptly 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'. No
amendment to § 1.211(a) is necessary for it to explicitly state that the
Office will publish an international application that is in compliance
with 35 U.S.C. 371 (regardless of whether the international application
has been published by the IB under PCT Article 21 in English).
Comment 48: One comment suggested that the Office clarify the phrase
“sufficient time” in § 1.211(a) so that applicants in the same
situations will be treated the same.
Response: The Office cannot remove an application from the publication
process later than two weeks from the projected date of publication.
Thus, the phrase`sufficient time' means that the application must issue
as a patent at least two weeks before its projected publication date.
Section 1.211(a) does not include a specified time frame because
improvements in the publication process may permit the Office to remove
an application from the publication process later than two weeks from
the projected date of publication.
Comment 49: One comment suggested that the burden should be on the
Office to determine whether a corresponding application has been filed
in a country that requires eighteen-month publication. The comment also
suggested that the Office publish only applications that the Office can
demonstrate that the application has been or will be filed in a country
that requires eighteen-month publication or if the applicant
affirmatively requests publication. The comment also suggested that an
applicant's failure to timely notify the Office of a foreign filing
should not result in abandonment of the application, and that the Office
should send reminders of this obligation to those applicants who file a
nonpublication request with their applications.
Response: 35 U.S.C. 122(b)(2)(B)(i) places the burden on the applicant
to affirmatively request that an application not be published, and 35
U.S.C. 122(b)(2)(B)(iii) provides that an application is abandoned (by
operation of law) if an applicant submits a nonpublication request,
subsequently files a corresponding application in a foreign country, and
then fails to timely notify the Office that a corresponding application
has been filed in a foreign country. 35 U.S.C. 122(b)(2)(B) does not
provide for the Office to determine or demonstrate whether a
corresponding application has been filed in a foreign country or to
issue reminders to applicants who filed a nonpublication request with
their applications.
Comment 50: One comment suggested that the certification requirement of
§ 1.213 is too severe, and that an applicant should be required to
certify only that a foreign filing is not contemplated and that the
applicant will notify the Office promptly in the event that a foreign
filing occurs.
Response: The certification required by § 1.213 tracks the certification
required by 35 U.S.C. 122(b)(2)(B)(i) (`the invention disclosed in the
application has not and will not be the subject of an application filed
in another country, or under a multilateral international agreement,
that requires publication of applications 18 months after filing'). The
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suggested `less severe' certification would not be consistent with the
certification required by 35 U.S.C. 122(b)(2)(B)(i).
Comment 51: One comment suggested that since submission of a
nonpublication request is a serious matter and an application for which
a nonpublication request is submitted requires exception handling, the
Office should charge a substantial fee for submitting a nonpublication
request.
Response: While the submission of a nonpublication request and
certification should be considered a “serious matter” by applicant, the
`exception processing' required for an application in which a
nonpublication request is submitted is not sufficient to warrant
charging a processing fee. The patent statute does not authorize the
Office to charge “a substantial fee” (or surcharge) simply because of
the seriousness of the request and certification.
Comment 52: Several comments requested clarification on whether the
Office would grant a foreign filing license in the situation in which an
application is filed with a nonpublication request (which must certify
that the invention disclosed in the application has not been and will
not be the subject of an application filed in another country, or under
a multilateral agreement, that requires publication at eighteen months
after filing).
Response: The Office will review an application to determine whether it
is appropriate to grant a foreign filing license even if the applicant
files a nonpublication request with the application because: (1) The
applicant may subsequently file the application in a foreign country
that requires eighteen-month publication and notify the Office of such
filing; and (2) not all foreign countries require eighteen-month
publication.
Comment 53: Several comments suggested that § 1.215 also state that the
patent application publication include the classification of the patent
application.
Response: The Office plans to include the classification on the front
page of a patent application publication. The rules of practice do not
set forth the particulars of what appears on the front page of a patent.
Therefore, it is not necessary for the rules of practice to set forth
this or other particulars of what will appear on the front page of a
patent application publication.
Comment 54: Several comments suggested that the Office provide a
“transitional publication arrangement” for applications that are due for
publication shortly after they are filed (due to a claim under 35 U.S.C.
120). The comment specifically suggested that applicants should be given
some period of time (after the filing date) within which to comply with
the requirements for publication before the delay in compliance serves
as a basis for a reduction in any patent term adjustment.
Response: The notice of proposed rulemaking sets forth with
particularity the Office's planning approach to eighteen-month
publication. Therefore, the public has been given over seven months of
notice of the requirements an application must meet to be in condition
for eighteen-month publication. Since any applicant filing an
application on or after November 29, 2000, has been given this notice of
the requirements an application must meet to be in condition for
eighteen-month publication, the Office is not providing a “transitional
publication arrangement.” The impact that a delay in compliance with the
requirements for publication will have on patent term adjustment is set
forth in 35 U.S.C. 154(b)(2)(C)(ii) and § 1.704(b).
Comment 55: Several comments suggested that the Office's reliance upon
its electronic filing system (EFS) for submission of copies (redacted,
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as-amended, or for voluntary publication) of an application for
publication purposes jeopardizes the optional publication procedures.
The comments specifically suggested that: (1) The Office should not
mandate the filing of a copy of an application for publication purposes
by EFS until the Office has demonstrated that EFS is fully functional;
(2) applicants’ experience with the Office’s pilot EFS program has been
plagued with extra costs and information system problems; (3) an EFS
submission requirement effectively excludes the small inventor
community; and (4) the EFS submission requirement effectively deprives
most applicants of the right to seek voluntary publication or
publication of an application “as-amended” by requiring a copy of the
previously filed application to be submitted in a particular filing
system.
Response: A key objective of any pilot program is to identify
improvements that can or should be made to the program. EFS pilot
participant experiences have identified such improvements for the EFS
software, and the Office has enhanced EFS based upon such experiences.
EFS as enhanced will permit applicants to create a copy of the patent
application text in a familiar word processing environment with minimal
effort. The accuracy and speed resulting from the improvements to the
authoring tool (word processing software for creating tagged patent
application specification text), and the EFS desktop software (used for
the submission of a copy of an application via EFS), will facilitate the
timely and efficient publication of applications.
Examples of improvements to be implemented by November of 2000 in the
next release of the Patent Application Specification Authoring Tool
(PASAT) are: (1) An enhanced Office Assistant function including
capability to enable or disable the help option; (2) the addition of
keyboard short cuts to facilitate authoring; (3) enhanced editing
capabilities to be available, for example, inserting special characters
during a `paste text' process; (4) the capability to copy and paste
tables from an existing word processing document; and (5) an enhanced
authoring tool that will support Microsoft Windows 2000 and Word 2000
software.
The Office also plans to have the following improvements in the desktop
software (electronic Packaging and Validation Engine (ePAVE)) in place
by the fall of 2000: (1) A feature permitting applicants to enter free-
form text (comments) as part of the electronic filing transmittal; (2)
providing for the entry of the application information for the
application data sheet (§ 1.76); and (3) preview and printing of patent
application information before submission.
These new features will be fully tested as part of the software quality
assurance component of the Office’s system development process for
managing software development and deployment. Thus, EFS will be
sufficiently enhanced by the fall of 2000 to be relied upon for
submission of a copy of an application to the Office under the optional
publication provisions of §§ 1.215, 1.217, and 1.221.
Finally, the Office has also conducted a number of workshops concerning
its Patent Electronic Business Center (which include filings under EFS)
through the Patent and Trademark Depository Libraries (PTDLs). These
workshops include a portion specifically directed at independent
inventors.
Comment 56: One comment suggested that the Office permit applicants to
file paper copies of applications for publication and charge a fee to
recover the cost of converting the application into an electronic
format.
Response: The suggested approach is impractical in view of the current
nature of the Office's budget. The Office cannot spend the fees it
collects absent authority from Congress to do so. Recently, Congress has
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not authorized the Office to spend all of the fees it collects; rather,
Congress has authorized the Office to spend up to only a certain amount
of the fees it collects and diverted the remaining fees to other
programs. Thus, even if the Office collects the suggested fee
(ostensibly to recover the Office's cost of converting the application
into an electronic format), such fees would likely be diverted from the
Office leaving the Office with no funding to actually recover the
Office's cost of converting the application into an electronic format.
Comment 57: One comment questioned how color drawings, which are still
permitted to be filed on paper and are not permitted by EFS, can be
submitted via EFS.
Response: Patent application publications will not contain color
drawings (if an application is filed with color drawings, the patent
application publication will include only a black-and-white copy of the
color drawings). Therefore, it is unnecessary to provide for color
drawings to be submitted by EFS for publication purposes.
Comment 58: One comment questioned how a continued prosecution
application (CPA) under § 1.53(d) would be published as a patent
application publication, and suggested that the Office use the claims as
filed in a CPA as they existed at the termination of prosecution (in the
prior application) as the basis for the patent application publication
due to the provisional rights requirements of 35 U.S.C. 154(d).
Response: The Office has amended § 1.53(d)(1)(i) to provide that the
prior application of a CPA (utility or plant) must have been filed prior
to May 29, 2000. See Changes to Application Examination and Provisional
Application Practice, Interim Rule, 65 FR 14865, 14872 (Mar. 20, 2000),
1233 Off. Gaz. Pat. Office 47 (Apr. 11, 2000). This should cause CPA
practice (in utility or plant applications) to phase out and limit the
instances in which the Office must publish a CPA. The Office plans to
create a patent application publication for a CPA under § 1.53(d) using
its PACR database or microfilm records. Thus, a patent application
publication for a CPA will reflect the prior application (the
application originally assigned the application number assigned to the
CPA) as filed. For this reason, any applicant filing a CPA under
§ 1.53(d) on or after November 29, 2000, is advised to also file a copy of
the application-as-amended for publication purposes to take full
advantage of provisional rights under 35 U.S.C. 154(d).
Comment 59: One comment suggested that the Office clarify the `separate
paper' requirement for assignee information to be printed on the patent
application publication (e.g., whether it can be included on a
transmittal letter, whether a separate paper is required for each item
of information). Another comment suggested that since it will benefit
the public to have assignee information included on the patent
application publication, the Office should provide a convenient manner
of submitting assignee information for inclusion on the patent
application publication. Another comment suggested that the Office set
forth a form or format to avoid confusion over the requirements for
submitting assignee information for inclusion on the patent application
publication.
Response: Section 1.76 has been revised to provide for the inclusion of
assignee information on the application data sheet. See § 1.76(b)(7).
Assignee information is the name (either person or juristic entity) and
address of the assignee of the entire right, title, and interest in an
application. Section 1.215(b) has been revised to provide that if the
applicant wants the patent application publication to include assignee
information, the applicant must include the assignee information on the
application transmittal sheet or the application data sheet (§ 1.76).
Comment 60: One comment suggested that the Office print the assignment
information contained in its assignment records on patent application
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publications, rather than relying upon or expecting applicants to
provide this information on a separate paper.
Response: The Office does not require that appropriate assignee
information be printed on a patent and does not plan to require that
appropriate assignee information be printed on a patent application
publication. Therefore, the Office plans to simply print such assignee
information as is provided by an applicant, rather than automatically
include assignee information from its assignment records on a patent
application publication.
Comment 61: One comment suggested that applicants should receive
confirmation of a nonpublication request on the filing receipt. The
comment also suggested that if the publication date is changed at all
(and not just by more than two weeks), the applicants should be notified
of the new publication date.
Response: If a nonpublication request is filed with an application, the
filing receipt for the application will indicate “No Publication” to
confirm receipt of the nonpublication request to the applicant. If the
application has not yet entered the fourteen-week publication cycle, the
applicant will be notified of any changes in the publication date. If
the application has entered the fourteen-week publication cycle, the
applicant will only be notified of changes in the publication date if
the publication date is changed by more than two weeks.
Comment 62: One comment suggested that the Office should place paper
copies of patent application publications in the Public Search Room and
in the examiners’ search rooms.
Response: The Office has considered placing paper copies of patent
application publications in the Public Search Room and in the examiners’
search rooms. The Office, however, is migrating to a fully electronic
search and the investment necessary to create and maintain both
electronic and paper collections of patent application publications is
not feasible.
Comment 63: One comment suggested that the Office should place its
weekly volumes of patent application publications on its Internet Web
site so that they are as readily available as issued U.S. patents.
Response: The Office plans to place its weekly volumes of patent
application publications (both image and text-searchable) on its
Internet Web site.
Comment 64: A number of comments opposed the publication of only a
redacted copy of an application (rather than the entire application).
One comment questioned whether a redacted copy of an application
satisfied the "actual notice" requirement of 35 U.S.C. 154(d).
Response: The filing of a redacted copy of an application for
publication is provided for in 35 U.S.C. 122(b)(2)(B)(v). Whether
publication of a redacted copy of an application will satisfy the
provisional rights requirements of 35 U.S.C. 154(d) will depend upon the
particulars of the situations. Any applicant seeking provisional rights
requirements of 35 U.S.C. 154(d) but planning to file a redacted copy of
an application for publication should carefully consider the provisions
of the last sentence of 35 U.S.C. 122(b)(2)(B)(v).
Comment 65: Several comments suggested that the requirements (e.g., use
of EFS, multiple copies of submissions and Office actions, bracketed
copy of application showing redactions, and copies and translations of
foreign applications) for a redacted copy of an application for
publication, are so onerous they frustrate the purpose of the statute.
The comments suggested that the Office should not require that a
redacted copy of an application submitted for publication purposes be
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filed by EFS. One comment also suggested that the Office should treat
applications for which a redacted copy is submitted for publication the
same as other applications.
Response: The Office is requiring a copy of the application showing
redactions in brackets and copies and translations of foreign
counterpart applications so that the applicant will compare the
application as redacted to the foreign counterpart applications to
ensure that any redaction is appropriate. This will help to avoid the
situation in which an applicant inadvertently redacts material that was
in fact contained in a foreign counterpart application. The Office
requires multiple copies of submissions and Office actions so that the
Office will have an appropriately redacted copy of the application that
can be provided when the Office needs to provide a member of the public
with such a copy. The Office requires EFS submission of a redacted copy
of an application for publication because the Office must have the copy
submitted via the most efficient means available (EFS) since the
application will already be in the publication cycle by sixteen months
from the earliest priority date. The Office does not treat applications
for which a redacted copy is submitted for publication in the same
manner as other applications because the filing of a redacted copy of an
application for publication (unlike other applications) places a
significant burden on the Office.
Comment 66: One comment suggested that it was not clear how to indicate
the portion of the redacted contents of an application for which a
redacted copy is submitted for publication.
Response: The redacted copy of the application being submitted for
publication should simply not include the portions that have been
redacted. The `marked up' copy of the application showing the redaction
that is submitted for the application file should show the portions that
have been redacted in brackets.
Comment 67: One comment suggested that since maintaining the file of an
application for which a redacted copy of the application was submitted
for publication in a partially published/partially unpublished
condition requires exception handling, these applicants should be
charged a significant fee ($500) and not just the $130 processing fee
set forth in § 1.17(i).
Response: As indicated above, filing a redacted copy of an application
for publication and maintaining a set of redacted papers in the
application does place a significant burden on the Office. The $130
processing fee set forth in § 1.17(i), which must accompany each
submission under § 1.17(d)(1) or § 1.17(d)(2) (§ 1.17(d)(3)) is
considered an appropriate fee for this special handling.
Comment 68: One comment suggested that the certificate of mailing
provisions of § 1.8 should apply to the filing of materials relating to
submission of a redacted copy of an application for publication
(§ 1.217).
Response: Since the redacted copy of an application for publication must
be submitted via EFS (and not via the mail), the certificate of mailing
practice set forth in § 1.8 is inapplicable to the submission of a
redacted copy of an application for publication. In view of the
significant burden that filing a redacted copy of an application for
publication places on the Office, the Office considers it appropriate to
require such an applicant to provide the Office with the document
necessary for processing the application by means that ensure that such
documents are promptly received in the Office.
Comment 69: One comment suggested that the Office should provide an
opportunity to correct a defective EFS publication submission for
voluntary publication or republication of an application, rather than
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simply refunding the publication fee and not publishing the application
as provided in § 1.221.
Response: The Office plans to treat a defective EFS publication
submission by attempting to contact the submitter (by telephone) to
obtain correction of the submission (with a new submission that is
correct). The provision in § 1.221 concerning the refunding of the
publication fee and not publishing the application will apply in those
situations in which the Office's attempts to contact the submitter or
obtain correction of the EFS submission are unsuccessful.
Comment 70: One comment suggested that the Office provide a box other
than `Box PCT' in § 1.417 for receipt of an international publication or
copy of an English-language translation of an international application
under 35 U.S.C. 154(d)(4) to avoid the commingling of these papers with
other PCT submissions.
Response: The Office does not consider a separate box (other than `Box
PCT') for copies of an international publication or copies of an English
language translation of an international application under 35 U.S.C.
154(d)(4) to be necessary. The Office will create such a separate box in
the event that a separate box for copies of an international publication
or copy of an English language translation of an international
application under 35 U.S.C. 154(d)(4) proves to be necessary.
Comment 71: One comment suggested that the Office draft a rule stating
what fact situation must exist for an international application to have
provisional rights protection in the United States (noting PCT Article
29(2)).
Response: The Office is not charged with administering provisional
rights under 35 U.S.C. 154(d) and the enforcement of provisional rights
will not be via a proceeding in the Office. Therefore, the Office is not
promulgating regulations concerning what situation must exist for any
type of application to have provisional rights protection. See 35 U.S.C.
2(b)(2)(A).
Comment 72: Several comments suggested that the Office clarify the
following issues concerning the treatment of sequence listings: (1) the
latest date on which a sequence listing must be submitted to avoid a
delay in the transfer of an application to the Technology Centers (and
without reduction of any patent term adjustment); (2) whether
applications containing sequence listings that do not comply with
§ 1.821 et seq. will be forwarded to the Technology Centers for
substantive examination (or which requirements of § 1.821 et seq. must
be complied with before the application is forwarded to the Technology
Centers for substantive examination); (3) whether non-compliance with
the sequence listing requirements of § 1.821 et seq. will be treated as
strictly as non-compliance with the drawings requirements of § 1.84
(and, if so, what changes will be implemented to reduce complications
associated with the use of sequence listing authoring and submission
software); and (4) precisely how an applicant is to make a reference to
a previously filed sequence listing.
Response: An application will not be transferred to the Technology
Centers until it contains a sequence listing (if required) that complies
with § 1.821 et seq. The impact that a delay in filing a sequence
listing (if required) that complies with § 1.821 et seq. will have on
patent term adjustment is set forth in 35 U.S.C. 154(b)(2)(C)(ii) and
§ 1.704(b).
Sequence submission software for creating sequence listings is available
for download, and is available to make it easier to comply. Applicants
are not required to use this software, and need not do so if they feel
it does not meet their needs. Applicants are only required to follow the
format outlined in § 1.821 et seq. Applicants may also obtain the
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“checker” software to check their submissions prior to sending them to
the Office to reduce the chance of errors. This “checker” software is
also available for download.
As discussed above, rather than permit an EFS copy of an application
being submitted to the Office for eighteen-month publication purposes to
simply contain a reference to a previously filed sequence listing, the
Office is requiring that the EFS copy contain a text file copy of the
sequence listing.
Classification
Administrative Procedure Act
The changes to §§ 1.19, 1.76 and 1.103 were not included in the Notice
of Proposed Rulemaking. The change to § 1.19 merely sets forth the fees
for copies of patent application publications, the change to § 1.76
merely provides that assignee information may be included on the
application data sheet, and the change to § 1.103 merely sets forth the
conditions under which the Office will defer examination of an
application. Therefore, these changes concern only rules of Office
procedure, and prior notice and an opportunity for public comment for
these changes is not required pursuant to 5 U.S.C. 553(b)(A), or any
other law.
Regulatory Flexibility Act
The Chief Counsel for Regulation of the Department of Commerce certified
to the Chief Counsel for Advocacy, Small Business Administration, that
the changes in this final rule do not have a significant impact on a
substantial number of small entities (Regulatory Flexibility Act, 5
U.S.C. 605(b)). This final rule implements the eighteen-month
publication provisions of §§ 4501 through 4508 of the American Inventors
Protection Act of 1999. The changes in this final rule provide
procedures for the eighteen-month publication of patent applications.
An applicant may file a nonpublication request (opt-out of eighteen-
month publication) if the invention disclosed in the application has not
and will not be the subject of an application filed in another country,
or under a multilateral international agreement, that requires eighteen-
month publication. Since almost all small entities file patent
applications only in the United States, almost all small entities can
choose whether they want their applications to be subject to eighteen-
month publication. The Office receives roughly 60,000 applications each
year from small entities. Based upon input from small entity groups
during the legislative process, the Office expects that small entities
will file a nonpublication request for roughly 30,000 applications
(fifty percent) with the remaining 30,000 applications being subject to
eighteen-month publication. Since the current application allowance rate
is roughly sixty-seven percent, roughly 20,000 applications subject to
eighteen-month publication will be allowed, at which time a publication
fee ($300) will be due. Since the publication fee is less than one-third
of the combined cost of the application filing fee ($345) and patent
issue fee ($605), there will not be a significant economic impact on a
substantial number of small entities due to eighteen-month publication.
Executive Order 13132
This rulemaking 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 rulemaking has been determined to be not significant for purposes
of Executive Order 12866 (Sept. 30, 1993).
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Paperwork Reduction Act
This final rule involves information collection requirements that 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 OMB control numbers:
0651-0021, 0651-0027, 0651-0031, 0651-0032, 0651-0033, and 0651-0034.
As required by the Paperwork Reduction Act of 1995 (44 U.S.C. 3507(d)),
the United States Patent and Trademark Office submitted an information
collection package to OMB for its review and approval of the information
collections under OMB control number 0651-0031 and 0651-0032. The
United States Patent and Trademark Office is submitting these
information collections to OMB for its review and approval because this
final rule adds the nonpublication request, rescission of the
nonpublication request, electronic filing system copy of the application
(for publication purposes), copy of the application file content showing
redactions, and petition to accept a delayed priority claim to these
collections.
As discussed above, this final rule also involves currently approved
information collections under OMB control numbers: 0651-0021, 0651-
0027, 0651-0033, and 0651-0034. The United States Patent and Trademark
Office is not resubmitting those information collection packages to OMB
for its review and approval because the changes in this final rule do
not affect the information collection requirements associated with the
information collections under those OMB control numbers.
The title, description and respondent description of each of the
information collections are shown below with an estimate of each of the
annual reporting burdens. Included in each estimate is the time for
reviewing instructions, gathering and maintaining the data needed, and
completing and reviewing the collection of information.
OMB Number: 0651-0021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101, ANNEX/134/144, PTO-1382, PCT/ IPEA/401,
PCT/IB/328.
Type of Review: Approved through September of 2000.
Affected Public: Individuals or households, business or Other for-
profit institutions, Federal Agencies or Employees, not-for-profit
institutions, small businesses or organizations.
Estimated Number of Respondents: 102,950.
Estimated Time Per Response: 0.9538 hour.
Estimated Total Annual Burden Hours: 98,195 hours.
Needs and Uses: The information collected is required by the Patent
Cooperation Treaty (PCT). The general purpose of the PCT is to simplify
the filing of patent applications on the same invention in different
countries. It provides for a centralized filing procedure and a
standardized application format.
OMB Number: 0651-0027.
Title: Changes in Patent and Trademark Assignment Practices.
Form Numbers: PTO-1618 and PTO-1619, PTO/SB/15/41.
Type of Review: Approved through May of 2002.
Affected Public: Individuals or Households and Businesses or Other
For-Profit Institutions.
Estimated Number of Respondents: 209,040.
Estimated Time Per Response: 0.5 hour.
Estimated Total Annual Burden Hours: 104,520 hours.
Needs and Uses: The Office records about 209,040 assignments or
documents related to ownership of patent and trademark cases each year.
The Office requires a cover sheet to expedite the processing of these
documents and to ensure that they are properly recorded.
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OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08/21-27/ 30–31/42/43/61/62/63/64/67/68/91/92/
96/97.
Type of Review: Approved through October of 2002.
Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions and Federal Government.
Estimated Number of Respondents: 2,231,365.
Estimated Time Per Response: 0.46 hours.
Estimated Total Annual Burden Hours: 1,018,736 hours.
Needs and Uses: During the processing of an application for a patent,
the applicant/agent may be required or desire to submit additional
information to the Office concerning the examination of a specific
application. The specific information required or which may be submitted
includes: Information Disclosure Statements; Terminal Disclaimers;
Petitions to Revive; Express Abandonments; Appeal Notices; Petitions for
Access; Powers to Inspect; Certificates of Mailing or Transmission;
Statements under § 3.73(b); Amendments, Petitions and their Transmittal
Letters; and Deposit Account Order Forms.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07/ 13PCT/17-19/29/101-110.
Type of Review: Approved through October of 2002.
Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions and Federal Government.
Estimated Number of Respondents: 334,100.
Estimated Time Per Response: 8.95 hours.
Estimated Total Annual Burden Hours: 2,990,260 hours.
Needs and Uses: The purpose of this information collection is to
permit the Office to determine whether an application meets the criteria
set forth in the patent statute and regulations. The standard Fee
Transmittal form, New Utility Patent Application Transmittal form, New
Design Patent Application Transmittal form, New Plant Patent Application
Transmittal form, Declaration, and Plant Patent Application Declaration
will assist applicants in complying with the requirements of the patent
statute and regulations, and will further assist the Office in
processing and examination of the application.
OMB Number: 0651-0033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/13/14/44/ 50-57; PTOL-85b.
Type of Review: Approved through September of 2000.
Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions and Federal Government.
Estimated Number of Respondents: 135,250.
Estimated Time Per Response: 0.325 hour.
Estimated Total Annual Burden Hours: 43,893 hours.
Needs and Uses: This collection of information is required to
administer the patent laws pursuant to title 35, U.S.C., concerning the
issuance of patents and related actions including correcting errors in
printed patents, refiling of patent applications, requesting
reexamination of a patent, and requesting a reissue patent to correct an
error in a patent. The affected public includes any individual or
institution whose application for a patent has been allowed or who takes
action as covered by the applicable rules.
OMB Number: 0651-0034.
Title: Secrecy/License to Export.
Form Numbers: None.
Type of Review: Approved through January of 2001.
Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions and Federal Government.
Estimated Number of Respondents: 2,187.
Estimated Time Per Response: 0.67 hour.
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Estimated Total Annual Burden Hours: 1,476 hours.
Needs and Uses: In the interest of national security, patent laws and
regulations place certain limitations on the disclosure of information
contained in patents and patent applications and on the filing of
applications for patent in foreign countries.
The principal impact of the changes in this final rule is to implement
the changes to Office practice necessitated by §§ 4501 through 4508 of
the American Inventors Protection Act of 1999 (enacted into law by §
1000(a)(9), Division B, of Public Law 106–113).
Comments are invited on: (1) Whether the collection of information is
necessary for proper performance of the functions of the agency; (2) the
accuracy of the agency’s estimate of the burden; (3) ways to enhance the
quality, utility, and clarity of the information to be collected; and
(4) ways to minimize the burden of the collection of information to
respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this burden,
to Robert J. Spar, Director, Office of Patent Legal Administration,
United States Patent and Trademark Office, Washington, D.C. 20231, or to
the Office of Information and Regulatory Affairs of OMB, New Executive
Office Building, 725 17th Street, N.W., Room 10235, Washington, D.C.
20503, Attention: Desk Officer for the United States Patent and
Trademark Office.
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of Information,
Inventions and patents, Reporting and record keeping requirements, Small
businesses.
37 CFR Part 5
Classified information, Foreign relations, Inventions and patents.
For the reasons set forth in the preamble, 37 CFR Parts 1 and 5 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 1.9 is amended by revising paragraph (c) to read as follows:
§ 1.9 Definitions.
* * * * * *
(c) A published application as used in this chapter means an
application for patent which has been published under 35 U.S.C. 122(b).
* * * * * *
3. Section 1.11 is amended by revising paragraph (a) to read as follows:
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§ 1.11 Files open to the public.
(a) The specification, drawings, and all papers relating to the file
of an abandoned published application, except if a redacted copy of the
application was used for the patent application publication, a patent,
or a statutory invention registration are open to inspection by the
public, and copies may be obtained upon the payment of the fee set forth
in § 1.19(b)(2). See § 2.27 for trademark files.
* * * * * *
4. Section 1.12 is amended by revising paragraphs (a)(1) and (b) to read
as follows:
§ 1.12 Assignment records open to public inspection.
(a)(1) Separate assignment records are maintained in the United
states Patent and Trademark Office for patents and trademarks. The
assignment records, relating to original or reissue patents, including
digests and indexes (for assignments recorded on or after May 1, 1957),
published patent applications, and assignment records relating to
pending or abandoned trademark applications and to trademark
registrations (for assignments recorded on or after January 1, 1955),
are open to public inspection at the United States Patent and Trademark
Office, and copies of those assignment records may be obtained upon
request and payment of the fee set forth in § 1.19 and § 2.6 of this
chapter.
* * * * * *
(b) Assignment records, digests, and indexes relating to any pending
or abandoned patent application which has not been published under 35
U.S.C. 122(b) are not available to the public. Copies of any such
assignment records and related information shall be obtainable only upon
written authority of the applicant or applicant’s assignee or attorney
or agent or upon a showing that the person seeking such information is a
bona fide prospective or actual purchaser, mortgagee, or licensee of
such application, unless it shall be necessary to the proper conduct of
business before the Office or as provided in this part.
* * * * * *
5. Section 1.13 is revised to read as follows:
§ 1.13 Copies and certified copies.
(a) Non-certified copies of patents, patent application publications,
and trademark registrations and of any records, books, papers, or
drawings within the jurisdiction of the United States Patent and
Trademark Office and open to the public, will be furnished by the United
States Patent and Trademark Office to any person, and copies of other
records or papers will be furnished to persons entitled thereto, upon
payment of the appropriate fee.
(b) Certified copies of patents, patent application publications, and
trademark registrations and of any records, books, papers, or drawings
within the jurisdiction of the United States Patent and Trademark Office
and open to the public or persons entitled thereto will be authenticated
by the seal of the United States Patent and Trademark Office and
certified by the Commissioner, or in his or her name attested by an
officer of the United States Patent and Trademark Office authorized by
the Commissioner, upon payment of the fee for the certified copy.
6. Section § 1.14 is amended by revising paragraphs (a), (b), (c), (e),
(i) and (j) to read as follows:
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§ 1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application information. Patent
applications that have not been published under 35 U.S.C. 122(b) are
generally preserved in confidence pursuant to 35 U.S.C. 122(a).
Information concerning the filing, pendency, or subject matter of an
application for patent, including status information, and access to the
application, will only be given to the public as set forth in § 1.11 or
in this section.
(1) Status information is:
(i) Whether the application is pending, abandoned, or patented;
(ii) Whether the application has been published under 35 U.S.C.
122(b);and
(iii) The application `numerical identifier' which may be:
(A) The eight-digit application number (the two-digit series code
plus the six-digit serial number); or
(B) The six-digit serial number plus any one of the filing date of
the national application, the international filing date, or date of
entry into the national stage.
(2) Access is defined as providing the application file for review
and copying of any material in the application file.
(b) When status information may be supplied. Status information of an
application may be supplied by the Office to the public if any of the
following apply:
(1) Access to the application is available pursuant to paragraph (e)
of this section;
(2) The application is referred to by its numerical identifier in a
published patent document (e.g., a U.S. patent, a U.S. patent
application publication, or an international application publication),
or in a U.S. application open to public inspection (§ 1.11(b), or
paragraph (e)(2)(i) or (e)(2)(ii) of this section);
(3) The application is a published international application in which
the United States of America has been indicated as a designated state;or
(4) The application claims the benefit of the filing date of an
application for which status information may be provided pursuant to
paragraphs (b)(1) through (b)(3) of this section.
(c) When copies may be supplied. A copy of an application-as-filed or
a file wrapper and contents may be supplied by the Office to the public,
subject to paragraph (i) of this section (which addresses international
applications), if any of the following apply:
(1) Application-as-filed.
(i) If a U.S. patent application publication or patent incorporates
by reference, or includes a specific reference under 35 U.S.C. 119(e) or
120 to, a pending or abandoned application, a copy of that application-
as-filed may be provided to any person upon written request including
the fee set forth in § 1.19(b)(1); or
(ii) If an international application, which designates the U.S. and
which has been published in accordance with PCT Article 21(2),
incorporates by reference or claims priority under PCT Article 8 to a
pending or abandoned U.S. application, a copy of that application-as-
filed may be provided to any person upon written request including a
showing that the publication of the application in accordance with PCT
Article 21(2) has occurred and that the U.S. was designated, and upon
payment of the appropriate fee set forth in § 1.19(b)(1).
(2) File wrapper and contents. A copy of the specification, drawings,
and all papers relating to the file of an abandoned or pending published
application may be provided to any person upon written request,
including the fee set forth in § 1.19(b)(2). If a redacted copy of the
application was used for the patent application publication, the copy of
the specification, drawings, and papers may be limited to a redacted
copy.
* * * * * *
(e) Public access to a pending or abandoned application. Access to an
application may be provided to any person[, subject to paragraph (i) of
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this section, if a written request for access is submitted, the
application file is available, and any of the following apply:
(1) The application is open to public inspection pursuant to
§ 1.11(b); or
(2) The application is abandoned, it is not within the file jacket of
a pending application under § 1.53(d), and it is referred to:
(i) In a U.S. patent application publication or patent;
(ii) In another U.S. application which is open to public inspection
either pursuant to § 1.11(b) or paragraph (e)(2)(i) of this section;
or
(iii) In an international application which designates the U.S. and is
published in accordance with PCT Article 21(2).
* * * * * *
(i) International applications.
(1) Copies of international application files for international
applications which designate the U.S. and which have been published in
accordance with PCT Article 21(2), or copies of a document in such
application files, will be furnished in accordance with PCT Articles 30
and 38 and PCT Rules 94.2 and 94.3, upon written request including a
showing that the publication of the application has occurred and that
the U.S. was designated, and upon payment of the appropriate fee (see §
1.19(b)(2) or 1.19(b)(3)), if:
(i) With respect to the Home Copy, the international application was
filed with the U.S. Receiving Office;
(ii) With respect to the Search Copy, the U.S. acted as the
International Searching Authority; or
(iii) With respect to the Examination Copy, the United States acted
as the International Preliminary Examining Authority, an International
Preliminary Examination Report has issued, and the United States was
elected.
(2) A copy of an English language translation of an international
application which has been filed in the United States Patent and
Trademark Office pursuant to 35 U.S.C. 154(2)(d)(4) will be furnished
upon written request including a showing that the publication of the
application in accordance with PCT Article 21(2) has occurred and that
the U.S. was designated, and upon payment of the appropriate fee
(§ 1.19(b)(2) or § 1.19(b)(3)).
(3) Access to international application files for international
applications which designate the U.S. and which have been published in
accordance with PCT Article 21(2), or copies of a document in such
application files, will be furnished in accordance with PCT Articles 30
and 38 and PCT Rules 94.2 and 94.3, upon written request including a
showing that the publication of the application has occurred and that
the U.S. was designated.
(4) In accordance with PCT Article 30, copies of an international
application-as-filed under paragraph (c)(1) of this section will not be
provided prior to the international publication of the application
pursuant to PCT Article 21(2).
(5) Access to international application files under paragraphs (e)
and (i)(3) of this section will not be permitted with respect to the
Examination Copy in accordance with PCT Article 38.
(j) Access or copies in other circumstances. The Office, either sua
sponte or on petition, may also provide access or copies of all or part
of an application if necessary to carry out an Act of Congress or if
warranted by other special circumstances. Any petition by a member of
the public seeking access to, or copies of, all or part of any pending
or abandoned application preserved in confidence pursuant to paragraph
(a) of this section, or any related papers, must include:
(1) The fee set forth in § 1.17(h); and
(2) A showing that access to the application is necessary to carry
out an Act of Congress or that special circumstances exist which warrant
petitioner being granted access to all or part of the application.
7. Section 1.17 is amended by revising the section heading and
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paragraphs (h), (i), (l), (m) and (p) and adding paragraph (t) to read
as follows:
§ 1.17 Patent application and reexamination processing fees.
* * * * * *
(h) For filing a petition under one of the following sections which
refers to this paragraph: $130.00.
§ 1.12-for access to an assignment record.
§ 1.14 for access to an application.
§ 1.47-for filing by other than all the inventors or a person not
the inventor.
§ 1.53(e)-to accord a filing date.
§ 1.59-for expungement and return of information.
§ 1.84-for accepting color drawings or photographs.
§ 1.91-for entry of a model or exhibit.
§ 1.102-to make an application special.
§ 1.103(a)-to suspend action in an application.
§ 1.138(c)-to expressly abandon an application to avoid publication.
§ 1.182-for decision on a question not specifically provided for.
§ 1.183-to suspend the rules.
§ 1.295-for review of refusal to publish a statutory invention
registration.
§ 1.313-to withdraw an application from issue.
§ 1.314-to defer issuance of a patent.
§ 1.377-for review of decision refusing to accept and record payment
of a maintenance fee filed prior to expiration of a patent.
§ 1.378(e)-for reconsideration of decision on petition refusing to
accept delayed payment of maintenance fee in an expired patent.
§ 1.644(e)-for petition in an interference.
§ 1.644(f)-for request for reconsideration of a decision on petition
in an interference.
§ 1.666(b)-for access to an interference settlement agreement.
§ 1.666(c)-for late filing of interference settlement agreement.
§ 1.741(b)-to accord a filing date to an application under § 1.740
for extension of a patent term.
§ 5.12-for expedited handling of a foreign filing license.
§ 5.15-for changing the scope of a license.
§ 5.25-for retroactive license.
(i) Processing fee for taking action under one of the following
sections which refers to this paragraph: $130.00.
§ 1.28(c)(3)-for processing a non-itemized fee deficiency based on
an error in small entity status.
§ 1.41-for supplying the name or names of the inventor or inventors
after the filing date without an oath or declaration as prescribed by
§ 1.63, except in provisional applications.
§ 1.48-for correcting inventorship, except in provisional
applications.
§ 1.52(d)-for processing a nonprovisional application filed with a
specification in a language other than English.
§ 1.53(b)(3)-to convert a provisional application filed under
§ 1.53(c) into a nonprovisional application under § 1.53(b).
§ 1.55—for entry of late priority papers.
§ 1.99(e)-for processing a belated submission under § 1.99.
§ 1.103(b)-for requesting limited suspension of action, continued
prosecution application (§ 1.53(d)).
§ 1.103(c)-for requesting limited suspension of action, request for
continued examination (§ 1.114).
§ 1.103(d)-for requesting deferred examination of an application.
§ 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.
§ 1.221-for requesting voluntary publication or republication of an
application.
§ 1.497(d)-for filing an oath or declaration pursuant to 35 U.S.C.
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371(c)(4) naming an inventive entity different from the inventive
entity set forth in the international stage.
§ 3.81-for a patent to issue to assignee, assignment submitted after
payment of the issue fee.
* * * * * *
(l) For filing a petition for the revival of an unavoidably
abandoned application under 35 U.S.C. 111, 133, 364, or 371, for the
unavoidably delayed payment of the issue fee under 35 U.S.C. 151, or
for the revival of an unavoidably terminated reexamination proceeding
under 35 U.S.C. 133 (§ 1.137(a)):
By a small entity (§ 1.27(a)): $55.00.
By other than a small entity: $110.00.
(m) For filing a petition for revival of an unintentionally abandoned
application, for the unintentionally delayed payment of the fee for
issuing a patent, or for the revival of an unintentionally terminated
reexamination proceeding under 35 U.S.C. 41(a)(7) (§ 1.137(b)):
By a small entity (§ 1.27(a)): $620.00.
By other than a small entity: $1,240.00.
* * * * * *
(p) For an information disclosure statement under § 1.97(c) or (d)
or a submission under § 1.99: $180.00.
* * * * * *
(t) For the acceptance of an unintentionally delayed claim for
priority under 35 U.S.C. 119, 120, 121, or 365(a) or (c) (§§ 1.55 and
1.78): $1,240.00.
8. Section 1.18 is amended by adding paragraph (d) to read as follows:
§ 1.18 Patent post-allowance (including issue) fees.
* * * * * *
Publication fee $300.00.
* * * * * *
9. Section 1.19 is amended by revising paragraph (a) to read as
follows:
§ 1.19 Document supply fees.
* * * * * *
(a) Uncertified copies of patent application publications and
patents:
(1) Printed copy of the paper portion of a patent application
publication or patent, including a design patent, statutory invention
registration, or defensive publication document:
(i) Regular service, which includes preparation of copies by the
Office within two to three business days and delivery by United States
Postal Service or to an Office Box; and preparation of copies by the
Office within one business day of receipt and de-livery by electronic
means (e.g., facsimile, electronic mail) $3.00.
(ii) Next business day delivery to Office Box $6.00.
(iii) Expedited delivery by commercial delivery service $25.00.
(2) Printed copy of a plant patent in color: $15.00.
(3) Color copy of a patent (other than a plant patent) or statutory
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invention registration containing a color drawing $25.00.
* * * * * *
10. Section 1.24 is removed and reserved.
§ 1.24 [Removed and Reserved]
11. Section 1.52 is amended by revising paragraph (d) to read as
follows:
§ 1.52 Language, paper, writing, margins, compact disc
specifications.
* * * * * *
(d) A nonprovisional or provisional application may be filed in a
language other than English.
(1) Nonprovisional application. If a nonprovisional application is
filed in a language other than English, an English language translation
of the non-English language application, a statement that the
translation is accurate, and the processing fee set forth in § 1.17(i)
are required. If these items are not filed with the application,
applicant will be notified and given a period of time within which they
must be filed in order to avoid abandonment.
(2) Provisional application. If a provisional application is filed
in a language other than English, an English language translation of
the non-English language provisional application will not be required
in the provisional application. See § 1.78(a) for the requirements for
claiming the benefit of such provisional application in a
nonprovisional application.
* * * * * *
12. Section 1.55 is amended by revising paragraph (a) and adding
paragraph (c) to read as follows:
§ 1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the
benefit of the filing date of one or more prior foreign applications
under the conditions specified in 35 U.S.C. 119(a) through (d), 172,
and 365(a).
(1)(i) In an original application filed under 35 U.S.C. 111(a), the
claim for priority must be presented during the pendency of the
application, and within the later of four months from the actual filing
date of the application or sixteen months from the filing date of the
prior foreign application. This time period is not extendable. The
claim must identify the foreign application for which priority is
claimed, as well as any foreign application for the same subject matter
and having a filing date before that of the application for which
priority is claimed, by specifying the application number, country (or
intellectual property authority), day, month, and year of its filing.
The time period in this paragraph does not apply to an application for
a design patent.
(ii) In an application that entered the national stage from an
international application after compliance with 35 U.S.C. 371, the
claim for priority must be made during the pendency of the application
and within the time limit set forth in the PCT and the Regulations
under the PCT.
(2) The claim for priority and the certified copy of the foreign
application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any
event, be filed before the patent is granted. If the claim for priority
or the certified copy of the foreign application is filed after the date
the issue fee is paid, it must be accompanied by the processing fee set
forth in § 1.17(i), but the patent will not include the priority claim
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unless corrected by a certificate of correction under 35 U.S.C. 255 and
§ 1.323.
(3) When the application becomes involved in an interference
(§ 1.630), when necessary to overcome the date of a reference relied upon
by the examiner, or when deemed necessary by the examiner, the Office
may require that the claim for priority and the certified copy of the
foreign application be filed earlier than provided in paragraphs
(a)(1) or (a)(2) of this section.
(4) An English language translation of a non-English language
foreign application is not required except when the application is
involved in an interference (§ 1.630), when necessary to overcome the
date of a reference relied upon by the examiner, or when specifically
required by the examiner. If an English language translation is
required, it must be filed together with a statement that the
translation of the certified copy is accurate.
* * * * * *
(c) Unless such claim is accepted in accordance with the provisions
of this paragraph, any claim for priority under 35 U.S.C. 119(a)–(d) or
365(a) not presented within the time period provided by paragraph (a)
of this section is considered to have been waived. If a claim for
priority under 35 U.S.C. 119(a)–(d) or 365(a) is presented after the
time period provided by paragraph (a) of this section, the claim may be
accepted if the claim identifying the prior foreign application by
specifying its application number, country (or intellectual property
authority), and the day, month, and year of its filing was
unintentionally delayed. A petition to accept a delayed claim for
priority under 35 U.S.C. 119(a)-(d) or 365(a) must be accompanied by:
(1) The surcharge set forth in § 1.17(t); and
(2) A statement that the entire delay between the date the claim was
due under paragraph (a)(1) of this section and the date the claim was
filed was unintentional. The Commissioner may require additional
information where there is a question whether the delay was
unintentional.
13. Section 1.72 is amended by revising paragraph (a) to read as
follows:
§ 1.72 Title and abstract.
(a) The title of the invention may not exceed 500 characters in
length and must be as short and specific as possible. Characters that
cannot be captured and recorded in the Office’s automated information
systems may not be reflected in the Office’s records in such systems or
in documents created by the Office. Unless the title is supplied in an
application data sheet (§ 1.76), the title of the invention should
appear as a heading on the first page of the specification.
* * * * * *
14. Section 1.76 is amended by adding a new paragraph (b)(7) to read as
follows:
§ 1.76 Application data sheet.
* * * * * *
(b) * * *
(7) Assignee information. This information includes the name (either
person or juristic entity) and address of the assignee of the entire
right, title, and interest in an application. Providing this information
in the application data sheet does not substitute for compliance with
any requirement of part 3 of this chapter to have an assignment recorded
by the Office.
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* * * * * *
15. Section 1.78 is amended by revising paragraphs (a)(2), (a)(3), and
(a)(4), and adding new paragraphs (a)(5) and (a)(6) to read as follows:
§ 1.78 Claiming benefit of earlier filing date and cross references
to other applications.
(a)(1) * * *
(2) Except for a continued prosecution application filed under
1.53(d), any nonprovisional application claiming the benefit of one or
more prior filed copending nonprovisional applications or international
applications designating the United States of America must contain a
reference to each such prior application, identifying it by application
number (consisting of the series code and serial number) or
international application number and international filing date and
indicating the relationship of the applications. This reference must be
submitted during the pendency of the application, and within the later
of four months from the actual filing date of the application or sixteen
months from the filing date of the prior application. This time period
is not extendable. Unless the reference required by this paragraph is
included in an application data sheet (§ 1.76), the specification must
contain or be amended to contain such reference in the first sentence
following the title. If the application claims the benefit of an
international application, the first sentence of the specification must
include an indication of whether the international application was
published under PCT Article 21(2) in English (regardless of whether
benefit for such application is claimed in the application data sheet).
The request for a continued prosecution application under § 1.53(d) is
the specific reference required by 35 U.S.C. 120 to the prior
application. The identification of an application by application number
under this section is the specific reference required by 35 U.S.C. 120
to every application assigned that application number. Cross references
to other related applications may be made when appropriate (see § 1.14).
Except as provided in paragraph (a)(3) of this section, the failure to
timely submit the reference required by 35 U.S.C. 120 and this paragraph
is considered a waiver of any benefit under 35 U.S.C. 120, 121, or
365(c) to such prior application. The time period set forth in this
paragraph does not apply to an application for a design patent.
(3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2) of
this section is presented in a nonprovisional application after the time
period provided by paragraph (a)(2) of this section, the claim under 35
U.S.C. 120, 121, or 365(c) for the benefit of a prior filed copending
nonprovisional application or international application designating the
United States of America may be accepted if the reference identifying
the prior application by application number or international application
number and international filing date was unintentionally delayed. A
petition to accept an unintentionally delayed claim under 35 U.S.C. 120,
121, or 365(c) for the benefit of a prior filed application must be
accompanied by:
(i) The surcharge set forth in § 1.17(t); and
(ii) A statement that the entire delay between the date the claim was
due under paragraph (a)(2) of this section and the date the claim was
filed was unintentional. The Commissioner may require additional
information where there is a question whether the delay was
unintentional.
(4) A nonprovisional application other than for a design patent may
claim an invention disclosed in one or more prior filed provisional
applications. In order for a nonprovisional application to claim the
benefit of one or more prior filed provisional applications, each prior
provisional application must name as an inventor at least one inventor
named in the later filed nonprovisional application and disclose the
named inventor’s invention claimed in at least one claim of the later
filed nonprovisional application in the manner provided by the first
paragraph of 35 U.S.C. 112. In addition, each prior provisional
application must be entitled to a filing date as set forth in § 1.53(c),
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and the basic filing fee set forth in § 1.16(k) must be paid within the
time period set forth in § 1.53(g).
(5) Any nonprovisional application claiming the benefit of one or
more prior filed copending provisional applications must contain a
reference to each such prior provisional application, identifying it as
a provisional application, and including the provisional application
number (consisting of series code and serial number), and, if the
provisional application is filed in a language other than English, an
English language translation of the non-English language provisional
application and a statement that the translation is accurate. This
reference and English language translation of a non-English language
provisional application must be submitted during the pendency of the
nonprovisional application, and within the later of four months from the
actual filing date of the nonprovisional application or sixteen months
from the filing date of the prior provisional application. This time
period is not extendable. Unless the reference required by this
paragraph is included in an application data sheet (§ 1.76), the
specification must contain or be amended to contain such reference in
the first sentence following the title. Except as provided in paragraph
(a)(6) of this section, the failure to timely submit the reference and
English language translation of a non-English language provisional
application required by 35 U.S.C. 119(e) and this paragraph is
considered a waiver of any benefit under 35 U.S.C. 119(e) to such prior
provisional application.
(6) If the reference or English language translation of a non-English
language provisional application required by 35 U.S.C. 119(e) and
paragraph (a)(5) of this section is presented in a nonprovisional
application after the time period provided by paragraph (a)(5) of this
section, the claim under 35 U.S.C. 119(e) for the benefit of a prior
filed provisional application may be accepted during the pendency of the
nonprovisional application if the reference identifying the prior
application by provisional application number and any English language
translation of a non-English language provisional application were
unintentionally delayed. A petition to accept an unintentionally delayed
claim under 35 U.S.C. 119(e) for the benefit of a prior filed
provisional application must be accompanied by:
(i) The surcharge set forth in § 1.17(t); and
(ii) A statement that the entire delay between the date the claim was
due under paragraph (a)(5) of this section and the date the claim was
filed was unintentional. The Commissioner may require additional
information where there is a question whether the delay was unintentional.
* * * * * *
16. Section 1.84 is amended by revising paragraphs (a)(2), (e), and (j)
to read as follows:
§ 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 § 1.17(h);
(ii) Three (3) sets of color drawings;
(iii) A black and white photocopy that accurately depicts, to the
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extent possible, the subject matter shown in the color drawing; and
(iv) 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.
* * * * * *
(e) Type of paper. Drawings submitted to the Office must be made on
paper which is flexible, strong, white, smooth, non-shiny, and durable.
All sheets must be reasonably free from cracks, creases, and folds. Only
one side of the sheet may be used for the drawing. Each sheet must be
reasonably free from erasures and must be free from alterations,
overwritings, and interlineations. Photographs must be developed on
paper meeting the sheet-size requirements of paragraph (f) of this
section and the margin requirements of paragraph (g) of this section.
See paragraph (b) of this section for other requirements for
photographs.
* * * * * *
(j) Front page view. The drawing must contain as many views as
necessary to show the invention. One of the views should be suitable for
inclusion on the front page of the patent application publication and
patent as the illustration of the invention. Views must not be connected
by projection lines and must not contain center lines. Applicant may
suggest a single view (by figure number) for inclusion on the front page
of the patent application publication and patent.
* * * * * *
17. Section 1.85 is amended by revising paragraph (a) to read as follows:
§ 1.85 Corrections to drawings.
(a) A utility or plant application will not be placed on the files
for examination until objections to the drawings have been corrected.
Except as provided in § 1.215(c), any patent application publication
will not include drawings filed after the application has been placed on
the files for examination. Unless applicant is otherwise notified in an
Office action, objections to the drawings in a utility or plant
application will not be held in abeyance, and a request to hold
objections to the drawings in abeyance will not be considered a bona
fide attempt to advance the application to final action (§ 1.135(c)). If
a drawing in a design application meets the requirements of § 1.84(e),
(f), and (g) and is suitable for reproduction, but is not otherwise in
compliance with § 1.84, the drawing may be admitted for examination.
* * * * * *
18. Section 1.98 is amended by revising paragraphs (a)(2) and (b) to
read as follows:
§ 1.98 Content of information disclosure statement.
(a) * * *
(2) A legible copy of:
(i) Each U.S. patent application publication and U.S. and foreign
patent;
(ii) Each publication or that portion which caused it to be listed;
(iii) For each cited pending U.S. application, the application
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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; and
* * * * * *
(b)(1) Each U.S. patent listed in an information disclosure statement
must be identified by inventor, patent number, and issue date.
(2) Each U.S. patent application publication listed in an information
disclosure statement shall be identified by applicant, patent
application publication number, and publication date.
(3) Each U.S. application listed in an information disclosure
statement must be identified by the inventor, application number, and
filing date.
(4) Each foreign patent or published foreign patent application
listed in an information disclosure statement must be identified by the
country or patent office which issued the patent or published the
application, an appropriate document number, and the publication date
indicated on the patent or published application.
(5) Each publication listed in an information disclosure statement
must be identified by publisher, author (if any), title, relevant pages
of the publication, date, and place of publication.
* * * * * *
19. A new § 1.99 is added to read as follows:
§ 1.99 Third-party submission in published application.
(a) A submission by a member of the public of patents or publications
relevant to a pending published application may be entered in the
application file if the submission complies with the requirements of
this section and the application is still pending when the submission
and application file are brought before the examiner.
(b) A submission under this section must identify the application to
which it is directed by application number and include:
(1) The fee set forth in § 1.17(p);
(2) A list of the patents or publications submitted for consideration
by the Office, including the date of publication of each patent or
publication;
(3) A copy of each listed patent or publication in written form or at
least the pertinent portions; and
(4) An English language translation of all the necessary and
pertinent parts of any non-English language patent or publication in
written form relied upon.
(c) The submission under this section must be served upon the
applicant in accordance with § 1.248.
(d) A submission under this section shall not include any explanation
of the patents or publications, or any other information. The Office
will dispose of such explanation or information if included in a
submission under this section. A submission under this section is also
limited to ten total patents or publications.
(e) A submission under this section must be filed within two months
from the date of publication of the application (§ 1.215(a)) or prior to
the mailing of a notice of allowance (§ 1.311), whichever is earlier.
Any submission under this section not filed within this period is
permitted only when the patents or publications could not have been
submitted to the Office earlier, and must also be accompanied by the
processing fee set forth in § 1.17(i). A submission by a member of the
public to a pending published application that does not comply with the
requirements of this section will be returned or discarded.
(f) A member of the public may include a self-addressed postcard with
a submission to receive an acknowledgment by the Office that the
submission has been received. A member of the public filing a submission
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under this section will not receive any communications from the Office
relating to the submission other than the return of a self-addressed
postcard. In the absence of a request by the Office, an applicant has no
duty to, and need not, reply to a submission under this section. No
further submission on behalf of the member of the public will be
considered, unless such submission raises new issues which could not
have been earlier presented.
20.Section 1.103 is amended by redesignating paragraphs (d) through (f)
as (e) through (g) and adding a new paragraph (d) to read as follows:
§ 1.103 Suspension of action by the Office.
* * * * * *
(d) Deferral of examination. On request of the applicant, the Office
may grant a deferral of examination under the conditions specified in
this paragraph for a period not extending beyond three years from the
earliest filing date for which a benefit is claimed under title 35,
United States Code. A request for deferral of examination under this
paragraph must include the publication fee set forth in § 1.18(d) and
the processing fee set forth in § 1.17(i). A request for deferral of
examination under this paragraph will not be granted unless:
(1) The application is an original utility or plant application filed
under § 1.53(b) or resulting from entry of an international application
into the national stage after compliance with § 1.494 or § 1.495;
(2) The applicant has not filed a nonpublication request under
§ 1.213(a), or has filed a request under § 1.213(b) to rescind a
previously filed nonpublication request;
(3) The application is in condition for publication as provided in
§ 1.211(c); and
(4) The Office has not issued either an Office action under 35 U.S.C.
132 or a notice of allowance under 35 U.S.C. 151.
* * * * * *
21. Section 1.104 is amended by removing paragraph (a)(5) and revising
paragraph (d)(1) to read as follows: § 1.104 Nature of Examination.
* * * * * *
(d) Citation of references.
(1) If domestic patents are cited by the examiner, their numbers and
dates, and the names of the patentees will be stated. If domestic patent
application publications are cited by the examiner, their publication
number, publication date, and the names of the applicants will be
stated. If foreign published applications or patents are cited, their
nationality or country, numbers and dates, and the names of the
patentees will be stated, and such other data will be furnished as may
be necessary to enable the applicant, or in the case of a reexamination
proceeding, the patent owner, to identify the published applications or
patents cited. In citing foreign published applications or patents, in
case only a part of the document is involved, the particular pages and
sheets containing the parts relied upon will be identified. If printed
publications are cited, the author (if any), title, date, pages or
plates, and place of publication, or place where a copy can be found,
will be given.
* * * * * *
22. Section 1.130 is amended by revising the section heading and
paragraph (a) to read as follows:
§ 1.130 Affidavit or declaration to disqualify commonly owned patent
or published application as prior art.
(a) When any claim of an application or a patent under reexamination
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is rejected under 35 U.S.C. 103 on a U.S. patent or U.S. patent
application publication which is not prior art under 35 U.S.C. 102(b),
and the inventions defined by the claims in the application or patent
under reexamination and by the claims in the patent or published
application are not identical but are not patentably distinct, and the
inventions are owned by the same party, the applicant or owner of the
patent under reexamination may disqualify the patent or patent
application publication as prior art. The patent or patent application
publication can be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with § 1.321(c); and
(2) An oath or declaration stating that the application or patent
under reexamination and patent or published application are currently
owned by the same party, and that the inventor named in the application
or patent under reexamination is the prior inventor under 35 U.S.C. 104.
* * * * * *
23. Section 1.131 is amended by revising paragraph (a) to read as follows:
§ 1.131 Affidavit or declaration of prior invention.
(a) When any claim of an application or a patent under reexamination
is rejected, the inventor of the subject matter of the rejected claim,
the owner of the patent under reexamination, or the party qualified
under §§ 1.42, 1.43, or 1.47, may submit an appropriate oath or
declaration to establish invention of the subject matter of the rejected
claim prior to the effective date of the reference or activity on which
the rejection is based. The effective date of a U.S. patent, U.S. patent
application publication, or international application publication under
PCT Article 21(2) is the earlier of its publication date or date that it
is effective as a reference under 35 U.S.C. 102(e). Prior invention may
not be established under this section in any country other than the
United States, a NAFTA country, or a WTO member country. Prior invention
may not be established under this section before December 8, 1993, in a
NAFTA country other than the United States, or before January 1, 1996,
in a WTO member country other than a NAFTA country. Prior invention may
not be established under this section if either:
(1) The rejection is based upon a U.S. patent or U.S. patent
application publication of a pending or patented application to another
or others which claims the same patentable invention as defined in
§ 1.601(n); or
(2) The rejection is based upon a statutory bar.
* * * * * *
24. Section 1.132 is revised to read as follows:
§ 1.132 Affidavits or declarations traversing rejections or objections.
When any claim of an application or a patent under reexamination is
rejected or objected to, any evidence submitted to traverse the
rejection or objection on a basis not otherwise provided for must be by
way of an oath or declaration under this section.
25. Section 1.137 is revised to read as follows:
§ 1.137 Revival of abandoned application, terminated reexamination
proceeding, or lapsed patent.
(a) Unavoidable. If the delay in reply by applicant or patent owner
was unavoidable, a petition may be filed pursuant to this paragraph to
revive an abandoned application, a reexamination proceeding terminated
under §§ 1.550(d) or 1.957(b) or (c), or a lapsed patent. A grantable
petition pursuant to this paragraph must be accompanied by:
(1) The reply required to the outstanding Office action or notice,
unless previously filed;
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(2) The petition fee as set forth in § 1.17(l);
(3) A showing to the satisfaction of the Commissioner that the entire
delay in filing the required reply from the due date for the reply until
the filing of a grantable petition pursuant to this paragraph was
unavoidable; and
(4) Any terminal disclaimer (and fee as set forth in § 1.20(d))
required pursuant to paragraph (d) of this section.
(b) Unintentional. If the delay in reply by applicant or patent owner
was unintentional, a petition may be filed pursuant to this paragraph to
revive an abandoned application, a reexamination proceeding terminated
under §§ 1.550(d) or 1.957(b) or (c), or a lapsed patent. A grantable
petition pursuant to this paragraph must be accompanied by:
(1) The reply required to the outstanding Office action or notice,
unless previously filed;
(2) The petition fee as set forth in § 1.17(m);
(3) A statement that the entire delay in filing the required reply
from the due date for the reply until the filing of a grantable petition
pursuant to this paragraph was unintentional. The Commissioner may
require additional information where there is a question whether the
delay was unintentional; and
(4) Any terminal disclaimer (and fee as set forth in § 1.20(d))
required pursuant to paragraph (d) of this section.
(c) Reply. In a nonprovisional application abandoned for failure to
prosecute, the required reply may be met by the filing of a continuing
application. In a nonprovisional utility or plant application filed on
or after June 8, 1995, and abandoned for failure to prosecute, the
required reply may also be met by the filing of a request for continued
examination in compliance with § 1.114. In an application or patent,
abandoned or lapsed for failure to pay the issue fee or any portion
thereof, the required reply must include payment of the issue fee or any
outstanding balance. In an application, abandoned for failure to pay the
publication fee, the required reply must include payment of the
publication fee.
(d) Terminal disclaimer. (1) Any petition to revive pursuant to this
section in a design application must be accompanied by a terminal
disclaimer and fee as set forth in § 1.321 dedicating to the public a
terminal part of the term of any patent granted thereon equivalent to
the period of abandonment of the application. Any petition to revive
pursuant to this section in either a utility or plant application filed
before June 8, 1995, must be accompanied by a terminal disclaimer and
fee as set forth in § 1.321 dedicating to the public a terminal part of
the term of any patent granted thereon equivalent to the lesser of:
(i) The period of abandonment of the application; or
(ii) The period extending beyond twenty years from the date on which
the application for the patent was filed in the United States or, if the
application contains a specific reference to an earlier filed
application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on
which the earliest such application was filed.
(2) Any terminal disclaimer pursuant to paragraph (d)(1) of this
section must also apply to any patent granted on a continuing utility or
plant application filed before June 8, 1995, or a continuing design
application, that contains a specific reference under 35 U.S.C. 120,
121, or 365(c) to the application for which revival is sought.
(3) The provisions of paragraph (d)(1) of this section do not apply
to applications for which revival is sought solely for purposes of
copendency with a utility or plant application filed on or after June 8,
1995, to lapsed patents, or to reexamination proceedings.
(e) Request for reconsideration. Any request for reconsideration or
review of a decision refusing to revive an abandoned application, a
terminated reexamination proceeding, or lapsed patent upon petition
filed pursuant to this section, to be considered timely, must be filed
within two months of the decision refusing to revive or within such time
as set in the decision. Unless a decision indicates otherwise, this time
period may be extended under:
(1) The provisions of § 1.136 for an abandoned application or lapsed
patent;
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(2) The provisions of § 1.550(c) for a terminated ex parte
reexamination proceeding filed under § 1.510; or
(3) The provisions of § 1.956 for a terminated inter partes
reexamination proceeding filed under § 1.913. (f) Abandonment for
failure to notify the Office of a foreign filing: A nonprovisional
application abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for
failure to timely notify the Office of the filing of an application in a
foreign country or under a multinational treaty that requires
publication of applications eighteen months after filing, may be revived
only pursuant to paragraph (b) of this section. The reply requirement of
paragraph (c) of this section is met by the notification of such filing
in a foreign country or under a multinational treaty, but the filing of
a petition under this section will not operate to stay any period for
reply that may be running against the application.
(g) Provisional applications. A provisional application, abandoned
for failure to timely respond to an Office requirement, may be revived
pursuant to this section. Subject to the provisions of 35 U.S.C. 119(e)
(3) and § 1.7(b), a provisional application will not be regarded as
pending after twelve months from its filing date under any
circumstances.
26.Section 1.138 is amended by revising paragraph (a) and adding
paragraph (c) to read as follows:
§ 1.138 Express abandonment.
(a) An application may be expressly abandoned by filing a written
declaration of abandonment identifying the application in the United
States Patent and Trademark Office. Express abandonment of the
application may not be recognized by the Office before the date of issue
or publication unless it is actually received by appropriate officials
in time to act.
* * * * * *
(c) An applicant seeking to abandon an application to avoid
publication of the application (see § 1.211(a)(1)) must submit a
declaration of express abandonment by way of a petition under this
section including the fee set forth in § 1.17(h) in sufficient time to
permit the appropriate officials to recognize the abandonment and remove
the application from the publication process. Applicant should expect
that the petition will not be granted and the application will be
published in regular course unless such declaration of express
abandonment and petition are received by the appropriate officials more
than four weeks prior to the projected date of publication.
27. Section 1.165 is amended by revising paragraph (b) to read as follows:
§ 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 and a black and white photocopy that
accurately depicts, to the extent possible, the subject matter shown in
the color drawing or photograph must be submitted.
28. A new, undesignated center heading and new §§ 1.211, 1.213, 1.215,
1.217, 1.219, and 1.221 are added to Subpart B-National Processing
Provisions to read as follows:
Publication of Applications
§ 1.211 Publication of applications.
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(a) Each U.S. national application for patent filed in the Office
under 35 U.S.C. 111(a) and each international application in compliance
with 35 U.S.C. 371 will be published promptly 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, unless:
(1) The application is recognized by the Office as no longer pending;
(2) The application is national security classified (see § 5.2(c)),
subject to a secrecy order under 35 U.S.C. 181, or under national
security review;
(3) The application has issued as a patent in sufficient time to be
removed from the publication process; or
(4) The application was filed with a nonpublication request in
compliance with § 1.213(a).
(b) Provisional applications under 35 U.S.C. 111(b) shall not be
published, and design applications under 35 U.S.C. chapter 16 and
reissue applications under 35 U.S.C. chapter 25 shall not be published
under this section.
(c) An application filed under 35 U.S.C. 111(a) will not be published
until it includes the basic filing fee (§ 1.16(a) or 1.16(g)), any
English translation required by § 1.52(d), and an executed oath or
declaration under § 1.63. The Office may delay publishing any
application until it includes a specification having papers in
compliance with § 1.52 and an abstract (§ 1.72(b)), drawings in
compliance with § 1.84, and a sequence listing in compliance with
§§ 1.821 through 1.825 (if applicable), and until any petition under
§ 1.47 is granted.
(d) The Office may refuse to publish an application, or to include a
portion of an application in the patent application publication
(§ 1.215), if publication of the application or portion thereof would
violate Federal or state law, or if the application or portion thereof
contains offensive or disparaging material.
(e) The publication fee set forth in § 1.18(d) must be paid in each
application published under this section before the patent will be
granted. If an application is subject to publication under this section,
the sum specified in the notice of allowance under § 1.311 will also
include the publication fee which must be paid within three months from
the date of mailing of the notice of allowance to avoid abandonment of
the application. This three-month period is not extendable. If the
application is not published under this section, the publication fee (if
paid) will be refunded.
§ 1.213 Nonpublication request.
(a) If the invention disclosed in an application has not been and
will not be the subject of an application filed in another country, or
under a multilateral international agreement, that requires publication
of applications eighteen months after filing, the application will not
be published under 35 U.S.C. 122(b) and § 1.211 provided:
(1) A request (nonpublication request) is submitted with the
application upon filing;
(2) The request states in a conspicuous manner that the application
is not to be published under 35 U.S.C. 122(b);
(3) The request contains a certification that the invention disclosed
in the application has not been and will not be the subject of an
application filed in another country, or under a multilateral
international agreement, that requires publication at eighteen months
after filing; and
(4) The request is signed in compliance with § 1.33(b).
(b) The applicant may rescind a nonpublication request at any time. A
request to rescind a nonpublication request under paragraph (a) of this
section must:
(1) Identify the application to which it is directed;
(2) State in a conspicuous manner that the request that the
application is not to be published under 35 U.S.C. 122(b) is rescinded;
and
(3) Be signed in compliance with § 1.33(b).
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(c) If an applicant who has submitted a nonpublication request under
paragraph (a) of this section subsequently files an application directed
to the invention disclosed in the application in which the
nonpublication request was submitted in another country, or under a
multilateral international agreement, that requires publication of
applications eighteen months after filing, the applicant must notify the
Office of such filing within forty-five days after the date of the
filing of such foreign or international application. The failure to
timely notify the Office of the filing of such foreign or international
application shall result in abandonment of the application in which the
nonpublication request was submitted (35 U.S.C. 122(b)(2)(B)(iii)).
§ 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
application publication will be based upon the application papers
deposited on the filing date of the application, as well as the executed
oath or declaration submitted to complete the application, and any
application papers or drawings submitted in reply to a preexamination
notice requiring a title and abstract in compliance with § 1.72,
application papers in compliance with § 1.52, drawings in compliance
with § 1.84, or a sequence listing in compliance with §§ 1.821 through
1.825, except as otherwise provided in this section. The patent
application publication will not include any amendments, including
preliminary amendments, unless applicant supplies a copy of the
application containing the amendment pursuant to paragraph (c) of this
section.
(b) If applicant wants the patent application publication to include
assignee information, the applicant must include the assignee
information on the application transmittal sheet or the application data
sheet (§ 1.76). Assignee information may not be included on the patent
application publication unless this information is provided on the
application transmittal sheet or application data sheet included with
the application on filing. Providing this information on the application
transmittal sheet or the application data sheet does not substitute for
compliance with any requirement of part 3 of this chapter to have an
assignment recorded by the Office.
(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 during examination, provided that
applicant supplies such a copy in compliance with the Office electronic
filing system requirements within one month of the actual filing date of
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.
(d) If the copy of the application submitted pursuant to paragraph
(c) of this section does not comply with the Office electronic filing
system requirements, the Office will publish the application as provided
in paragraph (a) of this section. If, however, the Office has not
started the publication process, the Office may use an untimely filed
copy of the application supplied by the applicant under paragraph (c) of
this section in creating the patent application publication.
§ 1.217 Publication of a redacted copy of an application.
(a) If an applicant has filed applications in one or more foreign
countries, directly or through a multilateral international agreement,
and such foreign-filed applications or the description of the invention
in such foreign-filed applications is less extensive than the
application or description of the invention in the application filed in
the Office, the applicant may submit a redacted copy of the application
filed in the Office for publication, eliminating any part or description
of the invention that is not also contained in any of the corresponding
applications filed in a foreign country. The Office will publish the
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application as provided in § 1.215(a) unless the applicant files a
redacted copy of the application in compliance with this section within
sixteen months after the earliest filing date for which a benefit is
sought under title 35, United States Code.
(b) The redacted copy of the application must be submitted in
compliance with the Office electronic filing system requirements. The
title of the invention in the redacted copy of the application must
correspond to the title of the application at the time the redacted copy
of the application is submitted to the Office. If the redacted copy of
the application does not comply with the Office electronic filing system
requirements, the Office will publish the application as provided in
§ 1.215(a).
(c) The applicant must also concurrently submit in paper (§ 1.52(a))
to be filed in the application:
(1) A certified copy of each foreign-filed application that
corresponds to the application for which a redacted copy is submitted;
(2) A translation of each such foreign-filed application that is in a
language other than English, and a statement that the translation is
accurate;
(3) A marked-up copy of the application showing the redactions in
brackets; and
(4) A certification that the redacted copy of the application
eliminates only the part or description of the invention that is not
contained in any application filed in a foreign country, directly or
through a multilateral international agreement, that corresponds to the
application filed in the Office.
(d) The Office will provide a copy of the complete file wrapper and
contents of an application for which a redacted copy was submitted under
this section to any person upon written request pursuant to § 1.14(c)
(2), unless applicant complies with the requirements of paragraphs (d)
(1), (d)(2), and (d)(3) of this section.
(1) Applicant must accompany the submission required by paragraph (c)
of this section with the following:
(i) A copy of any Office correspondence previously received by
applicant including any desired redactions, and a second copy of all
Office correspondence previously received by applicant showing the
redacted material in brackets; and
(ii) A copy of each submission previously filed by the applicant
including any desired redactions, and a second copy of each submission
previously filed by the applicant showing the redacted material in
brackets.
(2) In addition to providing the submission required by paragraphs
(c) and (d)(1) of this section, applicant must:
(i) Within one month of the date of mailing of any correspondence
from the Office, file a copy of such Office correspondence including any
desired redactions, and a second copy of such Office correspondence
showing the redacted material in brackets; and
(ii) With each submission by the applicant, include a copy of such
submission including any desired redactions, and a second copy of such
submission showing the redacted material in brackets.
(3) Each submission under paragraph (d)(1) or (d)(2) of this
paragraph must also be accompanied by the processing fee set forth in
§ 1.17(i) and a certification that the redactions are limited to the
elimination of material that is relevant only to the part or description
of the invention that was not contained in the redacted copy of the
application submitted for publication.
(e) The provisions of § 1.8 do not apply to the time periods set
forth in this section.
§ 1.219 Early publication.
(a) Applications that will be published under § 1.211 may be
published earlier than as set forth in § 1.211(a) at the request of the
applicant.Any request for early publication must be accompanied by the
publication fee set forth in § 1.18(d). If the applicant does not submit
a copy of the application in compliance with the Office electronic
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filing system requirements pursuant to § 1.215(c), the Office will
publish the application as provided in § 1.215(a). No consideration will
be given to requests for publication on a certain date, and such
requests will be treated as a request for publication as soon as
possible.
§ 1.221 Voluntary publication or republication of patent application
publication.
(a) Any request for publication of an application filed before, but
pending on, November 29, 2000, and any request for republication of an
application previously published under § 1.211, must include a copy of
the application in compliance with the Office electronic filing system
requirements and be accompanied by the publication fee set forth in
§ 1.18(d) and the processing fee set forth in § 1.17(i). If the request
does not comply with the requirements of this paragraph or the copy of
the application does not comply with the Office electronic filing system
requirements, the Office will not publish the application and will
refund the publication fee.
(b) The Office will grant a request for a corrected or revised patent
application publication other than as provided in paragraph (a) of this
section only when the Office makes a material mistake which is apparent
from Office records. Any request for a corrected or revised patent
application publication other than as provided in paragraph (a) of this
section must be filed within two months from the date of the patent
application publication. This period is not extendable.
29.Section 1.291 is amended by revising paragraph (a)(1) to read as
follows:
§ 1.291 Protests by the public against pending applications.
(a) ***
(1) The protest is submitted prior to the date the application was
published or the mailing of a notice of allowance under § 1.311,
whichever occurs first; and
* * * * * *
30. Section 1.292 is amended by revising paragraph (b)(3) to read as
follows: § 1.292 Public use proceedings.
* * * * * *
(b) * * *
(3) The petition is submitted prior to the date the application was
published or the mailing of a notice of allowance under § 1.311,
whichever occurs first.
* * * * * *
31. Section 1.311 is revised to read as follows:
§ 1.311 Notice of allowance.
(a) If, on examination, it appears that the applicant is entitled to
a patent under the law, a notice of allowance will be sent to the
applicant at the correspondence address indicated in § 1.33. The notice
of allowance shall specify a sum constituting the issue fee which must
be paid within three months from the date of mailing of the notice of
allowance to avoid abandonment of the application. The sum specified in
the notice of allowance may also include the publication fee, in which
case the issue fee and publication fee (§ 1.211(f)) must both be paid
within three months from the date of mailing of the notice of allowance
to avoid abandonment of the application. This three-month period is not
extendable.
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(b) An authorization to charge the issue or other post-allowance fees
set forth in § 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 to
any deposit account identified in a previously filed authorization to
charge fees:
(1) An incorrect issue fee; or
(2) A completed Office-provided issue fee transmittal form (where no
issue fee has been submitted).
32. A new § 1.417 is added to read as follows:
§ 1.417. Submission of translation of international application.
The submission of the international publication or an English
language translation of an international application pursuant to 35
U.S.C. 154(d)(4) must clearly identify the international application to
which it pertains (§ 1.5(a)) and, unless it is being submitted pursuant
to § 1.494 or § 1.495, be clearly identified as a submission pursuant to
35 U.S.C. 154(d)(4). Otherwise, the submission will be treated as a
filing under 35 U.S.C. 111(a). Such submissions should be marked `Box
PCT.'
33. Section 1.494 is amended by revising paragraph (f) to read as follows:
§ 1.494 Entering the national stage in the United States of America as a
Designated Office.
* * * * * *
(f) The documents and fees submitted under paragraphs (b) and (c) of
this section must, except for a copy of the international publication or
translation of the international application that is identified as
provided in § 1.417, be clearly identified as a submission to enter the
national stage under 35 U.S.C. 371. Otherwise, the submission will be
considered as being made under 35 U.S.C. 111(a).
* * * * * *
34. Section 1.495 is amended by revising paragraph (g) to read as follows:
§ 1.495 Entering the national stage in the United States of America
as an Elected Office.
* * * * * *
(g) The documents and fees submitted under paragraphs (b) and (c) of
this section must, except for a copy of the international publication or
translation of the international application that is identified as
provided in § 1.417, be clearly identified as a submission to enter
the national stage under 35 U.S.C. 371. Otherwise, the submission will
be considered as being made under 35 U.S.C. 111(a).
* * * * * *
PART 5-SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE
APPLICATIONS IN FOREIGN COUNTRIES
35. The authority citation for 37 CFR part 5 is revised 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
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delegations in the regulations under these Acts to the Commissioner (15
CFR 370.10(j), 22 CFR 125.04, and 10 CFR 810.7).
36. Section 5.1 is amended by revising paragraph (e) to read as follows:
§ 5.1 Applications and correspondence involving national security.
* * * * * *
(e) An application will not be published under § 1.211 of this
chapter or allowed under § 1.311 of this chapter if publication or
disclosure of the application would be detrimental to national security.
An application under national security review will not be published at
least until six months from its filing date or three months from the
date the application was referred to a defense agency, whichever is
later. A national security classified patent application will not be
published under § 1.211 of this chapter or allowed under § 1.311 of this
chapter until the application is declassified and any secrecy order
under § 5.2(a) has been rescinded.
* * * * *
Sept. 12, 2000 Q. TODD DICKINSON
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1239 OG 63]