(96) Department of Commerce
Patent and Trademark Office
37 CFR Parts 1 and 3
[Docket No. 9504087-5087-01]
RIN: 0651-AA76
Changes to Implement 20-Year Patent
Term and Provisional Applications
Agency: Patent and Trademark Office, Commerce.
Action: Final rule.
Summary: The Patent and Trademark Office (PTO) is amending the rules of
practice in patent cases, Parts 1 and 3 of title 37, Code of Federal
Regulations, to establish procedures for: (1) filing and processing
provisional application papers; (2) calculating the length of any patent
term extension to which an applicant is entitled where the issuance of a
patent on an application filed on or after June 8, 1995 (the
implementation date of the 20-year patent term provisions of the Uruguay
Round Agreements Act), other than for designs, was delayed due to
interference proceedings, the imposition of a secrecy order and/or
appellate review; and (3) implementing certain transitional provisions
contained in the Uruguay Round Agreements Act.
Effective Date: June 8, 1995.
For Further Information Contact: Magdalen Y. Greenlief or John F.
Gonzales, Senior Legal Advisors, Office of the Deputy Assistant
Commissioner for Patent Policy and Projects, by telephone at (703)
305-9285, by fax at (703) 308-6916 or by mail marked to their attention
and addressed to the Commissioner of Patents and Trademarks, Box DAC,
Washington, D.C. 20231.
Supplementary Information: The Uruguay Round Agreements Act (Public Law
103-465) was enacted on December 8, 1994. Public Law 103-465 amends 35
U.S.C. 154 to provide that the term of patent protection begins on the
date of grant and ends 20 years from the filing date of the application.
The amendment applies to all utility and plant patents issued on
applications having an actual United States application filing date on or
after June 8, 1995. Specifically, 35 U.S.C. 154(a)(2), as contained in
Public Law 103-465, provides that the patent term will begin on the date
on which the patent issues and will end twenty years from the date on
which the application was filed in the United States. If the application
contains a specific reference to an earlier application under 35 U.S.C.
120, 121 or 365(c), the patent term will end twenty years from the date on
which the earliest application referred to was filed. As amended by Public
Law 103-465, 35 U.S.C. 154 does not take into account for determination of
the patent term any application on which priority is claimed under 35
U.S.C. 119, 365(a) or 365(b).
Under 35 U.S.C. 154(b)(1), as contained in Public Law 103-465, if the
issuance of an original patent is delayed due to interference proceedings
under 35 U.S.C. 135(a) or because the application is placed under a
secrecy order under 35 U.S.C. 181, the term of the patent shall be
extended for the period of delay, but in no case more than five (5) years.
Under 35 U.S.C. 154(b)(2), as contained in Public Law 103-465, if the
issuance of a patent is delayed due to appellate review by the Board of
Patent Appeals and Interferences or by a Federal court and the patent is
issued pursuant to a decision in the review reversing an adverse
determination of patentability, the term of the patent shall be extended
for a period of time but in no case more than five (5) years. However, a
patent shall not be eligible for extension under 35 U.S.C. 154(b)(2) if
the patent is subject to a terminal disclaimer due to the issuance of
another patent claiming subject matter that is not patentably distinct
from that under appellate review.
Under 35 U.S.C. 154(b)(3)(B) and 154(b)(3)(C), as contained in Public
Law 103-465, the period of extension under 35 U.S.C. 154(b)(2) shall be
reduced by any time attributable to appellate review before the expiration
of three (3) years from the filing date of the application and for any
period of time during which the applicant for patent did not act with due
diligence, as determined by the Commissioner.
Under 35 U.S.C. 154(b)(4), as contained in Public Law 103-465, the
total duration of all extensions of a patent under 35 U.S.C. 154(b) shall
not exceed five (5) years.
The provisions for patent term extension under 35 U.S.C. 154(b) are
separate from and in addition to the patent term extension provisions of
35 U.S.C. 156. The patent term extension provisions of 35 U.S.C. 154(b)
are designed to compensate the patent owner for delays in issuing a
patent, whereas the patent term extension provisions of 35 U.S.C. 156 are
designed to restore term lost to premarket regulatory review after the
grant of a patent. In order to prevent a term extension under 35 U.S.C.
154(b) from precluding a term extension under 35 U.S.C. 156, Public Law
103-465 amends 35 U.S.C. 156(a)(2) to specify that the term has never been
extended under 35 U.S.C. 156(e)(1).
The 20-year patent term provision is contained in 35 U.S.C. 154, as
amended by Public Law 103-465. Section 154 of title 35, United States
Code, applies to utility and plant patents, but not to design patents. The
term of a design patent is defined in 35 U.S.C. 173 as fourteen (14) years
from the date of grant. Therefore, the patent term and patent term
extension provisions set forth in 35 U.S.C. 154, as amended by Public Law
103-465, do not apply to patents for designs.
In addition, Public Law 103-465 establishes a domestic priority system.
In accordance with the provisions of the Paris Convention for the
Protection of Industrial Property, the term of a patent cannot include the
Paris Convention priority period. Public Law 103-465 provides a mechanism
to enable applicants to quickly and inexpensively file provisional
applications. Applicants will be entitled to claim the benefit of priority
in a given application based upon a previously filed provisional
application in the United States. The domestic priority period will not
count in the measurement of the term.
Section 111 of title 35, United States Code, was amended by Public Law
103-465 to provide for the filing of a provisional application on or after
June 8, 1995. Section 41(a)(1) of title 35, United States Code, was
amended by Public Law 103-465 to provide a $150.00 filing fee for each
provisional application, subject to a fifty (50) percent reduction for a
small entity. The requirements for obtaining a filing date for a
provisional application are the same as those which previously existed for
an application filed under 35 U.S.C. 111, except that no claim or claims
as set forth in 35 U.S.C. 112, second paragraph, is required. Moreover, no
oath/declaration as set forth in 35 U.S.C. 115 is required. The
provisional application is also not subject to the provisions of 35 U.S.C.
131, 135 and 157, i.e., a provisional application will not be examined for
patentability, placed in interference or made the subject of a statutory
invention registration. Further, the provisional application will
automatically be abandoned no later than twelve (12) months after its
filing date and will not be subject to revival to restore it to pending
status beyond a date which is after twelve (12) months from its filing
date. A provisional application will not be entitled to claim priority
benefits based on any other application under 35 U.S.C. 119, 120, 121 or
365.
Also, Public Law 103-465 amended 35 U.S.C. 119 to allow an applicant to
claim the benefit of the filing date of one or more copending provisional
applications in a later filed application for patent under 35 U.S.C.
111(a) or 363. The later filed application for patent under 35 U.S.C.
111(a) or 363 must be filed by an inventor or inventors named in the
copending provisional application not later than 12 months after the date
on which the provisional application was filed and must contain or be
amended to contain a specific reference to the provisional application.
The provisional application must disclose an invention which is claimed in
the application for patent under 35 U.S.C. 111(a) or 363 in the manner
provided by the first paragraph of 35 U.S.C. 112. In addition, the
provisional application must be pending on the filing date of the
application for patent under 35 U.S.C. 111(a) or 363 and the filing fee
set forth in subparagraph (A) or (C) of 35 U.S.C. 41(a)(1) must be paid.
Since 35 U.S.C. 154(a)(3), as contained in Public Law 103-465, excludes
from the determination of the patent term any application on which
priority is claimed under 35 U.S.C. 119, 365(a) or 365(b), the filing date
of a provisional application is not considered in determining the term of
any patent.
Section 119(e)(1) of title 35, United States Code, provides that if all
of the conditions of 35 U.S.C. 119(e)(1) and (e)(2) are met, an
application for patent filed under 35 U.S.C. 111(a) or 363 shall have the
same effect as though filed on the date of the provisional application.
Thus, the effective United States filing date of an application for patent
filed under 35 U.S.C. 111(a), and entitled to benefits under 35 U.S.C.
119(e), is the filing date of the provisional application. Any patent
granted on such an application, is prior art under 35 U.S.C. 102(e) as of
the filing date of the provisional application.
Likewise, the effective United States filing date of a patent issued on
an international application filed under 35 U.S.C. 363, and entitled to
benefits under 35 U.S.C. 119(e), is the filing date of the provisional
application, except for the purpose of applying that patent as prior art
under 35 U.S.C. 102(e). For that purpose only, 35 U.S.C. 102(e) defines
the filing date of the international application as the date the
requirements of 35 U.S.C. 371(c)(1), (c)(2) and (c)(4) were fulfilled.
Public Law 103-465 further includes transitional provisions for limited
reexamination in certain applications pending for two (2) years or longer
as of June 8, 1995, taking into account any reference to any earlier
application under 35 U.S.C. 120, 121 or 365(c). The transitional
provisions also permit examination of more than one independent and
distinct invention in certain applications pending for three (3) years or
longer as of June 8, 1995, taking into account any reference to any
earlier application under 35 U.S.C. 120, 121 or 365(c). These transitional
provisions are not applicable to any application which is filed after June
8, 1995, regardless of whether the application is a continuing application.
The amendments to title 35 relating to 20-year patent term, patent term
extension, provisional applications and the transitional provisions are
effective on the date which is six (6) months after the date of enactment,
i.e., on June 8, 1995.
A Notice of Proposed Rulemaking was published in the Federal Register
at 59 FR 63951 (December 12, 1994) and in the Patent and Trademark Office
Official Gazette at 1170 Off. Gaz. Pat. Office 377-390 (January 3, 1995).
Forty-nine written comments were received in response to the Notice of
Proposed Rulemaking. A public hearing was held at 9:30 a.m. on February
16, 1995. Fourteen individuals offered oral comments at the hearing. The
forty-nine written comments and a transcript of the hearing are available
for public inspection in the Special Program Law Office, Office of the
Deputy Assistant Commissioner for Patent Policy and Projects, Room 520,
Crystal Park I, 2011 Crystal Drive, Arlington, Virginia, and are available
on the Internet through anonymous file transfer protocol (ftp), address:
ftp.uspto.gov.
The following includes a discussion of the rules being added or
amended, the reasons for those additions and amendments and an analysis of
the comments received in response to the Notice of Proposed Rulemaking.
Changes in text: The final rules contain numerous changes to the text
of the rules as proposed for comment. Those changes are discussed below.
Familiarity with the Notice of Proposed Rulemaking is assumed.
Section 1.9(a)(1) is being changed for clarity to define a national
application as a U.S. application for patent which was either filed in the
Office under 35 U.S.C. 111, or which entered the national stage from an
international application after compliance with 35 U.S.C. 371. Also, a new
paragraph (a)(3) is being added to define the term "nonprovisional
application" as a U.S. national application for patent which was either
filed in the Office under 35 U.S.C. 111(a), or which entered the national
stage from an international application after compliance with 35 U.S.C.
371.
The proposed deletion of 1.60 is being withdrawn. Therefore,
1.17(i) is being changed to retain the reference to 1.60.
Section 1.17(q) is being changed to delete the fifty (50) percent
reduction for small entities in the $50.00 fee established for filing a
petition under 1.48 in a provisional application and a petition to
accord a provisional application a filing date or to convert an
application filed under 1.53(b)(1) to a provisional application.
Sections 1.17(r) and (s) are being changed to include a fifty (50)
percent reduction for small entities in the fees established for entry of
a submission after final rejection under 1.129(a) and for each
additional invention requested to be examined under 1.129(b). In the
final rule, the fee required by 1.17(r) and 1.17(s) from a small
entity is $365.00. The fee required from other than a small entity is
$730.00.
The elimination of the small entity reduction in 1.17(q) and the
addition of the small entity reduction in 1.17(r) and (s) are the
result of additional review, which resulted in the conclusion that the
fees established for the transitional procedures in 1.129(a) and (b)
may be reduced by fifty (50) percent for small entities. However, the
petition fees required by 1.17(q) are not subject to the fifty (50)
percent reduction for small entities.
The proposed deletion of the retention fee practice set forth in former
1.53(d), now redesignated 1.53(d)(1), is being withdrawn. Therefore,
1.21(l) is being retained and amended to refer to 1.53(d)(1). Also,
the proposed change in the text to 1.17(n) is being withdrawn, since
1.60 is being retained.
Section 1.28(a) is being changed to clarify the procedure for
establishing status as a small entity in a nonprovisional application
claiming benefit under 35 U.S.C. 119(e), 120, 121, or 365(c) of a prior
application. In such cases, applicants may file a new verified statement
or they may rely on a verified statement filed in the prior application,
if status as a small entity is still proper and desired. If applicants
intend to rely on a verified statement filed in the prior application,
applicants must include in the nonprovisional application either a
reference to the verified statement filed in the prior application or a
copy of the verified statement filed in the prior application. A verified
statement in compliance with existing 1.27 is required to be filed in
each provisional application in which it is desired to pay reduced fees.
Section 1.45(c), first sentence, is being changed for clarity to refer
to a "nonprovisional" application.
Section 1.48 is being changed to include a new paragraph (e) setting
forth the procedure for deleting the name of a person who was erroneously
named as an inventor in a provisional application. The procedure requires
an amendment deleting the name of the person who was erroneously named
accompanied by: a petition including a statement of facts verified by the
person whose name is being deleted establishing that the error occurred
without deceptive intention; the fee set forth in 1.17(q); and the
written consent of any assignee. The first sentences of 1.48(a)-(c)
are also being changed for clarity to refer to a "nonprovisional"
application.
Section 1.51(a)(2)(i) is being changed to require that the provisional
application cover sheet include the residence of each named inventor and,
if the invention was made by an agency of the U.S. Government or under a
contract with an agency of the U.S. Government, the name of the U.S.
Government agency and Government contract number. The residence of each
named inventor is information which is necessary to identify those
provisional applications which must be reviewed by the PTO for foreign
filing licenses. If the invention disclosed in the provisional application
was made by an agency of the U.S. Government or under a contract with an
agency of the U.S. Government, the security review for that application
should already have been done by that agency of the U.S. Government.
Therefore, identification of those particular provisional applications on
the cover sheet will reduce the number of applications which the PTO must
forward to other agencies of the U.S. Government for security review.
Section 1.53(b)(1) is being changed to retain the reference to 1.60.
Section 1.53(b)(2)(ii) is being changed to require that any petition
and petition fee to convert a 1.53(b)(1) application to a provisional
application be filed in the 1.53(b)(1) application prior to the earlier
of the abandonment of the 1.53(b)(1) application, the payment of the
issue fee, the expiration of twelve (12) months after the filing date of
the 1.53(b)(1) application, or the filing of a request for a statutory
invention registration under 1.293. Where the 1.53(b)(1) application
was abandoned before the expiration of twelve (12) months after the filing
date of the application, a petition to convert the application to a
provisional application may be filed in the 1.53(b)(1) application if
the petition to convert is filed prior to the expiration of twelve (12)
months after the filing date of the 1.53(b)(1) application and is
accompanied by an appropriate petition to revive an abandoned application
under 1.137.
Section 1.53(b)(2)(iii) is being changed to indicate that the
requirements of 1.821-1.825 regarding application disclosures
containing nucleotide and/or amino acid sequences are not mandatory for
provisional applications.
Section 1.53(d)(1) is being changed to retain the retention fee
practice. The proposal to delete the retention fee practice set forth in
1.53(d) is being withdrawn.
The first sentences of 1.55(a) and (b) are being changed for
clarity to refer to a "nonprovisional" application. Also, 1.55(a) and
(b) are being changed to clarify that the nonprovisional application may
claim the benefit of one or more prior foreign applications or one or more
applications for inventor's certificate.
Section 1.59 is being changed to retain the reference to the retention
fee set forth in 1.21(l) and to clarify that the retention fee practice
applies only to applications filed under 1.53(b)(1).
The proposal to delete 1.60 is being withdrawn. Therefore, 1.60
is being retained and amended to clarify in the title of the section and
in paragraph (b)(1) that the procedure set forth in the section is only
available for filing a continuation or divisional application if the prior
application was a nonprovisional application and complete as set forth in
1.51(a)(1). Also, paragraph (b)(4) is being amended to delete the
requirement that the statement which must accompany the copy of the prior
application include the language that "no amendments referred to in the
oath or declaration filed to complete the prior application introduced new
matter therein." The requirement is unnecessary because any amendment
filed to complete the prior application would be considered a part of the
original disclosure of the prior application and, by definition, could not
contain new matter. Also, paragraph (b)(4) is being amended to refer to
1.17(i).
Section 1.62(a) is being changed to refer to a prior complete
"nonprovisional" application and to clarify that a continuing application
may be filed under 1.62 after payment of the issue fee if a petition
under 1.313(b)(5) is granted in the prior application. Section 1.62(a)
is also being changed to clarify the existing practice that the request
for a 1.62 application must include identification of the inventors
named in the prior application.
Section 1.63(a) is being changed for clarity to refer to an oath or
declaration filed as a part of a "nonprovisional" application.
Section 1.67(b) is being changed for clarity to refer to a
"nonprovisional" application.
Sections 1.78(a)(1) and (a)(2) are being changed to refer to a
"nonprovisional" application and to clarify that the nonprovisional
application may claim the benefit of one or more prior copending
nonprovisional applications or international applications designating the
United States of America. Section 1.78(a)(1)(ii) is being changed to
retain the reference to 1.60. Section 1.78(a)(1)(iii) is being retained
and amended to refer to 1.53(b)(1) and 1.53(d)(1).
Sections 1.78(a)(3) and (a)(4) are being changed to refer to a
"nonprovisional" application and to clarify that the nonprovisional
application may claim the benefit of one or more prior copending
provisional applications.
Section 1.78(a)(3) is also being changed to remind applicants and
practitioners that when the last day of pendency of a provisional
application falls on a Saturday, Sunday, or Federal holiday within the
District of Columbia, any nonprovisional application claiming benefit of
the provisional application must be filed prior to the Saturday, Sunday,
or Federal holiday within the District of Columbia. Section 111(b)(5) of
title 35, United States Code, states that a provisional application is
abandoned twelve months after its filing date. Sections 119(e)(1) and
(e)(2) of title 35, United States Code, require that a nonprovisional
application claiming benefit of a prior provisional application be filed
not later than twelve months after the date on which the provisional
application was filed and that the provisional application be pending on
the filing date of the nonprovisional application. Under 1.6 and
1.10, no filing dates are accorded to applications on a Saturday, Sunday,
or Federal holiday within the District of Columbia. Thus, if a provisional
application is abandoned by operation of 35 U.S.C. 111(b)(5) on a
Saturday, Sunday, or Federal holiday within the District of Columbia, a
nonprovisional application claiming benefit of the provisional application
under 35 U.S.C. 119(e) must be filed no later than the preceding day which
is not a Saturday, Sunday, or Federal holiday within the District of
Columbia.
Section 1.78(a)(4) is also being changed to delete the requirement that
the reference in the nonprovisional application to the provisional
application indicate the relationship of the applications. As a result of
the change, 1.78(a)(4) provides that a nonprovisional application
claiming benefit of one or more provisional applications must contain a
reference to each provisional application, identifying it as a provisional
application and including the provisional application number (consisting
of series code and serial number). However, the section does not require
the nonprovisional application to identify the nonprovisional application
as a continuation, divisional or continuation-in-part application of the
provisional application.
Section 1.83(a) is being changed to delete the proposed redesignation
of paragraph (a) and to delete proposed paragraph (a)(2). Also,
1.83(a) and (c) are being changed for clarity to refer to a
"nonprovisional" application. Further, 1.83(c) is being changed to
remove the reference to paragraph (a)(1).
Section 1.101 is being changed for clarity to refer to a
"nonprovisional" application.
Sections 1.129(a) and (b) are being changed to identify the effective
date of 35 U.S.C. 154(a)(2) as June 8, 1995.
Further, 1.129(a) is being changed to provide that the first and
second submissions and fees set forth in 1.17(r) must be filed prior to
the filing of an Appeal Brief, rather than prior to the filing of the
Notice of Appeal, and prior to abandonment of the application. The
requirement that the fee set forth in 1.17(r) be filed within one month
of the notice refusing entry is being deleted. Section 1.129(a) is also
being changed to provide that the finality of the final rejection is
automatically withdrawn upon the timely filing of the submission and
payment of the fee set forth in 1.17(r). The language indicating that
the submission would be entered and considered after timely payment of the
fee set forth in 1.17(r) "to the extent that it would have been entered
and considered if made prior to final rejection" is being deleted. In view
of the magnitude of the fee set forth in 1.17(r), the next PTO action
following timely payment of the fee set forth in 1.17(r) will be
equivalent to a first action in a continuing application. Under existing
PTO practice, it would not be proper to make final a first Office action
in a continuing application where the continuing application contains
material which was presented in the earlier application after final
rejection or closing of prosecution but was denied entry because (1) new
issues were raised that required further consideration and/or search, or
(2) the issue of new matter was raised. The identical procedure will apply
to examination of a submission considered as a result of the procedure
under 1.129(a). Thus, under 1.129(a), if the first submission after
final rejection was initially denied entry in the application because (1)
new issues were raised that required further consideration and/or search,
or (2) the issue of new matter was raised, then the next action in the
application will not be made final. Likewise, if the second submission
after final rejection was initially denied entry in the application
because (1) new issues were raised that required further consideration
and/or search, or (2) the issue of new matter was raised, then the next
action in the application will not be made final. In view of 35 U.S.C.
132, no amendment considered as a result of the payment of the fee set
forth in 1.17(r) may introduce new matter into the disclosure of the
application.
Section 1.129(b)(1) is being changed to identify the date which is two
months prior to the effective date of 35 U.S.C. 154(a)(2) as April 8,
1995. Section 1.129(b)(1) is also being changed to clarify in subsection
(ii) that the examiner has not made a requirement for restriction in the
present or parent application prior to April 8, 1995, due to actions by
the applicant.
Section 1.129(b)(2) is being changed to delete the identification of
the period provided for applicants to respond to a notification under
1.129(b) as one month. The time period for response will be identified in
any written notification under 1.129(b) and will usually be one month,
but in no case will it be less than thirty days. The period may be
extended under 1.136(a). The language is also being changed to provide
that applicant may respond to the notification by (i) electing the
invention or inventions to be searched and examined, if no election has
been made prior to the notice, and paying the fee set forth in 1.17(s)
for each independent and distinct invention claimed in the application in
excess of one which applicant elects, (ii) confirming an election made
prior to the notice and paying the fee set forth in 1.17(s) for each
independent and distinct invention claimed in the application in addition
to the one invention which applicant previously elected, or (iii) filing a
petition under 1.129(b)(2) traversing the requirement without regard to
whether the requirement has been made final. No petition fee is required.
The section is also being changed to provide that if the petition under
1.129(b)(2) is filed in a timely manner, the original time period for
electing and paying the fee set forth in 1.17(s) will be deferred and
any decision on the petition affirming or modifying the requirement will
set a new time period to elect the invention or inventions to be searched
and examined and to pay the fee set forth in 1.17(s) for each
independent and distinct invention claimed in the application in excess of
one which applicant elects.
Section 1.129(c) is being changed to clarify that the provisions of
1.129(a) and (b) are not applicable to any application filed after June
8, 1995. However, any application filed on June 8, 1995 would be subject
to a 20-year patent term.
Section 1.137 is being amended by revising paragraph (c) to eliminate,
in all applications filed on or after June 8, 1995, except design
applications, the requirement that a terminal disclaimer accompany any
petition under 1.137(a) not filed within six (6) months of the date of
the abandonment of the application. The language "filed before June 8,
1995" and "filed on or after June 8, 1995" as used in the amended rule,
refer to the actual United States filing date, without reference to any
claim for benefit under 35 U.S.C. 120, 121 or 365. No change to 1.137
was proposed in the Notice of Proposed Rulemaking. However, in all
applications filed on or after June 8, 1995, except design applications,
any delay in filing a petition under 1.137(a) will automatically result
in the loss of patent term. The loss of patent term will be the incentive
for applicants to promptly file any petition to revive. Therefore, no need
is seen for requiring a terminal disclaimer in such applications. It would
amount to a penalty if a terminal disclaimer was required.
Section 1.316 is being amended by revising paragraph (d) to eliminate,
in all applications filed on or after June 8, 1995, except design
applications, the requirement that a terminal disclaimer accompany any
petition under 1.316(b) not filed within six (6) months of the date of
the abandonment of the application. Acceptance of a late payment of an
issue fee in a design application is specifically provided for in
1.155. Therefore, 1.316 does not apply to design applications. The
language "filed before June 8, 1995" as used in the amended rule, refers
to the actual United States filing date, without reference to any claim
for benefit under 35 U.S.C. 120, 121 or 365. No change to 1.316 was
proposed in the Notice of Proposed Rulemaking. However, in all
applications filed on or after June 8, 1995, except design applications,
any delay in filing a petition under 1.316(b) will automatically result
in the loss of patent term. The loss of patent term will be the incentive
for applicants to promptly file any petition under 1.316(b). Therefore,
no need is seen for requiring a terminal disclaimer in such applications.
It would amount to a penalty if a terminal disclaimer was required.
Section 1.317 is being amended by removing and reserving paragraph (d)
to eliminate the requirement that a terminal disclaimer accompany any
petition under 1.317(b) not filed within six (6) months of the date of
lapse of the patent. No change to 1.317 was proposed in the Notice of
Proposed Rulemaking. However, the delay in filing a petition under
1.317(b) does not result in any gain of patent term. Therefore, no reason
is seen for requiring a terminal disclaimer in such cases.
Section 1.701(a) is being changed to identify the implementation date
as June 8, 1995, and to clarify that a proceeding under 35 U.S.C. 135(a)
is an interference proceeding.
Section 1.701(b) is being changed to provide that the term of a patent
entitled to an extension under 1.701 shall be extended for the sum of
the periods of delay calculated under paragraphs (c)(1), (c)(2), (c)(3)
and (d) of 1.701 and the extension will run from the expiration date of
the patent. The reference to a terminal disclaimer is being deleted to be
consistent with 1.701(a)(3) and to avoid any confusion.
Section 1.701(c)(1)(i) is being changed for clarity by deleting the
phrase "if any" after the first occurrence of "interference" and by
inserting the same phrase after the phrase "the number of days."
Section 1.701(c)(1)(ii) is being changed to clarify that the period
referred to ends on the "date of the termination of the suspension" rather
than on the date of the next PTO communication reopening prosecution.
Section 1.701(d)(1) is being amended to clarify that the "time"
referred to is time "during the period of appellate review".
Section 1.701(d)(2) is being amended to clarify that the Commissioner,
under the broad discretion granted by 35 U.S.C. 154(b)(3)(C), has decided
to limit consideration of applicant's due diligence only to acts occurring
during the period of appellate review. The supplementary information
published in the Notice of Proposed Rulemaking contained examples of what
might be considered a lack of due diligence for purposes of 1.701(d)(2)
as proposed. Specifically, the supplementary information identified
requests for extensions of time to respond to Office communications,
submission of a response which is not fully responsive to an Office
communication, and filing of informal applications as examples. In view of
the comments received and the language adopted in the final rules, those
examples are withdrawn. Acts which the Commissioner considers to
constitute prima facie evidence of lack of due diligence under
1.701(d)(2) are suspensions at applicant's request under 1.103(a)
during the period of appellate review and abandonments during the period
of appellate review.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Parts 1 and 3, are being
amended as indicated below:
Section 1.1 is being amended to add a paragraph (i) to provide a
special "Box Provisional Patent Application" address to assist the Mail
Room in separating and processing provisional applications and mail
relating thereto.
Section 1.9 is being amended to redesignate paragraph (a) as paragraph
(a)(1) and to define a national application as a U.S. application for
patent which was either filed in the Office under 35 U.S.C. 111, or which
entered the national stage from an international application after
compliance with 35 U.S.C. 371. A new paragraph (a)(2) is being added to
define the term "provisional application" as a U.S. national application
filed under 35 U.S.C. 111(b). Also, a new paragraph (a)(3) is being added
to define the term "nonprovisional application" as a U.S. national
application for patent which was either filed in the Office under 35
U.S.C. 111(a), or which entered the national stage from an international
application after compliance with 35 U.S.C. 371.
Sections 1.12 and 1.14 are being amended to replace the references to
1.17(i)(1) with references to 1.17(i).
Sections 1.16(a)-(e) and (g) are being amended to clarify that those
sections do not apply to provisional applications. A complete provisional
application does not require claims. However, provisional applications may
be filed with one or more claims as part of the application. Nevertheless,
no additional claim fee or multiple dependent claim fee will be required
in a provisional application. Section 1.16(f) is being amended to insert
the words "basic fee". Section 1.16(e) refers to "the basic filing fee".
Current Office practice allows a design application to be filed without
the design filing fee or the oath/declaration as set forth in
1.53(d)(1). The change to 1.16(f) is merely for clarification. In
addition, 1.16(a) is being amended to replace the word "cases" with the
word "applications", since the word "applications" is used elsewhere in
the rule.
Section 1.16 is also being amended to add a new paragraph (k) which
lists the basic filing fee for a provisional application as $75.00 for a
small entity (see 1.9(c)-(f)) or $150.00 for other than a small
entity as contained in Public Law 103-465. Since the filing fee for a
provisional application is established by Public Law 103-465 as a 35
U.S.C. 41(a) fee, the filing fee for a provisional application will be
subject to the fifty (50) percent reduction provided for in 35 U.S.C.
41(h).
Further, 1.16 is being amended to add a new paragraph (l) which
establishes the surcharge required by new 1.53(d)(2) for filing the
basic filing fee or the cover sheet required by new 1.51(a)(2) for a
provisional application at a time later than the provisional application
filing date as $25.00 for a small entity or $50.00 for other than a small
entity.
Section 1.17(h) is being amended to clarify that the $130.00 petition
fee for filing a petition for correction of inventorship under 1.48
applies to all patent applications, except provisional applications.
Paragraph (i)(1) is being redesignated as paragraph (i) and paragraph
(i)(2) is being removed. The fee for a petition under 1.102 to make an
application special has been placed in paragraph (i). The words "of this
part", in 1.17, paragraphs (h) and (i), are being deleted, since the
paragraphs currently refer to sections in parts other than Part 1. Section
1.17(i) is also being amended to clarify that the fee set forth in
paragraph (i) for filing a petition to accord a filing date under 1.53
applies to all patent applications, except provisional applications.
A new 1.17(q) is being added to establish a petition fee of $50.00
for filing a petition for correction of inventorship under 1.48 in a
provisional application and for filing a petition to accord a provisional
application a filing date or to convert an application filed under
1.53(b)(1) to a provisional application. The petition fee set forth in
1.17(q) is not reduced for a small entity.
New 1.17(r) and (s) are being added to establish the fees for
entry of a submission after final rejection under 1.129(a) and for each
additional invention requested to be examined under 1.129(b),
respectively. These fees have been set at $365.00 for a small entity and
$730.00 for other than a small entity.
Section 1.21(l) is being amended to refer to 1.53(d)(1).
Section 1.28(a) is being amended to clarify the procedure for
establishing status as a small entity in a nonprovisional application
claiming benefit under 35 U.S.C. 119(e), 120, 121, or 365(c) of a prior
application. In such cases, applicants may file a new verified statement
or rely on a verified statement filed in the prior application, if status
as a small entity is still proper and desired. If applicants intend to
rely on a verified statement filed in the prior application, applicants
must include in the nonprovisional application either a reference to the
verified statement filed in the prior application or a copy of the
verified statement filed in the prior application. Status as a small
entity may be established in a provisional application by complying with
existing 1.27.
Section 1.45(c) is being amended to clarify that the first sentence
applies to a "nonprovisional" application. Section 1.45(c) is also being
amended to add a second sentence relating to joint inventors named in a
provisional application. The second sentence states that each inventor
named in a provisional application must have made a contribution to the
subject matter disclosed in the provisional application. All that
1.45(c), second sentence, requires is that if a person is named as an
inventor in a provisional application, that person must have made a
contribution to the subject matter disclosed in the provisional
application.
Sections 1.48(a)-(c) are being amended to specify that the procedures
for correcting an error in inventorship set forth in those sections apply
to nonprovisional applications. New paragraph (d) is being added to
establish a procedure for adding the name of an inventor in a provisional
application, where the name was originally omitted without deceptive
intent. Paragraph (d) does not require the verified statement of facts by
the original inventor or inventors, the oath or declaration by each actual
inventor in compliance with 1.63 or the consent of any assignee as
required in paragraph (a). Instead, the procedure requires the filing of a
petition identifying the name or names of the inventors to be added and
including a statement that the name or names of the inventors were omitted
through error without deceptive intention on the part of the actual
inventor(s). The statement would be required to be verified if made by a
person not registered to practice before the PTO. The statement could be
signed by a registered practitioner of record in the application or acting
in a representative capacity under 1.34(a). The $50.00 petition fee set
forth in 1.17(q) would also be required. New paragraph (e) is also
being added setting forth the procedure for deleting the name of a person
who was erroneously named as an inventor in a provisional application. The
procedure requires an amendment deleting the name of the person who was
erroneously named accompanied by: a petition including a statement of
facts verified by the person whose name is being deleted establishing that
the error occurred without deceptive intention; the fee set forth in
1.17(q); and the written consent of any assignee.
Section 1.51 is being amended to redesignate 1.51(a) as
1.51(a)(1) and to include a new paragraph (a)(2) identifying the required
parts of a complete provisional application. As set forth in
1.51(a)(2), a complete provisional application includes a cover sheet, a
specification as prescribed in 35 U.S.C. 112, first paragraph, any
necessary drawings and the provisional application filing fee. A suggested
cover sheet format for a provisional application is included as an
Appendix A to this Notice of Final Rulemaking and is available from the
PTO free of charge to the public. However, the rule does not require the
applicant to use the PTO suggested cover sheet. Any paper containing the
information required in 1.51(a)(2)(i) will be acceptable. The cover
sheet is required to identify the paper as a provisional application and
to provide the information which is necessary for the PTO to prepare the
provisional application filing receipt. Also, the residence of each named
inventor and, if the invention disclosed in the provisional application
was made by an agency of the U.S. Government or under a contract with an
agency of the U.S. Government, the name of the U.S. Government agency and
Government contract number must be identified on the cover sheet.
Section 1.51(b) is being amended to indicate that an information
disclosure statement is not required and may not be filed in a provisional
application. Any information disclosure statements filed in a provisional
application will either be returned or disposed of at the convenience of
the Office. An information disclosure statement filed in a 1.53(b)(1)
application which has been converted to a provisional application will be
retained in the application after the conversion, if the information
disclosure statement was filed before the petition required by
1.53(b)(2)(ii) was filed.
The title of 1.53 and paragraph (a) are being amended to refer to
application number, rather than application serial number. The term
"application number" is found in current 1.5(a).
Section 1.53(b) is being redesignated as 1.53(b)(1) and is being
amended to refer to 1.17(i) rather than 1.17(i)(1) to conform to the
change therein.
A new 1.53(b)(2) is being added to set forth the requirements for
obtaining a filing date for a provisional application. Section 1.53(b)(2)
states that a filing date will be accorded to a provisional application as
of the date the specification as prescribed by 35 U.S.C. 112, first
paragraph, any necessary drawings, and the name of each inventor of the
subject matter disclosed are filed in the PTO. The filing date
requirements for a provisional application set forth in new paragraph
(b)(2) parallel the existing requirements set forth in former paragraph
(b), now redesignated paragraph (b)(1), except that no claim is required.
In order to minimize the cost of processing provisional applications and
to reduce the handling of provisional applications, amendments, other than
those required to make the provisional application comply with applicable
regulations, are not permitted after the filing date of the provisional
application.
Section 1.53(b)(2)(i) is being added requiring all provisional
applications to be filed with a cover sheet identifying the application as
a provisional application. The section also indicates that the PTO will
treat an application as having been filed under 1.53(b)(1), unless the
application is identified as a provisional application on filing. A
provisional application, which is identified as such on filing, but which
does not include all of the information required by 1.51(a)(2)(i) would
still be treated as a provisional application. However, the omitted
information and a surcharge would be required to be submitted at a later
date under new 1.53(d)(2).
Section 1.53(b)(2)(ii) is being added to establish a procedure for
converting an application filed under 1.53(b)(1) to a provisional
application. The section requires that a petition requesting the
conversion and a petition fee be filed in the 1.53(b)(1) application
prior to the earlier of the abandonment of the 1.53(b)(1) application,
the payment of the issue fee, the expiration of twelve (12) months after
the filing date of the 1.53(b)(1) application, or the filing of a
request for a statutory invention registration under 1.293. The grant
of any such petition would not entitle applicant to a refund of the fees
properly paid in the application filed under 1.53(b)(1).
Section 1.53(b)(2)(iii) is being added to call attention to the
provisions of Public Law 103-465 which prohibit any provisional
application from claiming a right of priority under 35 U.S.C. 119 or
365(a) or the benefit of an earlier filing date under 35 U.S.C. 120, 121
or 365(c) of any other application. The section also calls attention to
the provisions of Public Law 103-465 which provide that no claim for
benefit of an earlier filing date may be made in a design application
based on a provisional application and that no request for a statutory
invention registration may be filed in a provisional application. Section
1.53(b)(2)(iii) further specifies that the requirements of
1.821-1.825 are not mandatory for provisional applications. However,
applicants are reminded that an invention being claimed in an application
filed under 35 U.S.C. 111(a) or 365 which claims benefit under 35 U.S.C.
119(e) of a provisional application must be disclosed in the provisional
application in the manner provided by the first paragraph of 35 U.S.C.
112. Voluntary compliance with the requirements of 1.821-1.825 in the
provisional application is recommended, in order to ensure that support
for the invention claimed in the 35 U.S.C.111(a) application can be
readily ascertained in the provisional application.
Section 1.53(c) is being amended to require that any request for review
of a refusal to accord an application a filing date be made by way of a
petition accompanied by the fee set forth in 1.17(i), if the
application was filed under 1.53(b)(1), or by the fee set forth in
1.17(q), if the application was filed under 1.53(b)(2). This reflects
the current practice set forth in the Manual of Patent Examining Procedure
(MPEP), section 506.02 (Sixth Edition, Jan. 1995) with regard to any
request for review of a refusal to accord a filing date for an
application. The PTO will continue its current practice of refunding the
petition fee, if the refusal to accord the requested filing date is found
to have been a PTO error.
Section 1.53(d) is being redesignated as 1.53(d)(1).
Section 1.53(d)(2) is being added to provide that a provisional
application may be filed without the basic filing fee and without the
complete cover sheet required by 1.51(a)(2). In such a case, the
applicant will be notified and given a period of time in which to file the
missing fee, and/or cover sheet and to pay the surcharge set forth in
1.16(l).
Section 1.53(e) is being redesignated as 1.53(e)(1) and amended to
refer to 1.53(b)(1). Also, a new 1.53(e)(2) is being added to
indicate that a provisional application will not be given a substantive
examination and will be abandoned no later than twelve (12) months after
its filing date.
Sections 1.55(a) and (b) are being amended to clarify that the sections
apply to nonprovisional applications and to clarify that a nonprovisional
application may claim the benefit of one or more prior foreign
applications or one or more applications for inventor's certificate. Also,
1.55(a) is being amended to replace the reference to 35 U.S.C. 119 with
a reference to 35 U.S.C. 119(a)-(d). In addition, the reference to
1.17(i)(1) in 1.55(a) is being replaced by a reference to 1.17(i) to
be consistent with the change to 1.17. Section 1.55(b) is also being
amended to refer to 35 U.S.C. 119(d) to conform to the paragraph
designations contained in Public Law 103-465.
Section 1.59 is being amended to clarify that the retention fee
practice set forth in 1.53(d)(1) applies only to applications filed
under 1.53(b)(1).
Section 1.60 is being amended to clarify in the title of the section
and in paragraph (b)(1) that the procedure set forth in the section is
only available for filing a continuation or divisional application if the
prior application was a nonprovisional application and complete as set
forth in 1.51(a)(1). Paragraph (b)(4) is being amended to delete the
requirement that the statement which must accompany the copy of the prior
application include the language that "no amendments referred to in the
oath or declaration filed to complete the prior application introduced new
matter therein." The requirement is unnecessary because any amendment
filed to complete the prior application would be considered a part of the
original disclosure of the prior application and, by definition, could not
contain new matter. Also, paragraph (b)(4) is being amended to refer to
1.17(i).
Section 1.62(a) is being amended to clarify that the procedure set
forth in the section is only available for filing a continuation,
continuation-in-part, or divisional application of a prior nonprovisional
application which is complete as defined in 1.51(a)(1). Section 1.62(a)
is also being amended to clarify that a continuing application may be
filed under 1.62 after payment of the issue fee if a petition under
1.313(b)(5) is granted in the prior application and that the request for a
1.62 application must include identification of the inventors named in
the prior application. The phrase "Serial number, filing date" in
1.62(a) is being changed to "application number."
Section 1.62(e) is being amended to replace the reference to
1.17(i)(1) with a reference to 1.17(i) to be consistent with the change
to 1.17. Also, the term "application serial number" in 1.62(e) is
being changed to "application number."
Section 1.63(a) is being amended to replace the reference to
1.51(a)(2) with a reference to 1.51(a)(1)(ii) in order to conform with
the changes in 1.51 and to refer to an oath or declaration filed as a
part of a nonprovisional application.
Section 1.67(b) is being amended to replace the reference to 1.53(d)
with a reference to 1.53(d)(1) in order to conform with the changes in
1.53. Furthermore, the references to 1.53(b) and 1.118 are being
deleted to make clear that the new matter exclusion applies to all
applications including those filed under 1.60 and 1.62.Also, the
section is being amended to refer to a nonprovisional application.
Sections 1.78(a)(1) and (a)(2) are being amended to clarify that the
sections apply to nonprovisional applications claiming the benefit of one
or more copending nonprovisional applications or international
applications designating the United States of America. Section
1.78(a)(1)(iii) is being amended to refer to 1.53(b)(1) and
1.53(d)(1). Section 1.78(a)(2) is also being amended to eliminate the use
of serial number and filing date as an identifier for a prior application.
The section will require that the prior application be identified by
application number (consisting of the series code and serial number) or
international application number and international filing date.
Sections 1.78(a)(3) and (a)(4) are being added to set forth the
conditions under which a nonprovisional application may claim the benefit
of one or more prior copending provisional applications. The later filed
nonprovisional application must be an application other than for a design
patent and must be copending with each provisional application. There must
be a common inventor named in the prior provisional application and the
later filed nonprovisional application. Each prior provisional application
must be complete as set forth in 1.51(a)(2), or entitled to a filing
date as set forth in 1.53(b)(2) and include the basic filing fee.
Section 1.78(a)(3) also includes the warning that when the last day of
pendency of a provisional application falls on a Saturday, Sunday, or
Federal holiday within the District of Columbia, any nonprovisional
application claiming benefit of the provisional application must be filed
prior to the Saturday, Sunday, or Federal holiday within the District of
Columbia. A provisional application may be abandoned by operation of 35
U.S.C. 111(b)(5) on a Saturday, Sunday, or Federal holiday within the
District of Columbia, in which case, a nonprovisional application claiming
benefit of the provisional application under 35 U.S.C. 119(e) must be
filed no later than the preceding day which is not a Saturday, Sunday, or
Federal holiday within the District of Columbia.
Section 1.78(a)(4) is also being added to provide that a nonprovisional
application claiming benefit of one or more provisional applications must
contain a reference to each provisional application, identifying it as a
provisional application and including the provisional application number
(consisting of series code and serial number). The section does not
require the nonprovisional application to identify the nonprovisional
application as a continuation, divisional or continuation-in-part
application of the provisional application.
Sections 1.83(a) and (c) are being amended to clarify that the sections
apply to nonprovisional applications.
Section 1.97(d) is being amended to replace the reference to
1.17(i)(1) with a reference to 1.17(i) to be consistent with the change
to 1.17.
Section 1.101(a) is being amended to indicate that the section applies
to nonprovisional applications.
Section 1.102(d) is being amended to replace the reference to
1.17(i)(2) with a reference to 1.17(i) to be consistent with the change
to 1.17.
Section 1.103(a) is amended to replace the reference to 1.17(i)(1)
with a reference to 1.17(i) to be consistent with the change to 1.17.
Section 1.129 is being added to set forth the procedure for
implementing certain transitional provisions contained in Public Law
103-465. Section 1.129(a) provides for limited reexamination of
applications pending for 2 years or longer as of June 8, 1995, taking into
account any reference to any earlier application under 35 U.S.C. 120, 121
or 365(c). An applicant will be entitled to have a first submission
entered and considered on the merits after final rejection if the
submission and the fee set forth in 1.17(r) are filed prior to the
filing of an Appeal Brief and prior to abandonment of the application.
Section 1.129(a) also provides that the finality of the final rejection is
automatically withdrawn upon the timely filing of the submission and
payment of the fee set forth in 1.17(r). After submission and payment
of the fee set forth in 1.17(r), the next PTO action on the merits may
be made final only under the conditions currently followed by the PTO for
making a first action in a continuing application final. If a subsequent
final rejection is made in the application, applicant would be entitled to
have a second submission entered and considered on the merits under the
same conditions set forth for consideration of the first submission.
Section 1.129(a) defines the term "submission" as including, but not
limited to, an information disclosure statement, an amendment to the
written description, claims or drawings, and a new substantive argument or
new evidence in support of patentability. For example, the submission may
include an amendment, a new substantive argument and an information
disclosure statement. In view of the fee set forth in 1.17(r), any
information disclosure statement previously refused consideration in the
application because of applicant's failure to comply with 1.97(c) or
(d) or which is filed as part of either the first or second submission
will be treated as though it had been filed within one of the time periods
set forth in 1.97(b) and will be considered without the petition and
petition fee required in 1.97(d), if it complies with the requirements
of 1.98. In view of 35 U.S.C. 132, no amendment considered as a result
of the payment of the fee set forth in 1.17(r) may introduce new matter
into the disclosure of the application.
Section 1.129(b)(1) is being added to provide for examination of more
than one independent and distinct invention in certain applications
pending for 3 years or longer as of June 8, 1995, taking into account any
reference to any earlier application under 35 U.S.C. 120, 121 or 365(c).
Under 1.129(b)(1), a requirement for restriction or for the filing of
divisional applications would only be made or maintained in the
application after June 8, 1995, if: (1) the requirement was made in the
application or in an earlier application relied on under 35 U.S.C. 120,
121 or 365(c) prior to April 8, 1995; (2) the examiner has not made a
requirement for restriction in the present or parent application prior to
April 8, 1995, due to actions by the applicant; or (3) the required fee
for examination of each additional invention was not paid. Under
1.129(b)(2), if the application contains claims to more than one
independent and distinct invention, and no requirement for restriction or
for the filing of divisional applications can be made or maintained,
applicant will be notified and given a time period to (i) elect the
invention or inventions to be searched and examined, if no election has
been made prior to the notice, and pay the fee set forth in 1.17(s) for
each independent and distinct invention claimed in the application in
excess of one which applicant elects, (ii) in situations where an election
was made in response to a requirement for restriction that cannot be
maintained, confirm the election made prior to the notice and pay the fee
set forth in 1.17(s) for each independent and distinct invention
claimed in the application in addition to the one invention which
applicant previously elected, or (iii) file a petition under
1.129(b)(2) traversing the requirement without regard to whether the
requirement has been made final. No petition fee is required. Section
1.129(b)(2) also provides that if the petition is filed in a timely
manner, the original time period for electing and paying the fee set forth
in 1.17(s) will be deferred and any decision on the petition affirming
or modifying the requirement will set a new time period to elect the
invention or inventions to be searched and examined and to pay the fee set
forth in 1.17(s) for each independent and distinct invention claimed in
the application in excess of one which applicant elects. Under
1.129(b)(3), each additional invention for which the required fee set
forth in 1.17(s) has not been paid will be withdrawn from consideration
under 1.142(b). An applicant who desires examination of an invention so
withdrawn from consideration can file a divisional application under 35
U.S.C. 121.
Section 1.129(c) is being added to clarify that the provisions of
1.129(a) and (b) are not applicable to any application filed after June 8,
1995. However, any application filed on June 8, 1995, would be subject to
a 20-year patent term.
Section 1.137 is being amended by revising paragraph (c) to eliminate,
in all applications filed on or after June 8, 1995, except design
applications, the requirement that a terminal disclaimer accompany any
petition under 1.137(a) not filed within six (6) months of the date of
the abandonment of the application. The language "filed before June 8,
1995" and "filed on or after June 8, 1995" as used in the amended rule,
refer to the actual United States filing date, without reference to any
claim for benefit under 35 U.S.C. 120, 121 or 365.
Section 1.139 is being added to set forth the procedure for reviving a
provisional application where the delay was unavoidable or unintentional.
Section 1.139(a) addresses the revival of a provisional application where
the delay was unavoidable and 1.139(b) addresses the revival of a
provisional application where the delay was unintentional. Applicant may
petition to have an abandoned provisional application revived as a pending
provisional application for a period of no longer than twelve months from
the filing date of the provisional application where the delay was
unavoidable or unintentional. It would be permissible to file a petition
for revival later than twelve months from the filing date of the
provisional application but only to revive the application for the
twelve-month period following the filing of the provisional application.
Thus, even if the petition were granted to reestablish the pendency up to
the end of the twelve-month period, the provisional application would not
be considered pending after twelve months from its filing date. The
requirements for reviving an abandoned provisional application set forth
in 1.139 parallel the existing requirements set forth in 1.137.
Sections 1.177, 1.312(b), 1.313(a), and 1.314 are being amended to
replace the references to 1.17(i)(1) with references to 1.17(i) to
be consistent with the change to 1.17.
Section 1.316(d) is being amended to eliminate, in all applications
filed on or after June 8, 1995, except design applications, the
requirement that a terminal disclaimer accompany any petition under
1.316(b) not filed within six (6) months of the date of the abandonment of
the application. Acceptance of a late payment of an issue fee in a design
application is specifically provided for in 1.155. Therefore, 1.316
does not apply to design applications. The language "filed before June 8,
1995" as used in the amended rule, refers to the actual United States
filing date, without reference to any claim for benefit under 35 U.S.C.
120, 121 or 365.
Section 1.317(d) is being removed and reserved to eliminate the
requirement that a terminal disclaimer accompany any petition under
1.317(b) not filed within six (6) months of the date of lapse of the
patent.
Section 1.666 is being amended to replace the reference to
1.17(i)(1) with a reference to 1.17(i) to be consistent with the change
to 1.17.
Section 1.701 is being added to set forth the procedure the PTO will
follow in calculating the length of any extension of patent term to which
an applicant is entitled under 35 U.S.C. 154(b) where the issuance of a
patent on an application, other than for designs, filed on or after June
8, 1995, was delayed due to certain causes of prosecution delay.
Applicants need not file a request for the extension of patent term under
1.701. The extension of patent term is automatic by operation of law. It
is currently anticipated that applicant will be advised as to the length
of any patent term extension at the time of receiving the Notice of
Allowance and Issue Fee Due. Review of the length of a patent term
extension calculated by the PTO under 1.701 prior to the issuance of
the patent would be by way of petition under 1.181. If an error is
noted after the patent issues, patentee and any third party may seek
correction of the period of patent term granted by filing a request for
Certificate of Correction pursuant to 1.322. The PTO intends to
identify the length of any patent term extension calculated under 1.701
on the printed patent.
Section 1.701(a) is being added to identify those patents which are
entitled to an extension of patent term under 35 U.S.C. 154(b).
Section 1.701(b) is being added to provide that the term of a patent
entitled to extension under 1.701(a) shall be extended for the sum of
the periods of delay calculated under 1.701(c)(1), (c)(2), (c)(3) and
(d), to the extent that those periods are not overlapping, up to a maximum
of five years. The section also provides that the extension will run from
the expiration date of the patent.
Section 1.701(c)(1) is being added to set forth the method for
calculating the period of delay where the delay was a result of an
interference proceeding under 35 U.S.C. 135(a). The period of delay with
respect to each interference in which the application was involved is
calculated under 1.701(c)(1)(i) to include the number of days in the
period beginning on the date the interference was declared or redeclared
to involve the application in the interference and ending on the date that
the interference was terminated with respect to the application. An
interference is considered terminated as of the date the time for filing
an appeal under 35 U.S.C. 141 or civil action under 35 U.S.C. 146 expired.
If an appeal under 35 U.S.C. 141 is taken to the Court of Appeals for the
Federal Circuit, the interference terminates on the date of receipt of the
court's mandate by the PTO. If a civil action is filed under 35 U.S.C.
146, and the decision of the district court is not appealed, the
interference terminates on the date the time for filing an appeal from the
court's decision expires. See section 2361 of the MPEP. The period of
delay with respect to an application suspended by the PTO due to
interference proceedings under 35 U.S.C. 135(a) not involving the
application is calculated under 1.701(c)(1)(ii) to include the number
of days in the period beginning on the date prosecution in the application
is suspended due to interference proceedings not involving the application
and ending on the date of the termination of the suspension. The period of
delay under 1.701(a)(1) is the sum of the periods calculated under
1.701(c)(1)(i) and (c)(1)(ii), to the extent that the periods are not
overlapping.
Section 1.701(c)(2) is being added to set forth the method for
calculating the period of delay where the delay was a result of the
application being placed under a secrecy order.
Section 1.701(c)(3) is being added to set forth the method for
calculating the period of delay where the delay was a result of appellate
review. The period of delay is calculated under 1.701(c)(3) to include
the number of days in the period beginning on the date on which an appeal
to the Board of Patent Appeals and Interferences was filed under 35 U.S.C.
134 and ending on the date of a final decision in favor of the applicant
by the Board of Patent Appeals and Interferences or by a Federal court in
an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
Section 1.701(d) is being added to set forth the method for calculating
any reduction in the period calculated under 1.701(c)(3). As required
by 35 U.S.C. 154(b)(3)(B), 1.701(d)(1) provides that the period of
delay calculated under 1.701(c)(3) shall be reduced by any time during
the period of appellate review that occurred before three years from the
filing date of the first national application for patent presented for
examination. The "filing date" for the purpose of 1.701(d)(1) would be
the earliest effective U.S. filing date, but not including the filing date
of a provisional application or the international filing date of a PCT
application. For PCT applications entering the national stage, the PTO
will consider the "filing date" for the purpose of 1.701(d)(1) to be
the date on which applicant has complied with the requirements of
1.494(b), or 1.495(b), if applicable.
As contained in Public Law 103-465, 35 U.S.C. 154(b)(3)(C) states that
the period of extension referred to in 35 U.S.C. 154(b)(2) "shall be
reduced for the period of time during which the applicant for patent did
not act with due diligence, as determined by the Commissioner." Section
1.701(d)(2) is being added to provide that the period of delay calculated
under 1.701(c)(3) shall be reduced by any time during the period of
appellate review, as determined by the Commissioner, during which the
applicant for patent did not act with due diligence. Section 1.701(d)(2)
also provides that in determining the due diligence of an applicant, the
Commissioner may examine the facts and circumstances of the applicant's
actions during the period of appellate review to determine whether the
applicant exhibited that degree of timeliness as may reasonably be
expected from, and which is ordinarily exercised by, a person during a
period of appellate review. Acts which the Commissioner considers to
constitute prima facie evidence of lack of due diligence under
1.701(d)(2) are suspension at applicant's request under 1.103(a) during
the period of appellate review and abandonment during the period of
appellate review.
Section 3.21 is being amended to provide that an assignment relating to
a national patent application must identify the national patent
application by the application number (consisting of the series code and
the serial number, e.g., 07/123,456) and to eliminate the use of serial
number and filing date as an identifier for national patent applications
in assignment documents. This change is intended to eliminate any
confusion as to whether an application identified by its serial number and
filing date in an assignment document is an application filed under
1.53(b)(1), 1.60 or 1.62 or a design application or a provisional
application since there is a different series code assigned to each of
these types of applications.
Section 3.21 is also being amended to provide that if an assignment of
a patent application filed under 1.53(b)(1) or 1.62 is executed
concurrently with, or subsequent to, the execution of the patent
application, but before the patent application is filed, it must identify
the patent application by its date of execution, name of each inventor,
and title of the invention so that there can be no mistake as to the
patent application intended.
Further, 3.21 is being amended to provide that if an assignment of a
provisional application is executed before the provisional application is
filed, it must identify the provisional application by name of each
inventor and title of the invention so that there can be no mistake as to
the provisional application intended.
Section 3.81 is being amended to replace the reference to 1.17(i)(1)
with a reference to 1.17(i) to be consistent with the change to 1.17.
Responses to and Analysis of Comments: Forty-nine written comments were
received in response to the Notice of Proposed Rulemaking. These comments,
along with those made at the public hearing, have been analyzed. Some
suggestions made in the comments have been adopted and others have not
been adopted. Responses to the comments follow:
General Comments
1. Comment: One comment questioned the use of the word "proposed" in the
notice of proposed rulemaking in describing the statutory amendments
contained in Public Law 103-465.
Response: The statutory changes contained in Public Law 103-465 were
described as "proposed" changes in the Notice of Proposed Rulemaking
because the President had not signed the legislation at the time the
notice was prepared for publication. In fact, the legislation was signed
by the President on December 8, 1994, which is the date of enactment.
2. Comment: Several comments urged the PTO to favorably consider the 17/20
patent term specified in H.R. 359 since this proposed legislation would
overcome the existing impact of extended PTO prosecution and eliminate
patent term extensions for prosecution delays. Furthermore, the proposed
legislation is consistent with the Uruguay Round Agreements Act, Public
Law 103-465.
Response: The administration and the PTO strongly believe that the 20-year
patent term as enacted in Public Law 103-465 is the appropriate way to
implement the 20-year patent term required by the GATT Uruguay Round
Agreements Act. The PTO will take steps to ensure that processing and
examination of applications are handled expeditiously.
3. Comment: One comment stated that the proposed rules are premature in
view of the Rohrabacher bill, H.R. 359.
Response: The proposed rules are not premature. Public Law 103-465 was
signed into law on December 8, 1994, with an effective date of June 8,
1995, for the implementation of the 20-year patent term and provisional
applications. The Commissioner must promulgate regulations to implement
the changes required by Public Law 103-465.
4. Comment: One comment stated that there is nothing in the TRIPs
agreement that requires the term to be measured from filing, nor that
provisional applications be provided for, nor that new fees of $730 as set
forth in 1.17(r) and (s) be established. It is suggested that 35
U.S.C. 154 be amended to provide that "every patent (other than a design
patent) shall be granted a term of twenty years from the patent issue
date, subject to the payment of maintenance fees." It was also suggested
that the section regarding maintenance fees be amended to add a new fee
payable at 16.5 years of $5000 (for large entity)/$2500 (for small entity)
for maintenance of patent between 17 and 20 years.
Response: The suggestion has not been adopted. The administration and the
PTO strongly believe that the 20-year patent term as enacted in Public Law
103-465 is the appropriate way to implement the 20-year patent term
required by the GATT Uruguay Round Agreements Act. The establishment of a
provisional application is not required by GATT. The provisional
application has been adopted as a mechanism to provide easy and
inexpensive entry into the patent system. The filing of provisional
applications is optional. Provisional applications will place domestic
applicants on an equal footing with foreign applicants as far as the
measurement of term is concerned because the domestic priority period,
like the foreign priority period, is not counted in determining the
endpoint of the patent term. As to the 1.17(r) and (s) fees, the
statute authorizes the Commissioner to establish appropriate fees for
further limited reexamination of applications and for examination of more
than one independent and distinct inventions in an application.
5. Comment: One comment suggested that the 20-year patent term of claims
drawn to new matter in continuation-in-part (CIP) applications be measured
from the filing date of the CIP application, irrespective of any reference
to a parent application under 35 U.S.C. 120.
Response: The suggestion has not been adopted. The term of a patent is not
based on a claim-by-claim approach. Under 35 U.S.C. 154(a)(2), if an
application claims the benefit of the filing date of an earlier filed
application under 35 U.S.C. 120, 121 or 365(a), the 20-year term of that
application will be based upon the filing date of the earliest U.S.
application that the application makes reference to under 35 U.S.C. 120,
121 or 365(a). For a CIP application, applicant should review whether any
claim in the patent that will issue is supported in an earlier
application. If not, applicant should consider canceling the reference to
the earlier filed application.
6. Comment: One comment objected to the 20-year term provisions of Public
Law 103-465 because it was believed that payment of maintenance fees would
be required earlier under 20-year term than under 17-year term.
Response: The payment of maintenance fees are not due earlier under
20-year term than under 17-year term. Maintenance fees continue to be due
at 3.5, 7.5 and 11.5 years from the issue date of the patent.
7. Comment: Several comments suggested that the expiration date be printed
on the face of the patent.
Response: The suggestion has not been adopted. The expiration date will
not be printed on the face of the patent. The PTO will publish any patent
term extension that is granted as a result of administrative delay
pursuant to 1.701 on the face of the patent. The term of a patent will
be readily discernible from the face of the patent. Furthermore, it is
noted that the term of a patent is dependent on the timely payment of
maintenance fees which is not printed on the face of the patent.
8. Comment: One comment suggested that in order to aid the bar in advising
clients as to whether a provisional application has had its priority
claimed in a patent, the PTO should somehow link the provisional
application number with the complete application number and/or the patent
number.
Response: It is contemplated by the PTO that all provisional applications
will be given application numbers, starting with a series code "60"
followed by a six digit number, e.g., "60/123,456." If a subsequent 35
U.S.C. 111(a) application claims the benefit of the filing date of the
provisional application pursuant to 35 U.S.C. 119(e) and the 35 U.S.C.
111(a) application results in a patent, the provisional application would
be listed by its application number and filing date on the face of the
patent under the heading "Related U.S. Application Data." The public will
be able to identify an application under the above-noted heading as a
provisional application by checking to see if it has a series code of
"60."
9. Comment: Several comments suggested that the PTO consider modifying the
rules to permit the filing of all applications by assignees. This would
promote harmonization with other patent laws throughout the world and
would eliminate one of the difficulties which will occur for the PTO in
considering claims for priority based on the filing of a provisional
application.
Response: Assignee filing was recommended in the 1992 Advisory Commission
Report on Patent Law Reform. The PTO is currently undertaking a project to
reengineer the entire patent process. The suggestion will be taken under
advisement in that project.
10. Comment: Several comments stated that a complete provisional
application should not be forwarded to a central repository for storage.
Response: In view of the relatively small filing fee for a provisional
application and the fact that the provisional application will not be
examined, PTO handling must be kept to a minimum and these provisional
applications, once complete, will be sent to the Files Repository for
storage rather than being kept in the examination area of the PTO.
11. Comment: One comment suggested that the provisional application be
maintained with the 35 U.S.C. 111(a) application because the examiner may
need it to determine whether the 35 U.S.C. 111(a) application is entitled
to the benefit of the prior provisional application and in the event of
18-month publication, there will be a demand for accessibility by the
public to the provisional and 35 U.S.C. 111(a) applications upon
publication.
Response: The suggestion has not been adopted. Benefit of the same
provisional application may be claimed in a number of 35 U.S.C. 111(a)
applications. If the PTO is to maintain the provisional application file
with one of several 35 U.S.C. 111(a) applications claiming benefit of the
provisional application and the 35 U.S.C. 111(a) application containing
the provisional application file were to go abandoned while one of the
other 35 U.S.C. 111(a) applications issues, the public would be entitled
to inspect the provisional application file but not the abandoned 35
U.S.C. 111(a) application file containing the provisional application
file. This would create access problems.
12. Comment: One comment suggested that provisional applications be
available in full to the public if the benefit of priority is being
claimed.
Response: Section 1.14 relating to access applies to all applications
including provisional applications. If the benefit of a provisional
application is claimed in a later filed 35 U.S.C. 111(a) application which
resulted in a patent, then access to the provisional application will be
available to the public pursuant to 1.14. The mere fact that a
provisional application is claimed in a later filed 35 U.S.C. 111(a)
application does not give the public access to the provisional application
unless the 35 U.S.C. 111(a) application issues as a patent.
13. Comment: Several comments requested that the PTO clarify whether a 35
U.S.C. 111(a) application will be accorded an effective date as a
reference under 35 U.S.C. 102(e) as of the filing date of the provisional
application for which benefit under 35 U.S.C. 119(e) is claimed. If so,
the comment questioned whether pending applications will be rejected under
35 U.S.C. 102(e) on the basis that an invention was described in a patent
granted on a provisional application by another filed in the U.S. before
the invention thereof by the applicant for patent.
Response: If a patent is granted on a 35 U.S.C. 111(a) application
claiming the benefit of the filing date of a provisional application, the
filing date of the provisional application will be the 35 U.S.C. 102(e)
prior art date. A pending application will be rejected under 35 U.S.C.
102(e) on the basis that an invention was described in a patent granted on
a 35 U.S.C. 111(a) application which claimed the benefit of the filing
date of a provisional application by another filed in the U.S. before the
invention thereof by the applicant for patent.
14. Comment: One comment suggested that the PTO issue a final rule stating
that if a 35 U.S.C. 111(a) application claims the benefit of the filing
date of a provisional application, the "inventive entity" for the purposes
of 35 U.S.C. 102(e) will be the inventors listed on the issued patent, and
the list of inventors in the provisional application shall have no effect
on the identity of an "inventive entity" for the purposes of 35 U.S.C.
102(e).
Response: The suggestion has not been adopted. The "inventive entity" for
the purpose of 35 U.S.C. 102(e) is determined by the patent and not by the
inventors named in the provisional application. As long as the
requirements of 35 U.S.C. 119(e) are satisfied, a patent granted on a 35
U.S.C. 111(a) application which claimed the benefit of the filing date of
a provisional application has a 35 U.S.C. 102(e) prior art effect as of
the filing date of the provisional application based on the inventive
entity of the patent. It is clear from 35 U.S.C. 102(e) that the inventive
entity is determined by the patent and a rule to this effect is not
necessary.
15. Comment: One comment requested the PTO to express its position as to
whether the filing of a provisional application with the subsequent filing
of a 35 U.S.C. 111(a) application claiming benefit of the provisional
application under 35 U.S.C. 119(e) creates a prior art date against other
patent applicants under 35 U.S.C. 102(g).
Response: As to 35 U.S.C. 102(g), the filing of a provisional application
with the subsequent filing of a 35 U.S.C. 111(a) application claiming
benefit of the provisional application under 35 U.S.C. 119(e) creates a
prior art date under 35 U.S.C. 102(g) as of the filing date of the
provisional application.
16. Comment: One comment suggested that in view of the 20-year patent term
measured from filing, 1.103(a) should be deleted. The PTO should not
have the right to suspend action on any application, thereby reducing
applicant's term of protection.
Response: Section 1.103(a) refers to suspension of action as a result of a
request by applicant. If applicant wishes to suspend prosecution and
thereby reduce his/her term of protection, applicant should be permitted
to do so.
17. Comment: One comment suggested that in order to avoid delays resulting
from consideration of petitions to withdraw premature notices of
abandonment, examiners should be required to contact an attorney of record
prior to abandoning the application to find out if a response to an Office
communication has been filed.
Response: The suggestion has not been adopted. However, in order to avoid
loss of patent term, applicants are encouraged to check on the status in
cases where applicants have not received a return postcard from the PTO
within two (2) weeks of the filing of any response to a PTO action.
18. Comment: One comment asked whether there is a "cut-off" date after
which patentees may lose the opportunity to choose 17 vs. 20-year patent
term.
Response: The "cut-off" date is June 8, 1995. A patent that is in force on
June 8, 1995, or a patent that issues after June 8, 1995, on an
application filed before June 8, 1995, is automatically entitled to the
longer of the 20-year patent term measured from the earliest U.S.
effective filing date or 17 years from grant. This is automatic by
operation of law. Patentees need not make any election to be entitled to
the longer term. A patent that issues on an application filed on or after
June 8, 1995 is entitled to a 20-year patent term measured from the
earliest U.S. effective filing date.
19. Comment: One comment stated that there is no clear guidance as to a
patentee's "bonus rights" that may arise because of the difference in a
17-year term vs. a 20-year term. Will parties that were previously in a
licensing arrangement have to renegotiate terms for the bonus patent term?
Response: Section 154(c) of title 35, United States Code, states that the
remedies of sections 283 (injunction), 284 (damages) and 285 (attorney
fees) shall not apply to acts which were commenced or for which
substantial investment was made before June 8, 1995, and became infringing
by reason of the 17/20 year term and that these acts may be continued only
upon the payment of an equitable remuneration to the patentee that is
determined in an action brought under chapters 28 and 29 of Title 35.
There is no guidance provided in the statute as to the meaning of
"substantial investment" and "equitable remuneration." Licensing
arrangements are between the parties to the agreement and are determined
by the terms of the agreement and state law and are outside the
jurisdiction of the PTO.
20. Comment: One comment questioned whether an international application
designating the U.S. filed before June 8, 1995, with entry into the U.S.
national stage on or after June 8, 1995, preserves the 17-year patent term
measured from grant.
Response: An international application designating the U.S. that is filed
before June 8, 1995, with entry into the U.S. national stage under 35
U.S.C. 371 on or after June 8, 1995, preserves the option for a 17-year
patent term measured from date of grant.
21. Comment: One comment suggested that 35 U.S.C. 371(c) be amended
because a declaration should not be required to obtain a filing date and a
prior art date under 35 U.S.C. 102(e).
Response: The suggestion has not been adopted. This issue was not
addressed in the Notice of Proposed Rulemaking. However, the suggestion
will be taken under advisement as part of a comprehensive effort being
conducted by the PTO to reengineer the entire patent process.
22. Comment: One comment suggested that 1.604, 1.605 and 1.607 be
amended to state that provisional applications are not subject to
interference.
Response: The suggestion has not been adopted because it is unnecessary.
By statute, 35 U.S.C. 111(b)(8), provisional applications are not subject
to 35 U.S.C. 135, i.e., a provisional application will not be placed in
interference.
23. Comment: One comment suggested that 1.821-1.825 be amended so
that (1) only unbranched sequences of ten or more amino acids and twenty
or more nucleotides which are claimed have to be included in Sequence
Listings, (2) previously published sequences can be omitted, and (3) the
sequences of primers and oligonucleotide probes should not be included in
a Sequence Listing if encompassed by another disclosed sequence.
Response: The suggestion has not been adopted. There was no change
proposed to 1.821-1.825 in the Notice of Proposed Rulemaking.
However, the suggestion will be taken under advisement as part of a
comprehensive effort being conducted by the PTO to reengineer the entire
patent process.
24. Comment: One comment suggested that 5.11 to 5.15 be amended to
provide for the grant of a foreign license for a provisional application.
Response: The suggestion has not been adopted. The present language of
5.11 to 5.15 already provides for the grant of a foreign license for a
provisional application.
25. Comment: One comment suggested that in order to assist defense
agencies in reviewing application for secrecy orders, PTO should (1)
automatically impose a secrecy order on any application filed under 35
U.S.C. 111(a) if a secrecy order was previously imposed on corresponding
provisional application, and (2) require applications filed under 35
U.S.C. 111(a) based on a previous provisional application to indicate
changes made to the provisional application in the 35 U.S.C. 111(a)
application by means of underlining and bracketing.
Response: The suggestions have not been adopted. The PTO cannot
automatically impose a secrecy order on any 35 U.S.C. 111(a) applications
even if a secrecy order was previously imposed on a provisional
application, for which benefit under 35 U.S.C. 119(e) is claimed, unless
the agency which imposed the secrecy order on the provisional application
specifically requests the PTO to do so since the 35 U.S.C. 111(a)
application could disclose subject matter which is different from that
which is disclosed in the provisional application.
As to item (2), the PTO will not require applicants to identify the
differences in subject matter disclosed in the 35 U.S.C. 111(a)
application and the provisional application.
26. Comment: One comment suggested that in order to relieve defense
agencies from possible liability for secrecy orders imposed for more than
5 years, the PTO should seek legislation setting patent term at 20 years
from the earliest filing date or 17 years from the issue date, whichever
is longer, for any patent application placed under secrecy order.
Response: The suggestion has not been adopted. The PTO strongly believes
that the 20-year patent term as enacted in Public Law 103-465 is the
appropriate way to implement the 20-year patent term required by the GATT
Uruguay Round Agreements Act. The 5-year limit for patent term extension
set forth in 1.701(b) is required by statute, 35 U.S.C. 154(b).
Comments Directed To Specific Rules
27. Comment: One comment suggested that in order to eliminate the need for
the expression "other than a provisional application" in other parts of
the regulations, 1.9 should be amended to identify a 35 U.S.C. 111(a)
application by some term that can be used in the rules to distinguish that
type of application from a provisional application.
Response: The suggestion has been adopted. The rules are being amended to
include a definition of the term "nonprovisional application" in 1.9(a)
to describe an application filed under 35 U.S.C. 111(a) or 371. Further,
the term "nonprovisional application" is being used in the final rules
where the rule applies only to applications filed under 35 U.S.C. 111(a)
or 371 and not to provisional applications.
28. Comment: One comment suggested that the rules be simplified if a
"national application" could be defined in 1.9 to exclude a provisional
application.
Response: The suggestion has not been adopted. Section 1.9(a), prior to
this rulemaking, defined a national application to include any application
filed under 35 U.S.C. 111. A provisional application is an application
filed under 35 U.S.C. 111. It is appropriate to define a provisional
application as a special type of national application.
29. Comment: One comment requested an explanation of the showing required
in a petition under 1.12 and 1.14 for access to pending applications
and to assignment records for pending applications.
Response: There was no substantive change proposed to either 1.12 or
1.14 in the Notice of Proposed Rulemaking. Thus, the showing required in a
petition under 1.12 or 1.14 remains the same after this final
rulemaking as before. A discussion of such a petition can be found in
section 103 of the MPEP.
30. Comment: Several comments objected to the definition in 1.45(c) of
joint inventors in provisional applications as being those having made a
contribution to "the subject matter disclosed" in the provisional
application. Various language, such as, "the subject matter which
constitutes the invention," "subject matter disclosed and regarded to be
the invention," "disclosed invention," "the inventive subject matter
disclosed" was suggested. Another comment requested guidance as to the
determination of inventorship in a provisional application.
Response: The suggestion has not been adopted. The term "invention" is
typically used to refer to subject matter which applicant is claiming in
his/her application. Since claims are not required in a provisional
application, it would not be appropriate to reference joint inventors as
those who have made a contribution to the "invention" disclosed in the
provisional application. If the "invention" has not been determined in the
provisional application because no claims have been presented, then the
name(s) of those person(s) who have made a contribution to the subject
matter disclosed in the provisional application should be submitted.
Section 1.45(c) states that "if multiple inventors are named in a
provisional application, each named inventor must have made a
contribution, individually or jointly, to the subject matter disclosed in
the provisional application." All that 1.45(c) requires is that if
someone is named as an inventor, that person must have made a contribution
to the subject matter disclosed in the provisional application. When
applicant has determined what the invention is by the filing of the 35
U.S.C. 111(a) application, that is the time when the correct inventors
must be named. The 35 U.S.C. 111(a) application must have an inventor in
common with the provisional application in order for the 35 U.S.C. 111(a)
application to be entitled to claim the benefit of the provisional
application under 35 U.S.C. 119(e).
31. Comment: Several comments suggested that it might be desirable to
correct inventorship in a provisional application where an individual was
erroneously named as an inventor and that the procedure for doing so
should be set forth in 1.48.
Response: Under 35 U.S.C. 119(e), as contained in Public Law 103-465, a
later filed application under 35 U.S.C. 111(a) may claim priority benefits
based on a copending provisional application so long as the applications
have at least one inventor in common. An error in naming a person as an
inventor in a provisional application would not require correction by
deleting the erroneously named inventor from the provisional application
since this would have no effect upon the ability of the provisional
application to serve as a basis for a priority claim under 35 U.S.C.
119(e). However, in response to the comments, 1.48 is being amended to
include a new paragraph (e) which sets forth the requirements for deleting
the names of the inventors incorrectly named as joint inventors in a
provisional application, namely, a petition including a verified statement
by the inventor(s) whose name(s) are being deleted stating that the error
arose without deceptive intent, the fee set forth in 1.17(q) and the
written consent of all assignees.
32. Comment: One comment suggested that in order to make the procedures
for provisional applications as simple as possible, there is no need to
provide any rules to add inventor(s) or change inventorship in a
provisional application since the whole concept of inventorship is
meaningless without a claim. Error in inventorship can be corrected by the
filing of a 35 U.S.C. 111(a) application within 12 months after the filing
of a provisional application.
Response: The suggestion has not been adopted. One of the requirements of
35 U.S.C. 119(e) is that a 35 U.S.C. 111(a) application must have at least
one inventor in common with a provisional application in order for the 35
U.S.C. 111(a) application to be entitled to claim the benefit of the
filing date of the provisional application. In situations where there is
no inventor in common between the 35 U.S.C. 111(a) application and the
provisional application due to error in naming the inventors in the
provisional application, procedures must be established to permit
applicant to correct the inventorship in the provisional application.
33. Comment: One comment suggested that an individual who is the inventor
of subject matter disclosed in a provisional application, but who is not
named as an inventor in the provisional application because that subject
matter was not intended to be claimed in a later filed 35 U.S.C. 111(a)
application, could be added as an inventor pursuant to 1.48(d) in the
provisional application if the subject matter was later claimed in the 35
U.S.C. 111(a) application.
Response: The individual could be added as an inventor pursuant to
1.48(d) in the provisional application so long as the individual was
originally omitted without deceptive intent.
34. Comment: One comment questioned whether it would be proper for a
registered practitioner who did not file the provisional application to
sign the statement required by 1.48(d) that the error occurred without
deceptive intention on the part of the inventors.
Response: It would be proper for a registered practitioner who did not
file the provisional application to sign the statement required by
1.48(d), if the registered practitioner has a reasonable basis to believe
the truth of the statement being signed.
35. Comment: One comment suggested that there should be no diligence
requirement to correct inventorship in a provisional application.
Response: Diligence is not a requirement to correct inventorship in a
provisional application in either 1.48(d) or 1.48(e).
36. Comment: One comment suggested that 1.48(a) be amended by deleting
the requirements for "a statement of facts verified by the original named
inventor or inventors establishing when the error without deceptive
intention was discovered and how it occurred" and for the written consent
of any assignee.
Response: The suggestion has not been adopted. There was no substantive
change proposed to 1.48(a) in the Notice of Proposed Rulemaking. Since
the correction of inventorship affects ownership rights, the existing
rules are designed to provide assurances that all parties including the
original named inventors and all assignees agree to the change of
inventorship. If the requirements for verified statements of facts from
the original named inventors and written consent of the assignees are to
be deleted, the PTO would no longer have the assurances that all parties
agree to the change.
37. Comment: One comment expressed concern that a provisional application
filed without a claim will leave subsequent readers with little or no clue
as to what the inventors in the provisional application considered to be
their invention at the time the provisional application was filed and
doubted that a provisional application filed without a claim defining the
invention could ever provide a sufficient disclosure to support a claim
for a foreign or U.S. priority date.
Response: Claims are not required by the statute to provide a
specification in compliance with the requirements of 35 U.S.C. 112, first
paragraph. However, if an applicant desires, one or more claims may be
included in a provisional application. Any claim filed with a provisional
application will, of course, be considered a part of the original
provisional application disclosure.
38. Comment: One comment suggested that the PTO issue a specification
format or guideline for a provisional application to enable an inventor to
comply with 35 U.S.C. 112, first paragraph.
Response: The format of a provisional application is the same as for other
applications and is set forth in existing 1.77 which is applicable to
provisional applications except no claims are required for provisional
applications.
39. Comment: Several comments suggested that the PTO revise its rules to
clarify that strict adherence to the enablement, description and best mode
requirements of 35 U.S.C. 112, first paragraph, is not required in
provisional applications.
Response: The suggestion has not been adopted. The substantive
requirements of a specification necessary to comply with 35 U.S.C. 112,
first paragraph, are established by court cases interpreting that section
of the statute, not by rule. The case law applies to provisional
applications as well as to applications filed under 35 U.S.C. 111(a).
40. Comment: Several comments suggested that the rules or comments
published with the Final Rule indicate whether there is any requirement to
update the best mode disclosed in the provisional application when filing
the 35 U.S.C. 111(a) application.
Response: No rule was proposed to address the issue when going from a
provisional application to a 35 U.S.C. 111(a) application because no
current rule exists when going from one 35 U.S.C. 111(a) application to
another 35 U.S.C. 111(a) application. The question of whether the best
mode has to be updated is the same when going from one 35 U.S.C. 111(a)
application to another 35 U.S.C. 111(a) application or from a provisional
application to a 35 U.S.C. 111(a) application. Accordingly, the rationale
of Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551,
32 U.S.P.Q.2d 1077 (Fed. Cir. 1994), would appear to be applicable.
Clearly, if the substantive content of the application does not change
when filing the 35 U.S.C. 111(a) application, there is no requirement to
update the best mode. However, if subject matter is added to the 35 U.S.C.
111(a) application, there may be a requirement to update the best mode.
41. Comment: One comment suggested that 1.51(c) be amended to permit a
provisional application to be filed with an authorization to charge fees
to a deposit account.
Response: Section 1.51(c) permits an application to be filed with an
authorization to charge fees to a deposit account. Section 1.51(c) applies
to provisional applications. Therefore, no change to 1.51(c) is
necessary.
42. Comment: One comment suggested that the PTO confirm that there will be
no procedural examination of a provisional application other than to
determine whether the provisional application complies with 1.51(a)(2).
Response: The PTO intends to require compliance with the formal
requirements of 1.52(a)-(c) only to the extent necessary to permit
the PTO to properly microfilm and store the application papers.
43. Comment: Several comments suggested that an English translation of a
foreign language provisional application should not be required unless
necessary in prosecution of the 35 U.S.C. 111(a) application to establish
benefit. If an English translation is required, there is no useful purpose
to require the translation at any time earlier than the filing of 35
U.S.C. 111(a) application claiming the benefit of the provisional
application.
Response: Provisional applications may be filed in a language other than
English as set forth in existing 1.52(d). However, an English language
translation is necessary for security screening purposes. Therefore, the
PTO will require the English language translation and payment of the fee
required in 1.52(d) in the provisional application. Failure to timely
submit the translation in response to a PTO requirement will result in the
abandonment of the provisional application. If a 35 U.S.C. 111(a)
application is filed without providing the English language translation in
the provisional application, the English language translation will be
required to be supplied in every 35 U.S.C. 111(a) application claiming
priority of the non-English language provisional application.
44. Comment: One comment suggested that a new model oath or declaration
form for use in claiming 35 U.S.C. 119(e) priority and a "cover sheet" for
use in filing provisional applications be published as an addendum to the
final rules.
Response: The suggestion has been adopted. See Appendix A for the sample
cover sheet for filing a provisional application and Appendix B for the
sample declaration for use in claiming 35 U.S.C. 119(e) priority.
45. Comment: One comment suggested that the statement in 1.53(b)(2)
that the provisional application will not be given a filing date if all
the names of the actual inventor or inventor(s) are not supplied be
deleted and 1.41 be amended to make an exception for provisional
applications. The comment suggested that 35 U.S.C. 111(b) is satisfied as
long as the name of one person who made an inventive contribution to the
subject matter of the application is given.
Response: The suggestion has not been adopted. Section 111(b) of title 35,
United States Code, states that "a provisional application shall be made
or authorized to be made by the inventor." This language parallels 35
U.S.C. 111(a). The naming of inventors for obtaining a filing date for a
provisional application is the same as for other applications. A
provisional application filed with the inventors identified as "Jones et
al." will not be accorded a filing date earlier than the date upon which
the name of each inventor is supplied unless a petition with the fee set
forth in 1.17(i) is filed which sets forth the reasons the delay in
supplying the names should be excused. Administrative oversight is an
acceptable reason. It should be noted that for a 35 U.S.C. 111(a)
application to be entitled to claim the benefit of the filing date of a
provisional application, the 35 U.S.C. 111(a) application must have at
least one inventor in common with the provisional application.
46. Comment: One comment suggested that a drawing should not be required
to obtain a filing date for a provisional application. Whatever is filed
should be given a serial number and filing date in order to establish
status as a provisional application, regardless of what is in the
specification or drawing. If the provisional application omitted drawings,
has pages missing, or is otherwise incomplete, then applicant may not be
able to rely on the filing date of the provisional application in a
subsequently filed 35 U.S.C. 111(a) application. It should not be the job
of the Application Branch to review compliance with 1.81(a).
Response: Section 111(b) of title 35, United States Code, states that a
provisional application must include a specification as prescribed by 35
U.S.C. 112, first paragraph and a drawing as prescribed by 35 U.S.C. 113.
Drawings are required pursuant to 35 U.S.C. 113 if they are necessary to
understand the subject matter sought to be patented. If a provisional
application as filed omitted drawings and/or has pages missing, the
provisional application is prima facie incomplete and no filing date will
be granted. Application Branch currently reviews all applications to make
sure that no filing date will be granted to an application that is prima
facie incomplete. Application Branch will perform the same type of review
with provisional applications. If a filing date is not granted to a
provisional application because it is prima facie incomplete, applicant
may petition the PTO under 1.182 to grant a filing date to the
provisional application as of the date of deposit of the application
papers if it can be shown that the omitted items are not necessary for the
understanding of the subject matter.
47. Comment: One comment objected to the requirement in 1.53(b)(2)(i)
for a cover sheet identifying the application as a provisional application
because it is unnecessarily rigid and contrary to Congress' desire to keep
the filing of provisional application as simple as possible.
Response: The requirement that a provisional application be specifically
identified on filing as a provisional application is not seen to be
burdensome on the applicant and is necessary for the PTO to properly
process the papers as a provisional application. All an applicant is
required to do in order to comply with the requirement of 1.53(b)(2)(i)
is to include a transmittal sheet identifying the papers being filed as a
PROVISIONAL application.
48. Comment: Several comments suggested that in 1.53(b)(2)(ii), as
proposed, the phrase "the expiration of 12 months after the filing date of
the provisional application" should read "the expiration of 12 months
after the filing date of the 1.53(b)(1) application".
Response: The suggestion has been adopted.
49. Comment: One comment objected to the requirement in 1.53(b)(2)(ii)
for a petition to convert an application filed under 1.53(b)(1) to a
provisional application and suggested that any confusion concerning
applicant's intention could be handled informally without a petition or
petition fee.
Response: The requirement for a petition and fee is intended to ensure
that the cost of any PTO reprocessing is borne specifically by the
applicant requesting the action.
50. Comment: Several comments suggested that the filing fee required in an
application filed under 35 U.S.C. 111(a) claiming benefit of the filing
date of an earlier 35 U.S.C. 111(a) application which has been converted
to a provisional application under proposed 1.53(b)(2)(ii) be reduced,
since the $730/$365 filing fee was paid in the earlier application.
Response: The suggestion has not been adopted. The filing fee required in
an application filed under 35 U.S.C. 111(a) is set by statute. The statute
does not provide for the suggested reduction in the filing fee.
51. Comment: One comment suggested that proposed 1.53(b)(2)(iii) should
apply retroactively to permit applications filed between June 9, 1994, and
June 8, 1995, to be converted to provisional applications.
Response: The suggestion has not been adopted. The statute does not permit
a provisional application to have a filing date prior to June 8, 1995.
52. Comment: One comment suggested that 1.53(b)(2)(ii) be revised to
state that the petition requesting conversion must also be filed before
(1) the application becomes involved in interference, or (2) notice by the
PTO of intent to publish the application as a statutory invention
registration. This suggestion conforms with 35 U.S.C. 111(b)(8).
Response: The suggestion has not been fully adopted. It is not necessary
to include interference in 1.53(b)(2)(ii) because if a 35 U.S.C. 111(a)
application becomes involved in an interference proceeding and applicant
files a petition requesting conversion of that 35 U.S.C. 111(a)
application to a provisional application, the 35 U.S.C. 111(a) will be
removed from the interference proceeding upon granting the petition to
convert. When a subsequent 35 U.S.C. 111(a) application is filed based on
the provisional application, the subsequent 35 U.S.C. 111(a) application
could be placed in the interference proceeding if necessary. As to the
reference to statutory invention registration, 1.53(b)(2)(ii) is being
amended to require the petition and the fee be filed prior to the earlier
of the abandonment of the 35 U.S.C. 111(a) application, the payment of the
issue fee, the expiration of 12 months after the filing date of the 35
U.S.C. 111(a) application, or the filing of a request for a statutory
invention registration under 1.293.
53. Comment: One comment suggested that the procedures for converting a 35
U.S.C. 111(a) application to a provisional application be explained in
greater detail in 1.53(b)(2)(ii) or in the discussion. If a 35 U.S.C.
111(a) application is converted to a provisional application on the last
day of the 12-month period, and a second 35 U.S.C. 111(a) application is
concurrently filed, how should this be done and how should the first
sentence in the second 35 U.S.C. 111(a) application be worded.
Furthermore, if a 35 U.S.C. 111(a) application is converted to a
provisional application on the last day of the 12-month period, will it be
necessary to file a second 35 U.S.C. 111(a) application on the same day,
or else lose the priority claim.
Response: The suggestion has not been adopted. The language in
1.53(b)(2)(ii) is clear relating to the requirements for converting a 35
U.S.C. 111(a) application to a provisional application. If applicant
wishes to convert a 35 U.S.C. 111(a) application to a provisional
application, applicant must file a petition requesting the conversion
along with the petition fee set forth in 1.17(q). The petition and the
fee must be filed prior to the earlier of the abandonment of the 35 U.S.C.
111(a) application, the payment of the issue fee, the expiration of 12
months after the filing date of the 35 U.S.C. 111(a) application, or the
filing of a request for a statutory invention registration under 1.293.
In the example noted in the comment, if a 35 U.S.C. 111(a) application is
converted to a provisional application on the last day of the 12-month
period, a second 35 U.S.C. 111(a) application must be filed on that same
day, otherwise, applicant will lose the priority pursuant to 35 U.S.C.
119(e). An example of how the first sentence of the second 35 U.S.C.
111(a) application would read is, "This application claims the benefit of
U.S. Provisional Application No. 60/--, filed--, which was converted from
Application No.--."
54. Comment: One comment suggested that the PTO consider a rule mandating
that any prior U.S. application that would have been eligible for
conversion to a provisional application that is abandoned in favor of a
continuing application within one year of the earliest priority date
asserted be deemed constructively converted to a provisional application.
Response: The suggestion has not been adopted. Conversion of a 35 U.S.C.
111(a) application to a provisional will be permitted only by way of a
petition and under the conditions set forth in 1.53(b)(2)(ii). One
reason for this is that the PTO plans to provide sufficient information on
the printed patent to determine the end date of the 20-year patent term by
identifying provisional applications using a unique series code, i.e.,
"60". Thus, a 35 U.S.C. 111(a) application converted to a provisional
application will need to be reprocessed by the PTO with a new application
number. The petition fee is intended to reimburse the PTO for the extra
processing necessitated by the conversion.
55. Comment: One comment stated that 1.53(b)(2)(ii) permits the
conversion of a 35 U.S.C. 111(a) application to a provisional application.
However, it is silent as to whether such a conversion would kill any
benefit the 35 U.S.C. 111(a) application had of domestic and/or foreign
priority.
Response: Section 111(b)(7) of title 35, United States Code, specifically
states that a provisional application shall not be entitled to the right
of priority of any other application under 35 U.S.C. 119 or 365(a) or to
the benefit of an earlier filing date in the United States under 35 U.S.C.
120, 121, or 365(c). If a 35 U.S.C. 111(a) application is converted to a
provisional application, the granting of the conversion will automatically
eliminate any claim of priority which could have been made in the 35
U.S.C. 111(a) application.
56. Comment: Several comments suggested that it was inconsistent with the
purpose of the provisional application to require any compliance with the
Sequence Disclosure Rules 1.821-1.823 and 1.825, since the
provisional applications are not examined and there is no comparison of
the sequences with the prior art.
Response: The Office agrees with the comments that a provisional
application need not comply with the requirements of 1.821 through
1.825. Section 1.53(b)(2)(iii) is being amended to indicate that the
requirements of 1.821 through 1.825 regarding sequence listings are
not mandatory for a provisional application. However, applicants are
cautioned that in order for a 35 U.S.C. 111(a) application to obtain the
benefit of the filing date of an earlier filed provisional application,
the claimed subject matter of the 35 U.S.C. 111(a) application must have
been disclosed in the provisional application in a manner provided by 35
U.S.C. 112, first paragraph. Applicants are encouraged to follow the
sequence rules to ensure that support for the invention claimed in the 35
U.S.C. 111(a) application can be readily ascertained in the provisional
application.
57. Comment: One comment suggested that the language in 1.53(e)(2) that
a provisional application will become abandoned no later than twelve
months after its filing date was misleading and that the words "no later
than" should be deleted because it was believed that a provisional
application could not be abandoned prior to twelve months after its filing
date.
Response: The statute does not state that a provisional application can
never be abandoned prior to twelve months after its filing date. In fact,
a provisional application may be abandoned as a result of applicant's
failure to timely respond to a PTO requirement. For example, if a
provisional application which has been accorded a filing date does not
include the appropriate filing fee or the cover sheet required by
1.51(a)(2), applicant will be so notified if a correspondence address has
been provided and given a period of time within which to file the fee,
cover sheet and to pay the surcharge as set forth in 1.16(l). Failure
to timely respond will result in the abandonment of the application. This
may occur prior to twelve months after its filing date. Furthermore, a
provisional application may also be expressly abandoned prior to twelve
months from its filing date.
58. Comment: One comment objected to the deletion of the "retention fee"
practice in 1.53(d) since it permits an applicant in a first
application claiming benefits under 35 U.S.C. 119(a)-(d) or 120 to correct
inventorship by filing a second application without having to pay the full
filing fee in the first application.
Response: Since the comment indicated that there is a benefit to retain
the retention fee practice, the proposal to eliminate the practice is
withdrawn.
59. Comment: One comment stated that the language of 1.53(d)(1) and
(d)(2) indicates an intent by the PTO to mail the "Notice Of Missing
Parts" to applicant's post office address and argues that the "Notice"
should be mailed to the registered practitioner who filed the application
on behalf of the applicant.
Response: The language in 1.53(d)(1) and (d)(2) states that the
applicant will be notified of the missing part, if a correspondence
address is provided. This means that the "Notice" to applicant will be
mailed to the correspondence address provided in the application papers.
Under current PTO practice, if no specific correspondence address is
identified in the application, the address of the registered practitioner
who filed the application on behalf of the applicant is used as the
correspondence address. If no specific correspondence address or
registered practitioner is identified in the application, the post office
address of the first named inventor is used as the correspondence address.
No change in current PTO practice in this regard is required as a result
of 1.53(d)(2) nor is any change planned.
60. Comment: Several comments objected to the proposed deletion of
1.60. One comment suggested that the deletion of 1.60 was a major rule
change and should have been proposed separate from the proposed rules
dealing with the changes in practice required by Public Law 103-465.
Response: In view of the comments received, the proposal to delete 1.60
is withdrawn. However, the proposal will be considered as part of a
comprehensive effort being conducted by the PTO to reengineer the entire
patent process.
61. Comment: One comment suggested that in view of the deletion of
1.60, language should be incorporated in 1.53(a)(1) to state that a
copy of the prior application along with a copy of the declaration may be
filed to obtain a filing date. Furthermore, full details and guidelines of
the procedure should accompany the rule.
Response: The suggestion has not been adopted. The proposal to delete
1.60 is withdrawn in view of several comments received objecting to the
deletion.
62. Comment: One comment suggested that the removal of the stale oath
practice be codified.
Response: The suggestion has not been adopted. Neither the statute nor the
rules require a recent date of execution to appear on the oath or
declaration. The PTO practice of objecting to an oath or declaration where
the time elapsed between the date of execution and the filing date of the
application is more than three months is found in section 602.05 of the
MPEP. Therefore, the removal of the stale oath practice will be
accomplished by amending the MPEP.
63. Comment: One comment questioned whether a copy of an application faxed
to an attorney could be filed in the PTO as the application papers.
Response: Yes. While a patent application may not be faxed directly to the
PTO, an application faxed to an attorney may be forwarded to the PTO by
mail or courier as the application papers provided the papers meet the
formal requirements of 1.52. Effective November 22, 1993, 1.4 was
amended to include a new paragraph (d) to specify that most correspondence
filed in the PTO, which requires a person's signature, may be an original,
a copy of an original or a copy of a copy. Only correspondence identified
in 1.4(e) and (f) require the original to be filed in the PTO. Thus,
an oath or declaration required by 1.63, 1.153, 1.162 or 1.175 may be
an original, a copy of an original or a copy of a copy. See 1156 Off. Gaz.
Pat. Office 61 (November 16, 1993).
64. Comment: One comment suggested that applicant be permitted to use
1.62 procedure to file the 35 U.S.C. 111(a) application which claims the
benefit of a provisional application, at least in those situations where
the 35 U.S.C. 111(a) application has been converted to a provisional
application which is followed by the filing of a second 35 U.S.C. 111(a)
application.
Response: The suggestion has not been adopted. Section 1.62 will not be
amended to permit the filing a 35 U.S.C. 111(a) application based on a
provisional application because the PTO sees this situation as a trap for
applicants. The filing procedures would be made more complicated if an
exception is provided to address situations where a 35 U.S.C. 111(a)
application is converted to a provisional application and a second 35
U.S.C. 111(a) application is later filed. However, the suggestion will be
taken under advisement when greater familiarity with provisional
applications is developed.
65. Comment: One comment suggested that 1.62 procedure be replaced with
a simple petition procedure to reopen prosecution.
Response: The suggestion is not being adopted. However, the suggestion
will be taken under advisement as part of a comprehensive effort being
conducted by the PTO to reengineer the entire patent process.
66. Comment: One comment suggested that the language in 1.62(a) that
requires an identification of the "applicant's name of the prior complete
application" is confusing and should be clarified.
Response: The suggestion has been adopted. Section 1.62 is being amended
to require the identification of the "applicants named in the prior
complete application."
67. Comment: One comment suggested that 1.62 be amended to state that
the refiling procedures set forth in 1.62 may be used after the issue
fee is paid when a petition under 1.313(b)(5) is granted. This practice
is permitted pursuant to the notice published in 1138 Off. Gaz. Pat.
Office 40 (May 19, 1992).
Response: The suggestion has been adopted.
68. Comment: One comment suggested that 1.62 be amended to clarify
whether applicant need to re-list, in the 1.62 application, all the
references cited by the examiner and applicant in the parent application
in order to get those references printed on the eventual patent.
Response: The suggestion has not been adopted. Section 609 of the MPEP
(Sixth Edition, Jan. 1995) has been amended to clarify that in a 1.62
application, references submitted and cited in the parent application need
not be resubmitted. These references will be printed on the patent.
However, in any continuing application filed under 1.53(b)(1) or 1.60,
a list of the references must be resubmitted if applicant wishes to have
the references printed in the eventual patent.
69. Comment: One comment suggested that 1.67 should go into more detail
on when supplemental oaths are required in 1.53 filings of continuation
and divisional applications.
Response: The suggestion has not been adopted because it is seen to be
unnecessary and no substantive change was proposed to 1.67 in the
Notice of Proposed Rulemaking.
70. Comment: One comment suggested that "not but" in 1.67(b) should
read "but not".
Response: The suggestion has been adopted.
71. Comment: Several comments suggested that a rule be provided to state
that an application for patent is permitted to claim the benefit of the
filing date of more than one prior provisional application so long as the
applicant complies with all statutory provisions.
Response: The suggestion has been adopted. Section 1.78(a)(3) is being
amended to indicate that applicants are permitted to separately claim the
benefit of the filing date of more than one prior provisional application
in a later filed 35 U.S.C. 111(a) application provided all statutory
requirements of 35 U.S.C. 119(e) are complied with. It is noted that
current practice permits an application to claim the benefits of the
filing date of more than one prior foreign application under 35 U.S.C.
119(a)-(d) and of more than one prior copending U.S. application under 35
U.S.C. 120, without an explicit statement to that effect in the rules.
Since the final rules are being amended to specifically permit
applications filed under 35 U.S.C. 111(a) to claim the benefits of the
filing date of more than one prior copending provisional application,
corresponding changes are also being made to 1.55 and 1.78(a)(1)
relating to claims for the benefits available under 35 U.S.C. 119(a)-(d)
and 120 to be consistent with 1.78(a)(3).
72. Comment: Several comments requested that the PTO specify language to
use in the first sentence of an application when priority is based on more
than one provisional application.
Response: Section 1.78(a)(4) requires that "any application claiming the
benefit of a prior filed copending provisional application must contain or
be amended to contain in the first sentence of the specification following
the title a reference to such prior provisional application, identifying
it as a provisional application, and including the provisional application
number." Where a 35 U.S.C. 111(a) application claims the benefit of more
than one provisional application, a suitable reference would read, "This
application claims the benefit of U.S. Provisional Application No. 60/--,
filed-- and U.S. Provisional Application No. 60/--, filed --." In
addition, for an application which is claiming the benefit under 35 U.S.C.
120 of a prior application, which in turn claims the benefit of a
provisional application under 35 U.S.C. 119(e), a suitable reference would
read, "This application is a continuation of U.S. application No. 08/--,
filed --, now abandoned, which claims the benefit of U.S. Provisional
Application No. 60/--, filed --."
73. Comment: One comment suggested that the rules address the effect on
patent term where an applicant in a continuing application deletes the
reference to the prior filed application before the patent issues.
Response: An applicant has full control over claims to the benefit of an
earlier filing date under 35 U.S.C. 120, 121 or 365(c). The 20-year patent
term will be based upon the filing date of the earliest U.S. application
that the applicant makes reference to under 35 U.S.C. 120, 121 and 365(c).
Whether an applicant is entitled to the benefit of the filing date of an
earlier application is something that an applicant should examine before
the patent is issued. The PTO is not, unless it comes up as an issue in
the examination process, going to determine whether any of the claims are
entitled to the earlier filing date. Applicant however, should determine
whether the claims are entitled to or require the benefit of the earlier
filing date. If not, the applicant should consider canceling the reference
to the earlier filed application to avoid having the 20-year patent term
measured from that earlier filing date. An amendment adding or deleting a
reference to an earlier filed application presented prior to a final
action will be entered, however, the claims may be subject to possible
intervening prior art.
74. Comment: One comment stated that in view of the fact that a
provisional application is not entitled to claim the benefit of a prior
filed copending national or international application as stated in
1.53(b)(2)(iii), the phrase "other than a provisional application" in
1.78(a)(2) is unnecessary.
Response: Section 1.78(a)(2) is being amended to state that "any
nonprovisional application claiming the benefit of a prior copending
nonprovisional or international application must contain...." Section
1.78(a)(2) addresses a 35 U.S.C. 111(a) application which claims the
benefit of a prior copending 35 U.S.C. 111(a) application or international
application.
75. Comment: Several comments objected to the content requirements for
drawings filed in a provisional application as originally set forth in
proposed 1.83(a)(2). One comment suggested that no rule was necessary
to set forth the required content of drawings in a provisional
application.
Response: In view of the comments received, the proposed amendment to
1.83 is withdrawn. Under 35 U.S.C. 113, first sentence, applicant must
furnish drawings in a provisional application "where necessary for the
understanding of the subject matter sought to be patented." This
requirement is also stated in existing 1.81(a). Therefore, no further
elaboration on the content of the drawings in a provisional application is
believed necessary in the rules.
76. Comment: One comment suggested that the rules specify that formal
drawings are not required in a provisional application.
Response: The suggestion has not been adopted. However, the PTO intends to
examine provisional applications for requirements of form only to the
extent that is necessary to permit normal storage and microfilming of the
application papers. Formal drawings are usually not required for those
purposes.
77. Comment: Several comments suggested that 1.97(d) be amended to
require the PTO to consider any information disclosure statement submitted
after a final rejection or notice of allowance if an appropriate fee is
paid.
Response: The suggestion has not been adopted because no substantive
change to this rule was proposed in the Notice of Proposed Rulemaking. The
existing rules are designed to encourage prompt submission of information
to the PTO. To permit applicant to merely pay a fee to have any
information disclosure statement submitted after a final rejection or
Notice of Allowance would be contrary to the effort to encourage prompt
submissions.
78. Comment: One comment suggested that 1.97 be changed so that an
Office action which uses a newly cited reference as a ground for rejection
under 35 U.S.C. 102 or 103 cannot be made final.
Response: The suggestion has not been adopted because no substantive
change to this rule was proposed in the Notice of Proposed Rulemaking.
79. Comment: One comment suggested that the words "which are not examined"
in 1.101 as proposed are unnecessary and could create a negative
implication that some provisional applications are examined.
Response: The suggestion has not been adopted. By statute, provisional
applications are not subject to 35 U.S.C. 131, i.e., the Commissioner is
not permitted to examine a provisional application for patentability.
80. Comment: Several comments stated that it is unfair to require small
entities to pay the full $730.00 fee set forth in proposed 1.129. It is
suggested that the fee be changed to $365.00 or less.
Response: Pursuant to Public Law 103-465, the Commissioner has the
authority to establish appropriate fees for the further limited
reexamination of applications and for the examination of more than one
independent and distinct invention in an application. As a result of
additional review, it was concluded that these fees may be reduced by 50%
for small entities. Sections 1.17(r) and (s) are being amended to indicate
that the fees are reduced by 50% for small entities, that is, $365.00 for
small entities.
81. Comment: Several comments suggested that the transitional procedure
set forth in 1.129(a) as proposed is equivalent to filing one
application, i.e., it provides for an extra examination and reexamination
after the original final rejection, and, therefore, the requirement for
two $730.00 fees, which is equivalent to two filing fees, is unwarranted.
Another comment suggested that if the proposed $730.00 fee is adopted, the
examiner should be instructed to treat the after-final amendment as any
other initial filing, i.e., a new application, not as an amendment
submitted after a non-final office action.
Response: Under existing PTO practice, it would not be proper to make
final a first Office action in a continuing or substitute application
where the continuing or substitute application contains material which was
presented in the earlier application after final rejection or closing of
prosecution but was denied entry because (1) new issues were raised that
required further consideration and/or search, or (2) the issue of new
matter was raised. The identical procedure will apply to examination of a
submission considered as a result of the procedure under 1.129(a).
Thus, under 1.129(a), if the first submission after final rejection was
initially denied entry in the application because (1) new issues were
raised that required further consideration and/or search, or (2) the issue
of new matter was raised, then the next action in the application will not
be made final. Likewise, if the second submission after final rejection
was initially denied entry in the application because (1) new issues were
raised that required further consideration and/or search, or (2) the issue
of new matter was raised, then the next action in the application will not
be made final. Thus, the fee required by 1.129(a) has been set at the
amount required for filing an application because the procedure provided
by the rule is equivalent to the filing of two applications. No new matter
can be entered by payment of the fee set forth in 1.17(r).
82. Comment: Several comments suggested that the fees required for filing
a provisional application and those fees required by 1.129(a) and (b)
for the transitional procedures should not be greater than the average
cost of processing such matters by the PTO. Two comments stated that the
fee required by 1.129(a) is excessive relative to PTO costs.
Response: The fee required for filing a provisional application is set by
Public Law 103-465 and the PTO has no discretion with respect to the
amount of that particular fee. As to the fee required by 1.129(a), the
procedures relating to the first submission provided by 1.129(a) is
equivalent to the filing of a file wrapper continuation application under
1.62, and therefore, the fee required with the first submission is
appropriately set at the same amount as a filing fee, which is $730.00.
The $730.00 fee is subject to a 50% reduction for small entities. The
second submission is equivalent to the filing of a second file wrapper
continuation application and the fee for the second submission is
appropriately set at the same amount as a filing fee. As to the fee
required by 1.129(b), the procedures set forth in 1.129(b) permit
applicants to retain multiple inventions in a single application rather
than having to file multiple divisional applications. The fee for each
independent and distinct invention in excess of one is appropriately set
at the same amount as the filing fee for a divisional application, which
is $730.00. The $730.00 fee is subject to a 50% reduction for small
entities.
83. Comment: One comment suggested that the time period for the payment of
the $730.00 fee for the transitional after-final practice be extended if
applicant files a petition seeking reversal of the examiner's refusal to
enter the amendment after final without fee, until one month after an
unfavorable decision on the petition.
Response: If an earlier filed petition seeking reversal of the examiner's
refusal to enter the amendment after final is granted by the Director
finding that the final rejection was premature, but the petition had not
been decided by the time the 1.129(a) fee was due, applicant must
submit the 1.129(a) fee so as to toll the time period for response to
the final rejection. Otherwise, the application would be abandoned. Upon
granting of such a petition by the Director, the 1.129(a) fee paid will
be refundable to applicant on request. Applications that fall under
1.129(a) are under final rejection and there is a time period running
against the applicant. Applicant must toll that time period by paying the
transitional after-final fee set forth in 1.129(a) and any necessary
extension of time fees and Notice of Appeal fee. Section 1.129(a) is being
amended to indicate that the submission and the fee set forth in
1.17(r) may be submitted before the filing of the Appeal Brief and prior
to abandonment of the application.
84. Comment: One comment suggested that if it is decided that the
transitional after-final practice is made permanent, the PTO should seek
legislative authorization to provide reduced fees for small entities.
Response: If it is decided that the transitional after-final practice be
made permanent, the PTO will propose legislation to accomplish this change.
85. Comment: Several comments suggested that 1.129(a) and (b) should
apply to all applications regardless of whether they were filed before or
after June 8, 1995. Several comments suggested that the practices set
forth in 1.129(a) and (b) should be made permanent.
Several comments suggested that an applicant should be permitted to
have a submission entered and considered after any final rejection upon
payment of a fee as set forth in 1.17(r), not just the first and second
final rejections.
Response: The suggestions have not been adopted at this time. However, the
PTO is undertaking a project to reengineer the entire patent process.
These suggestions will be taken under advisement in that project.
86. Comment: One comment suggested that the PTO make an effort to treat
applications in which a submission under 1.129(a) has been filed on an
expedited basis.
Response: Once the submission is filed and the fee set forth in 1.17(r)
is paid the finality of the last PTO action is withdrawn. The filing of
the submission and the fee under 1.129(a) is equivalent to the filing
of a continuing application and will be treated in the same fashion and
under the same turnaround time frame as a continuing application.
87. Comment: One comment suggested that PTO practice be changed so that a
first Office action in a continuing application cannot be made final.
One comment suggested that PTO practice regarding second action final
be relaxed.
Response: The suggestions have not been adopted at this time. However, the
PTO is undertaking a project to reengineer the entire patent process.
These suggestions will be taken under advisement in that project.
88. Comment: One comment stated that in proposed 1.129, there is no
express provision for the finality of the previous rejection to be
withdrawn if applicant complies with the proposed rule. It is suggested
that the proposed rule state that the finality of the previous action
would be withdrawn if applicant complied with the rule when making a first
or second submission after a final action.
Response: The suggestion has been adopted.
89. Comment: One comment requested that the PTO clarify whether
1.129(a) required the first final rejection to be specifically withdrawn
and a different final (i.e., one containing a new ground of rejection)
rejection made before applicant is entitled to make a second submission.
Response: The final rule provides that the finality of the previous final
office action is automatically withdrawn upon the timely filing of the
first 1.129(a) submission and the fee set forth in 1.17(r). If the
first PTO action following the payment of the 1.17(r) fee is a
non-final office action, a further response from applicant will be entered
and considered as a matter of right without payment of the fee set forth
in 1.17(r). If the next office action or any subsequent action is made
final, the finality of that office action will be automatically withdrawn
upon the timely filing of a second 1.129(a) submission and the fee set
forth in 1.17(r).
90. Comment: One comment suggested that the PTO not permit the first PTO
action following the payment of the 1.17(r) fee to be made final under
any circumstances.
Response: The suggestion has not been adopted. The first PTO action
following the payment of the 1.17(r) fee may be made final under the
same conditions that a first office action may be made final in a
continuing application (see section 706.07(b) of the MPEP). However, it
would not be proper to make final a first Office action in a continuing or
substitute application where the continuing or substitute application
contains material which was presented in the earlier application after
final rejection or closing of prosecution but was denied entry because (1)
new issues were raised that required further consideration and/or search,
or (2) the issue of new matter was raised. The procedure set forth in
section 706.07(b) of the MPEP will apply to examination of a submission
considered as a result of the procedure under 1.129(a).
91. Comment: Several comments suggested that the filing of the first
submission under 1.129(a) within the statutory period for response set
in final rejection should toll the running of the six-month statutory
period.
Response: The filing of a submission, e.g., an information disclosure
statement or an amendment, after a final rejection without payment of the
fee set forth in 1.17(r) will not toll the period for response set in
the final rejection. However, 1.129(a) is being amended to provide in
the rule that the finality of the previous Office action is automatically
withdrawn upon the filing of the submission and the payment of the fee set
forth in 1.17(r). Thus, the filing of a submission and the payment of
the fee set forth in 1.17(r) and any extension of time fees and Notice
of Appeal fee, if they are necessary to avoid abandonment of the
application, will automatically toll the period for response set in the
final rejection. It must be kept in mind that the provisions of 1.129
apply only to an application, other than for reissue or a design patent,
that has been pending for at least two years as of June 8, 1995, taking
into account any reference made in such application to any earlier filed
application under 35 U.S.C. 120, 121 and 365(c).
92. Comment: One comment asked (1) whether it would be necessary to file a
Notice of Appeal and appeal fee with or after the first submission and fee
if the examiner acts on the first submission and before the end of the six
months from the date of the final rejection issues (a) a notice of
allowance, (b) a non-final action, or (c) a second final rejection; (2)
would the Notice of Appeal and fee be due only at the end of the six
months from the date of the final rejection regardless of whether the
examiner has acted on the submission by then; and (3) if the Notice of
Appeal and fee have once been paid following a first final rejection,
would a second notice and fee need to be paid if a second final rejection
were issued and applicant desired to file a second submission under
1.129(a).
Another comment suggested that the appeal fee set forth in 1.17(e)
should not be required where the Notice of Appeal is filed with a
1.129(a) submission and the fee set forth in 1.17(r).
Response: As to questions (1) and (2) and the second comment, if the first
submission and the proper fee set forth in 1.17(r) are timely filed in
response to the final rejection, the finality of the previous rejection
will be automatically withdrawn and applicant need not file the Notice of
Appeal or the appeal fee. For example, if the first submission and the
proper fee set forth in 1.17(r) were filed on the last day of the
six-month period for response to the final rejection, applicant must also
file a petition for three months extension of time with the appropriate
fee in order to avoid abandonment of the application. In such case,
applicant need not file the Notice of Appeal or the appeal fee if the
proper fee set forth in 1.17(r) was timely paid. However, under the
same fact situation, if applicant failed to submit the proper fee set
forth in 1.17(r), the finality of the previous rejection would not be
withdrawn and the time period for response would still be running against
applicant. In such case, a Notice of Appeal and appeal fee must also
accompany the papers filed at the six-month period in order to avoid
abandonment of the application. The proper fee set forth in 1.17(r)
must be filed prior to the filing of the Appeal Brief and prior to the
abandonment of the application.
As to question (3), if the Notice of Appeal and fee have once been paid
following a first final rejection and applicant timely files a first
submission and the proper fee set forth in 1.17(r), the finality of the
previous final rejection will be withdrawn and the appeal fee paid could
be applied against any subsequent appeal. If the examiner issues a
non-final rejection in response to applicant's first submission, a further
response from applicant will be entered and considered as a matter of
right. If any subsequent Office action is made final, applicant may file a
second submission along with the proper fee pursuant to 1.129(a). If
the second submission and the proper fee set forth in 1.17(r) are
timely filed in response to the subsequent final rejection, the finality
of the previous final rejection will be withdrawn. Any submission filed
after a final rejection made in the application subsequent to the fee
under 1.129(a) having been paid twice will be treated as set forth in
1.116. Applicant may, upon payment of the appeal fee, appeal a final
rejection within the time allowed for response pursuant to 1.191.
93. Comment: One comment questioned whether the "first submission" under
1.129(a) has to be the first response filed after a final rejection or
could it include subsequent responses to the same final rejection.
Response: The "first submission" under 1.129(a) would include all
responses filed prior to and with the payment of the fee required by
1.129(a) provided the submission and fee are filed prior to the filing of
the Appeal Brief and prior to abandonment of the application.
94. Comment: One comment suggested that 1.129(a) be changed to permit
the procedure to be available up until the filing of an Appeal Brief since
it is not uncommon to file an amendment after a Notice of Appeal is filed
but before the filing of an Appeal Brief.
Response: The suggestion has been adopted.
Section 1.129(a) is being amended to indicate that the submission and
the fee set forth in 1.17(r) must be submitted before the filing of the
Appeal Brief and prior to abandonment of the application.
95. Comment: One comment suggested that the transitional after-final
practice be available at any time after final, including after the
resolution of an appeal unfavorable to applicant in whole or in part.
Response: The suggestion has not been adopted. Section 1.129(a) is being
amended to indicate that the submission and the fee set forth in
1.17(r) must be submitted before the filing of the Appeal Brief and prior
to abandonment of the application. The suggestion to extend the period to
after the resolution of an appeal unfavorable to applicant in whole or in
part has not been adopted because the suggestion would further unduly
extend prosecution of the application.
96. Comment: One comment stated that if an examiner must withdraw the
finality of the rejection as a result of the transitional provision, the
examiner should be credited with two counts in order to be compensated for
the additional work.
Response: The examiner credit system is not part of this rulemaking
package. However, as part of the Public Law 103-465 implementation plan,
some accommodation will be made for the extra work performed.
97. Comment: One comment stated that regarding the transitional
after-final practice, the fee should not be required if the only reason is
to have the PTO consider recently obtained art.
Response: Under current practice, if applicant submits prior art after
final rejection but before the payment of issue fee, the art will be
considered if applicant makes the required certification and submits a
petition with the required petition fee of $130.00 (see section 609 of the
MPEP). If applicant can make the certification, applicant would not have
to rely on the transitional after-final procedure to have the prior art
considered. In the event that applicant cannot make the certification,
then the procedure under 1.129(a) is available if applicant wishes the
PTO to consider the prior art without refiling the application.
98. Comment: One comment suggested that the PTO modify existing
restriction practice to make it more difficult for examiners to require
restriction, for example, by requiring every restriction requirement to
show two-way distinctness and separate status in the art established by
means other than reference to the PTO's classification system.
Response: The suggestion has not been adopted. However, the PTO is
undertaking a project to reengineer the entire patent process. This
suggestion will be taken under advisement in that project.
99. Comment: One comment suggested that the pendency periods required by
1.129(a) and (b) should be 18 months rather than 2-year and 3-year,
respectively.
Response: The pendency periods set forth in the rule which establish
eligibility for the transitional procedures are set forth in Public Law
103-465.
100. Comment: One comment suggested that 1.129(a) be amended to permit
prosecution to be reopened after a Notice of Allowance or final rejection
upon the filing of a form requesting that prosecution be reopened and
payment of the necessary fee.
Response: The procedures set forth in 1.129(a) are not applicable to
amendments filed after a Notice of Allowance. Amendments filed after the
mailing of a Notice of Allowance are governed by 1.312. The procedures
set forth in 1.129(a) are applicable to amendments filed after a final
rejection. If applicant submits an amendment after final and the examiner
notifies the applicant in writing that the amendment is not entered,
1.129(a) permits applicant to submit a letter prior to abandonment of the
application and prior to the filing of the Appeal Brief, requesting entry
of the prior filed amendment along with the payment of the appropriate fee
set forth in 1.17(r). The letter requesting entry of the prior filed
amendment would be equivalent to "a form" as suggested in the comment.
101. Comment: One comment suggested that the PTO liberalize its current
practice under 1.116 to make it easier for amendments or evidence to be
entered and considered after a final rejection.
Response: The suggestion has not been adopted since no change was proposed
to 1.116 in the Notice of Proposed Rulemaking. However, the suggestion
will be taken under advisement as part of a comprehensive effort being
conducted by the PTO to reengineer the entire patent process. It should be
noted that any change to liberalize the current practice under 1.116
would necessitate increasing fees.
102. Comment: Several comments suggested that the transitional restriction
provision be modified to state that no restriction requirement shall be
made or maintained in any application pending for three years on the
effective date of the legislation. The comment stated that if restriction
requirements made prior to April 8, 1995, are permitted to be maintained
then applicants will be forced to file divisional applications resulting
in the automatic loss of term after June 8, 1995. A heavy penalty will be
placed on the chemical, pharmaceutical and biotechnology industries, who
have less than 4 months to search through the ancestors of all pending
applications and to identify all restriction requirements and to file
divisional applications before June 8, 1995. The comment further suggested
that the current restriction practice be changed in view of the
implementation of the 20-year term.
Response: The suggestion has not been adopted. The two-month date set
forth in 1.129(b)(1)(i) is from the Statement of Administrative Action,
which is part of Public Law 103-465. Under section 102 of Public Law
103-465, "the statement of administrative action approved by the Congress
shall be regarded as an authoritative expression by the United States
concerning the interpretation and application of the Uruguay Round
Agreements and this Act in any judicial proceeding in which a question
arises concerning such interpretation or application." The Commissioner
does not have any authority to establish rules which are inconsistent with
the Act. It is noted that in cases where a restriction requirement was
made prior to April 8, 1995, applicant will have sufficient time to file
divisional applications prior to June 8, 1995, so as to retain the benefit
of the 17-year patent term for those divisional applications.
The PTO is currently reviewing the restriction practice in view of the
implementation of the 20-year patent term. It is noted that a change in
restriction practice without changes to other fees would have a negative
impact on funding needed to operate the PTO.
103. Comment: Several comments suggested that proposed exceptions (1) and
(2) in 1.129(b) ignore the mandatory language of section 532(2)(B) of
Public Law 103-465 and should be deleted.
Response: The suggestion has not been adopted. The exceptions referred to
are contained in the Statement of Administrative Action, which is part of
Public Law 103-465. Under section 102 of Public Law 103-465, "the
statement of administrative action approved by the Congress shall be
regarded as an authoritative expression by the United States concerning
the interpretation and application of the Uruguay Round Agreements and
this Act in any judicial proceeding in which a question arises concerning
such interpretation or application."
104. Comment: One comment asked whether "restriction" under 1.129(b)
apply to election of species under 1.146.
Response: "Restriction" under 1.129(b) applies to both requirements
under 1.142 and elections under 1.146.
105. Comment: Several comments requested that clarification be made as to
what constitutes "actions by the applicant" in 1.129(b)(1) and
specifically, whether a request for extension of time under 1.136(a)
constitutes such "actions" by the applicant.
Response: Examples of what constitute "actions by the applicant" in
1.129(b)(1) are: (1) applicant abandons the application and continues to
refile the application such that no Office action can be issued in the
application, and (2) applicant requests suspension of prosecution under
1.103(a) such that no Office action can be issued in the application.
Extension of time under 1.136(a) would not constitute such "actions by
the applicant" under 1.129(b)(1).
106. Comment: One comment suggested that the one-month period set forth in
1.129(b) is insufficient to give an applicant time to file a petition
under 1.144 from a restriction requirement. Several comments suggested
that 1.129(b) be amended to permit applicant to challenge the
restriction requirement by way of a petition before being required to pay
the fees set forth in 1.17(s).
Response: Section 1.129(b)(2) is being amended in the final rule package
to indicate that applicant will be given "a time period" to (1) make an
election, if no election has been previously made, and pay the fee set
forth in 1.17(s), (2) confirm an earlier election and pay the fee set
forth in 1.17(s), or (3) file a petition under 1.129(b)(2)
traversing the restriction requirement. If applicant chooses not to pay
the fee set forth in 1.17(s), applicant may file a petition under
1.129(b)(2) requesting immediate review by the Group Director of the
restriction requirement. No petition fee is required. A petition under
1.129(b)(2) rather than under 1.144 would be more appropriate under the
circumstances since a petition under 1.144 requires the examiner to
make the restriction final before the petition can be considered.
107. Comment: One comment suggested that if applicant elects not to pay
the fee set forth in 1.17(s), applicant should be allowed to elect the
invention to be examined.
Response: The suggestion has been adopted. Section 1.129(b) is being
amended to indicate that if applicant chooses not to pay the fees for the
additional inventions, applicant must elect the invention to be examined
and the claims directed to the non-elected inventions for which no fee has
been paid will be withdrawn from consideration.
108. Comment: One comment suggested that the PTO amend the rules to permit
all, or at least several, inventions to be examined in a single
application upon payment of an appropriate fee.
Response: The suggestion has not been adopted at this time. However, the
PTO is currently undertaking a project to reengineer the entire patent
process. The suggestion will be taken in advisement in this project.
109. Comment: One comment suggested that PTO follow the wording of 35
U.S.C. 121 and only require restriction where an application claims two or
more independent and distinct inventions rather than two or more
independent or distinct inventions.
Response: In making restriction requirements, the PTO has always followed
the wording of 35 U.S.C. 121 to require restriction if two or more
independent and distinct inventions are claimed in an application rather
than independent or distinct as suggested by the comment. The term
"independent" includes species and related inventions such as
combination/subcombination and process and product. Restriction is proper
if these independent inventions are patentably distinct (see section
802.01 of the MPEP).
110. Comment: One comment suggested that the standard for determining
whether an application contains independent and distinct inventions should
only be the "unity of invention" standard used for PCT applications.
Response: The suggestion has not been adopted. The current restriction
practice for 35 U.S.C. 111(a) applications is governed by 35 U.S.C. 121
and 1.141, 1.142 and 1.146. The PCT "unity of invention" standard
only applies to PCT applications and applications filed under 35 U.S.C.
371. The PTO is currently reviewing the restriction practice in view of
the implementation of the 20-year patent term. It is noted that a change
in restriction practice without changes to other fees would have a
negative impact on funding needed to operate the PTO.
111. Comment: One comment suggested that the PTO apply the PCT unity of
invention standard as interpreted by the EPO and that 1.475(b) be
amended to permit a broad range of claims in a single application.
Response: The PTO is currently undertaking a project to reengineer the
entire patent process. The suggestion will be taken under advisement in
this project.
112. Comment: One comment suggested that the PTO examiner should not be
permitted to issue a restriction requirement or an election of species
requirement if the ISA and the IPEA have found that an application
complies with the unity of invention requirement.
Another comment suggested that the PTO consider allowing applicants to
retain all claims in a single application when the claims are related,
e.g., method and apparatus claims.
Another comment suggested that all species be searched before the first
Office action regardless of whether one species is found to be
unpatentable.
Another comment suggested that election of species requirements be
prohibited.
Response: The suggestions have not been adopted. These issues were not
addressed in the Notice of Proposed Rulemaking. However, the PTO is
currently undertaking a project to reengineer the entire patent process.
The suggestions will be taken under advisement in that project.
113. Comment: One comment suggested that decisions on whether to issue a
restriction requirement be made within two-three months of the application
filing date, and, if the requirement is traversed, the examiner should
determine within four-five months of the filing date whether to maintain
the requirement. Decisions on petitions to withdraw a restriction
requirement should be decided within one month.
Response: The suggestion has not been adopted. Current practice dictates
that restriction requirements be made at the earliest appropriate time in
the pendency of a given application, e.g., in the first Office action. It
would be difficult to issue a restriction requirement within two-three
months of the application filing date as suggested since a large number of
applications are filed with missing parts and applicants are given a time
period to submit the missing parts. Furthermore, applications must be
processed by the Application Branch and must be screened by Licensing and
Review for national security. Petitions to withdraw a restriction
requirement should be acted on by the Group Director expeditiously.
114. Comment: One comment argued that the phrases, "so as to be pending
for a period of no longer than 12 months" and "under no circumstances will
the provisional application be pending after 12 months", in 1.139 were
repetitious and suggested that one or both of the phrases be deleted.
Response: The suggestion has not been adopted. The statements are included
for emphasis.
115. Comment: One comment suggested that 1.139 clearly state that if
the revival petition is filed later than 12 months after filing of the
provisional application, then the revival is for the sole purpose of
providing copendency for a 35 U.S.C. 111(a) application filed during that
12-month period.
Response: The suggestion has not been adopted. The proposed language is
not necessary.
116. Comment: One comment stated that 35 U.S.C. 154(b) as contained in
Public Law 103-465 does not give the Commissioner any authority to decide
the period of extension. Therefore, proposed 1.701 is without statutory
basis.
Response: 35 U.S.C. 6(a) gives the Commissioner authority to establish
regulations not inconsistent with law.
Section 1.701 is consistent with 35 U.S.C. 154(b) and furthermore, the
Commissioner has the authority under 35 U.S.C. 154(b)(3)(C) to establish
regulations to address the standards for determining due diligence.
117. Comment: One comment questioned whether patent term extension under
35 U.S.C. 154(b) is available for patents issuing: (1) before June 8,
1995, with a 17-year patent term or a 17/20 year patent term; (2) on or
after June 8, 1995, on applications filed before June 8, 1995, with a
17-year patent term or a 17/20 year patent term.
Response: None of the patents set forth in the examples are eligible for
patent term extension. Under the terms of the statute, patent term
extension is only available for patents issued on applications filed on or
after June 8, 1995.
118. Comment: Several comments questioned whether a patent issued on a
continuing application is entitled to a patent term extension under 35
U.S.C. 154(b) due to interference, secrecy order, or appellate review
delays occurring in the examination of the parent application.
Response: If the delay in the parent application contributed to a delay in
the issuance of a patent in the continuing application, the patent granted
on the continuing application may be eligible for an extension under 35
U.S.C. 154(b).
119. Comment: One comment suggested that the patent term be extended for a
period of time equal to the time necessary to revive an application
improperly abandoned due to PTO error. Another comment suggested that
patent term extension be available for other PTO delays.
Response: The suggestions have not been adopted. Section 154(b) of title
35, United States Code, only permits patent term extension for delays due
to interferences, secrecy orders, and/or successful appeals.
120. Comment: One comment suggested that the period of an extension
granted under 1.701 be printed on the face of the patent.
Response: The PTO will publish on the face of the patent any patent term
extension that is granted pursuant to 1.701.
121. Comment: One comment suggested that the word "interference" be
inserted before the word "proceedings" in 1.701(a)(1).
Response: The suggestion has been adopted.
122. Comment: One comment stated that the last sentence of 1.701(b) is
confusing because it suggests that patent term extension will be available
in cases of terminal disclaimer and that the extension begins on the
terminal disclaimer date rather than the original expiration date. This
statement is contrary to 35 U.S.C. 154(b)(2) which does not permit any
patent term extension for appellate delay if the patent is subject to a
terminal disclaimer.
Response: In order to reduce confusion, the last sentence of 1.701(b)
is being amended to state that the extension will run from the expiration
date of the patent. The reference to "terminal disclaimer" is being
deleted.
123. Comment: Two comments stated that if an application involved in an
interference proceeding contains uninvolved claims, those uninvolved
claims should not be entitled to extension of patent term under proposed
1.701 because applicant could cancel those uninvolved claims from the
application and refile those claims in a continuation application. It is
suggested that if an applicant leaves conclusively uninvolved claims
(where no 1.633(c)(4) motion is filed) in the application in
interference, applicant does not get the benefit of the extension for any
claim.
Response: The suggestion has not been adopted. The statute, 35 U.S.C.
154(b), grants patent term extension to a patent if the issuance of the
patent was delayed due to interference proceeding under 35 U.S.C. 135(a).
The statute does not exclude applications containing uninvolved claims.
The Commissioner does not have the authority to establish regulations
which are inconsistent with the law. Therefore, an application involved in
an interference which contains uninvolved claims will be entitled to
patent term extension if the issuance of the patent was delayed due to
interference proceeding under 35 U.S.C. 135(a).
124. Comment: One comment asked whether applicant is entitled to patent
term extension regardless of whether an interference involving applicant's
application is ultimately declared.
One comment asked if the PTO ends the suspension without declaring an
interference, and continued prosecution results in filing of a
continuation or divisional application, are such subsequent cases entitled
to the extension.
Response: An application will not be suspended unless it is decided that
an interference can be declared involving that application. If prosecution
of applicant's application is suspended due to an interference not
involving applicant's application and an interference involving
applicant's application is later declared, applicant will be entitled to
patent term extension under 1.701(c)(1)(ii) for the suspension period
and under 1.701(c)(1)(i) for the interference period. However, if
prosecution of applicant's application is suspended due to an interference
not involving applicant's application and if the PTO ends the suspension
of the application without declaring an interference involving applicant's
application, that application will be entitled to patent term extension
under 1.701(c)(1)(ii). If prosecution results in filing of a continuing
application and if the delay in the parent application contributed to a
delay in the issuance of a patent on the continuing application, the
patent granted on the continuing application may be eligible for an
extension under 35 U.S.C. 154(b).
125. Comment: One comment stated that delays in the issuance of a patent
can exceed the five-year limit provided for in proposed 1.701(b). Where
the delay was not the fault of the applicant, why should there be this
maximum?
Another comment stated that in a biotechnology application, if
suspension of the application results in a declared interference, the
period of delay calculated under 1.701(c)(1)(i) will likely consume
most of the five-year maximum extension. This renders the value of any
time period measured under 1.701(c)(1)(ii) negligible, thus diminishing
the rights of applicant due to the unregulated suspension powers of the
PTO.
Response: The five-year limit for patent term extension set forth in
1.701(b) is required by statute, 35 U.S.C. 154(b).
126. Comment: One comment suggested that 1.701(c)(1)(i) be amended to
state that an application added after an interference is declared is
entitled to an extension measured only from the date of redeclaration.
Response: The suggestion has not been adopted. The language in
1.701(c)(1)(i) is clear that for an application that is added to an
interference, that application is entitled to an extension measured from
the date of redeclaration of the interference.
127. Comment: One comment stated that 1.701(c)(1)(ii) does not address
the case where a suspended application is added to the interference
without the suspension being lifted.
Response: Section 1.701(c)(1)(ii) is being amended to reference the
endpoint for the suspension period to the date of termination of the
suspension. Where prosecution of an application is suspended due to
interference proceedings not involving the application, the suspension is
made pursuant to 1.103(b). When that application is added to an
interference, the suspension pursuant to 1.103(b) will be automatically
lifted. The application is entitled to patent term extension for the
period of suspension pursuant to 1.701(c)(1)(ii) and for the period of
interference pursuant to 1.701(c)(1)(i). Under 1.701(c)(1)(ii), the
period of suspension begins on the date the application is suspended and
ends on the date the suspension under 1.103(b) is terminated, which in
this case would be the same date as the date of redeclaration of the
interference.
128. Comment: One comment suggested that the phrase ", if any," in
1.701(c)(1)(i) and (ii) is unnecessary.
Response: The suggestion has not been adopted. However, 1.701(c)(1)(i)
is being amended for clarity by deleting the phrase "if any" after the
first occurrence of "interference" and by inserting the same phrase after
the phrase "the number of days."
129. Comment: Several comments suggested that the phrase "was declared or
redeclared" in 1.701(c)(1)(i) be changed to --was first declared--.
Response: The suggestion has not been adopted. The language of the rule
reads "with respect to each interference in which the application was
involved, the number of days in the period beginning on the date the
interference was declared or redeclared to involve the application in the
interference...." An interference may be declared as A vs. B and later
redeclared as A vs. B vs. C. Under the rule, the period of extension would
be counted, with respect to applications A and B, from the date the
interference was declared to involve the applications A and B. With
respect to application C, the period of extension would be counted from
the date the interference was redeclared to involve the application C. No
ambiguity is seen in the language as originally proposed.
130. Comment: One comment suggested that the use of the phrase "appellate
review" in reference to an action under 35 U.S.C. 145 or 146 is incorrect,
since an action under 35 U.S.C. 145 or 146 is not considered as an
"appellate review" and suggests that 1.701(a)(3) be amended so that the
introductory phrase reads "Appellate review by the Board of Patent Appeals
and Interferences or review by a Federal court under 35 U.S.C. 141 or
145,...."
Response: The suggestion has not been adopted. The use of the phrase
"appellate review" in reference to an action under 35 U.S.C. 145 or 146 is
technically incorrect. However, Public Law 103-465 provides for extension
of patent term for "delay due to appellate review by the Board of Patent
Appeals and Interferences or by a Federal court". The introductory phrase
referred to in the comment uses the exact language found in the statute.
131. Comment: One comment suggested that 1.701(a) be amended to specify
whether extensions for appellate delays are available for reissue
applications.
Response: The suggestion has not been adopted. Under 35 U.S.C. 251, the
term of a reissue patent is "for the unexpired part of the term of the
original patent." Therefore, patent term extension for appellate delays is
not available for reissue applications.
132. Comment: One comment suggested that 1.701(d) be deleted.
Response: The suggestion has not been adopted. Section 1.701(d) sets forth
the language found in the statute, 35 U.S.C. 154(b)(3) and further
provides a standard for determining due diligence.
133. Comment: Several comments suggested that the lack of due diligence
set forth in 1.701(d)(2) be limited to the acts which occurred during
the appellate period (after the filing of a Notice of Appeal) and not
during prosecution.
Response: The suggestion has been adopted. Section 1.701(d) is being
amended accordingly.
134. Comment: One comment suggested that the rules be made clear that a
suspension under 1.103 does not constitute a lack of due diligence
under 1.701(d)(2).
Response: The suggestion has not been adopted. A request for suspension
pursuant to 1.103(a) during the appellate review period will be
considered to be prima facie evidence of lack of due diligence.
135. Comment: Several comments stated that the rules permit extensions of
time and the filing of informal applications. These acts should not
constitute lack of due diligence since the proposed rule defined the
standard for determining due diligence is whether the applicant exhibited
that degree of timeliness as may reasonably be expected from, and which is
ordinarily exercised by, a person. One comment suggested that the Office
adopt a gross negligence standard.
Response: The examples of acts that may constitute lack of due diligence
set forth in the Notice of Proposed Rulemaking (extensions of time, filing
of nonresponsive submissions, and filing of informal applications) are
being withdrawn. The suggestion regarding the adoption of a gross
negligence standard has not been adopted. As set forth in 1.701(d)(2),
the standard for determining due diligence is whether applicant exhibited
that degree of timeliness as may reasonably be expected from, and which is
ordinarily exercised by, a person during the appellate review period.
136. Comment: One comment stated that the PTO list in the rule all
circumstances in which an applicant will be considered not to have acted
with due diligence.
Another comment suggested that objective criteria for "diligence" be
set forth in 1.701(d)(2).
Response: The suggestion has not been adopted. Whether an action by the
applicant constitutes lack of due diligence will be determined by the
facts and circumstances of each case. Since lack of due diligence is
determined on a case-by-case basis, it would not be possible to list all
circumstances in the rule. Examples of acts which will constitute prima
facie evidence of lack of due diligence are: (1) abandonment of the
application during appellate review; and (2) suspension of action under
1.103(a) during appellate review.
137. Comment: One comment suggested that guidance be provided in the
comments to the Notice of Final Rules identifying in what circumstance is
a patent issued "pursuant to an appellate decision reversing an adverse
determination of patentability."
Several comments questioned whether the reversal of all rejections on
one of several appealed claims would entitle applicant to an extension
under 1.701(a)(3). Two comments suggested that the rule be redrafted to
allow appropriate extension of term where the Board or a court reverses at
least "in part."
Response: Extension of patent term under 1.701(a)(3) is applicable if
all the rejections of any one claim are ultimately reversed. The rule is
clear and no clarification is needed.
138. Comment: One comment stated that 1.701 does not address the
situation where applicant appeals with both allowed and rejected claims.
In such case, patent term extension should be available for any claims
that were allowed prior to appellate review, if the allowed claims were in
the same application, whether or not the decision of the examiner on the
rejected claims is ultimately reversed. Applicant should not have to
refile the allowed claims and rejected claims in separate cases in order
to take advantage of the patent term extension.
Response: If applicant chooses to keep the allowed claims with the
rejected claims in the application on appeal, patent term extension
pursuant to 35 U.S.C. 154(b)(2) is only available if a patent was issued
pursuant to a decision reversing an adverse determination of patentability
and if the patent is not subject to a terminal disclaimer due to the
issuance of another patent claiming subject matter that is not patentably
distinct from that under appellate review. If the appellate review is not
successful, applicant will not be entitled to patent term extension.
139. Comment: One comment questioned whether the phrase "if the patent is
not subject to a terminal disclaimer" in 1.701(a)(3) is intended to be
limited to those applications in which a terminal disclaimer has actually
been filed or encompass those applications in which a double patenting
rejection has been made and a terminal disclaimer suggested by an
examiner.
Response: The calculation of any applicable extension under 1.701 will
be made prior to the mailing of the Notice of Allowance and Issue Fee Due.
At that time, any double patenting rejection would have been resolved and
a terminal disclaimer would have been filed if one was required.
140. Comment: One comment stated that 1.701(d)(1) is inconsistent with
35 U.S.C. 154(b)(2) and (b)(3), because the period of extension for
appellate review would be calculated under 1.701(d)(1) by first
subtracting the period of appellate review occurring within three years of
the filing date before the five-year limit is imposed. It is suggested
that 1.701 be modified to be consistent with 35 U.S.C. 154(b)(2) which
requires the five-year limit to be imposed before the subtraction for
appellate review occurring within three years of the filing date.
Response: The suggestion has not been adopted. Section 1.701 is not
inconsistent with 35 U.S.C. 154(b)(2) and (b)(3). The period of extension
referred to in 35 U.S.C. 154(b)(2) is defined in 35 U.S.C. 154(b)(3).
Therefore, one must determine the period of extension in 35 U.S.C.
154(b)(3)(A), then reduce that period by the time determined in 35 U.S.C.
154(b)(3)(B) and (b)(3)(C). Then, according to 35 U.S.C. 154(b)(2), the
resulting time period may not be more than five years.
141. Comment: One comment suggested that the Commissioner identify a
senior person who is charged with approving all reductions in extension of
patent term rather than leaving the decision to the examiner or the SPE.
One comment questioned who will make the calculation of the period of
patent term extension under 1.701 and whether that calculation can be
challenged and by whom.
Response: It is contemplated that the period of patent term extension
calculated and any reduction in the extension of patent term will not be
made by an examiner. It is noted that the period of patent term extension
will be identified in the Notice of Allowance and Issue Fee Due and if
applicant disagrees with the period, applicant may request further review
by way of a petition under 1.181. If an error is noted after the patent
issues, patentee or any third party may seek correction of the period of
patent term extension granted by filing a request for a Certificate of
Correction pursuant to 1.322.
142. Comment: One comment questioned whether a challenge to the period of
patent term extension calculated by the PTO under 1.701 would be
required to be made within a fixed period.
Response: No. However, the longer applicant delays filing a petition under
1.181 challenging the period of extension calculated by the PTO, the
less likely any error will be corrected before the patent is issued with
the error printed on the patent. If the patent issues with an incorrect
period of extension, applicant should file a request for a Certificate of
Correction pursuant to 1.322 instead of a petition under 1.181.
143. Comment: One comment suggested that 1.701(d)(2) be amended to
require PTO to notify applicant in writing of any intent to reduce the
term extension for lack of due diligence, stating the specific basis, and
provide applicant with a reasonable opportunity to respond.
Response: The suggestion has not been adopted. The period of patent term
extension will be identified in the Notice of Allowance and Issue Fee Due
and if applicant disagrees with the period, applicant may request further
review by way of a petition under 1.181.
144. Comment: One comment suggested that a cover sheet for use in
recording assignments be included in the final rules package as an
addendum.
Response: The suggestion has not been adopted. A sample cover sheet for
use in recording assignments was published as Appendix B in the Federal
Register on July 6, 1992, at 57 FR 29634 and in the Official Gazette on
July 28, 1992, at 1140 Off. Gaz. Pat. Office 63 and may be obtained from
Assignment Branch.
Other Considerations
This final rule change is in conformity with the requirements of the
Regulatory Flexibility Act, 5 U.S.C. 601 et seq., Executive Order 12612,
and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq. This final
rule has been determined not to be significant for the purposes of E.O.
12866.
The Assistant General Counsel for Legislation and Regulation of the
Department of Commerce has certified to the Chief Counsel for Advocacy,
Small Business Administration, that these final rule changes will not have
a significant economic impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The principal impact of
these changes is to provide a procedure for domestic applicants to quickly
and inexpensively file a provisional application. The filing date of the
provisional application will not be used to measure the term of a patent
granted on an application which claims the earlier filing date of the
provisional application.
The Patent and Trademark Office has also determined that this notice
has no Federalism implications affecting the relationship between the
National Government and the States as outlined in E.O. 12612.
These final rules contain collections of information subject to the
requirements of the Paperwork Reduction Act (Act). The provisional
application has been approved by the Office of Management and Budget under
control numbers 0651-0031 and 0651-0032. The cover sheet is approved under
OMB control number 0651-0037. The cover sheet is necessary to expedite the
processing of a provisional application and improve quality. Public
reporting burden for the collection of information on the cover sheet is
estimated to average 12 minutes per response, including the time for
reviewing instructions, searching existing data sources, gathering and
maintaining the data needed, and completing and reviewing the collection
of information. Send comments regarding this burden estimate or any other
aspect of this collection of information, including suggestions for
reducing the burden to the Office of Assistance Quality and Enhancement
Division, Patent and Trademark Office, Washington, D.C. 20231, and to the
Office of Information and Regulatory Affairs, Office of Management and
Budget, Washington, D.C. 20503 (ATTN: Paperwork Reduction Act Projects
0651-0031, 0651-0032, and 0651-0037).
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 3
Administrative practice and procedure, Inventions and patents,
Reporting and record keeping requirements.
For the reasons set forth in the preamble, 37 CFR Parts 1 and 3 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. 6 unless otherwise noted.
2. Section 1.1 is amended by adding new paragraph (i) to read as
follows:
1.1 All communications to be addressed to Commissioner of Patents and
Trademarks.
* * * * *
(i) The filing of all provisional applications and any communications
relating thereto should be additionally marked "Box Provisional Patent
Application."
* * * * *
3. Section 1.9 is amended by revising paragraph (a) to read as follows:
1.9 Definitions.
(a)(1) A national application as used in this chapter means a U.S.
application for patent which was either filed in the Office under 35
U.S.C. 111, or which entered the national stage from an international
application after compliance with 35 U.S.C. 371.
(2) A provisional application as used in this chapter means a U.S.
national application for patent filed in the Office under 35 U.S.C. 111(b).
(3) A nonprovisional application as used in this chapter means a U.S.
national application for patent which was either filed in the Office under
35 U.S.C. 111(a), or which entered the national stage from an
international application after compliance with 35 U.S.C. 371.
* * * * *
4. Section 1.12 is amended by revising paragraph (c) to read as follows:
1.12 Assignment records open to public inspection.
* * * * *
(c) Any request by a member of the public seeking copies of any
assignment records of any pending or abandoned patent application
preserved in secrecy under 1.14, or any information with respect
thereto, must
(1) Be in the form of a petition accompanied by the petition fee set forth
in 1.17(i), or
(2) Include written authority granting access to the member of the public
to the particular assignment records from the applicant or applicant's
assignee or attorney or agent of record.
* * * * *
5. Section 1.14 is amended by revising paragraph (e) to read as follows:
1.14 Patent applications preserved in secrecy.
* * * * *
(e) Any request by a member of the public seeking access to, or copies
of, any pending or abandoned application preserved in secrecy pursuant to
paragraphs (a) and (b) of this section, or any papers relating thereto,
must
(1) Be in the form of a petition and be accompanied by the petition fee
set forth in 1.17(i), or
(2) Include written authority granting access to the member of the public
in that particular application from the applicant or the applicant's
assignee or attorney or agent of record.
* * * * *
6. Section 1.16 is amended by revising paragraphs (a)-(g) and by adding
new paragraphs (k) and (l) to read as follows:
1.16 National application filing fees.
(a) Basic fee for filing each application for an original patent,
except provisional, design or plant applications:
By a small entity ( 1.9(f)) $365.00
By other than a small entity 730.00
(b) In addition to the basic filing fee in an original application,
except provisional applications, for filing or later presentation of each
independent claim in excess of 3:
By a small entity ( 1.9(f)) 38.00
By other than a small entity 76.00
(c) In addition to the basic filing fee in an original application,
except provisional applications, for filing or later presentation of each
claim (whether independent or dependent) in excess of 20 (Note that
1.75(c) indicates how multiple dependent claims are considered for fee
calculation purposes.):
By a small entity ( 1.9(f)) 11.00
By other than a small entity 22.00
(d) In addition to the basic filing fee in an original application,
except provisional applications, if the application contains, or is
amended to contain, a multiple dependent claim(s), per application:
By a small entity ( 1.9(f)) 120.00
By other than a small entity 240.00
(If the additional fees required by paragraphs (b), (c), and (d) of
this section are not paid on filing or on later presentation of the claims
for which the additional fees are due, they must be paid or the claims
canceled by amendment, prior to the expiration of the time period set for
response by the Office in any notice of fee deficiency.)
(e) Surcharge for filing the basic filing fee or oath or declaration on
a date later than the filing date of the application, except provisional
applications:
By a small entity ( 1.9(f)) 65.00
By other than a small entity 130.00
(f) Basic fee for filing each design application:
By a small entity ( 1.9(f)) 150.00
By other than a small entity 300.00
(g) Basic fee for filing each plant application, except provisional
applications:
By a small entity ( 1.9(f)) 245.00
By other than a small entity 490.00
* * * * *
(k) Basic fee for filing each provisional application:
By a small entity ( 1.9(f)) 75.00
By other than a small entity 150.00
(l) Surcharge for filing the basic filing fee or cover sheet (
1.51(a)(2)(i)) on a date later than the filing date of the provisional
application:
By a small entity ( 1.9(f)) 25.00
By other than a small entity 50.00
* * * * *
7. Section 1.17 is amended by revising paragraphs (h) and (i), and by
adding new paragraphs (q), (r) and (s) to read as follows:
1.17 Patent application processing fees.
* * * * *
(h) For filing a petition to the Commissioner under a section listed
below which refers to this paragraph 130.00
1.47 - for filing by other than all the inventors or a person not
the inventor
1.48 - for correction of inventorship, except in provisional
applications
1.84 - for accepting color drawings or photographs
1.182 - for decision on questions not specifically provided for
1.183 - to suspend the rules
1.295 - for review of refusal to publish a statutory invention
registration
1.377 - for review of decision refusing to accept and record payment
of a maintenance fee filed prior to expiration of patent
1.378(e) - for reconsideration of decision on petition refusing to
accept delayed payment of maintenance fee in 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(c) - for late filing of interference settlementagreement
5.12, 5.13 and 5.14 - for expedited handling of a foreign filing
license
5.15 - for changing the scope of a license
5.25 - for retroactive license
(i) For filing a petition to the Commissioner under a section listed
below which refers to this paragraph 130.00
1.12 - for access to an assignment record
1.14 - for access to an application
1.53 - to accord a filing date, except in provisional applications
1.55 - for entry of late priority papers
1.60 - to accord a filing date
1.62 - to accord a filing date
1.97(d)- to consider an information disclosure statement
1.102 - to make application special
1.103 - to suspend action in application
1.177 - for divisional reissues to issue separately
1.312 - for amendment after payment of issue fee
1.313 - to withdraw an application from issue
1.314 - to defer issuance of a patent
1.666(b) - for access to interference settlement agreement
3.81 - for patent to issue to assignee, assignment submitted after
payment of the issue fee
* * * * *
(q) For filing a petition to the Commissioner under a section listed
below which refers to this paragraph 50.00
1.48 - for correction of inventorship in a provisional application
1.53 - to accord a provisional application a filing date or to
convert an application filed under 1.53(b)(1) to a provisional
application
(r) For entry of a submission after final rejection under
1.129(a):
By a small entity ( 1.9(f)) 365.00
By other than a small entity 730.00
(s) For each additional invention requested to be examined under
1.129(b):
By a small entity ( 1.9(f)) 365.00
By other than a small entity 730.00
8. Section 1.21 is amended by revising paragraph (l) to read as follows:
1.21 Miscellaneous fees and charges.
The Patent and Trademark Office has established the following fees for
the services indicated:
* * * * *
(l) For processing and retaining any application abandoned pursuant to
1.53(d)(1) unless the required basic filing fee has been paid
$130.00
* * * * *
9. Section 1.28 is amended by revising paragraph (a) to read as follows:
1.28 Effect on fees of failure to establish status, or change status,
as a small entity.
(a) The failure to establish status as a small entity ( 1.9(f) and
1.27 of this part) in any application or patent prior to paying, or at the
time of paying, any fee precludes payment of the fee in the amount
established for small entities. A refund pursuant to 1.26 of this part,
based on establishment of small entity status, of a portion of fees timely
paid in full prior to establishing status as a small entity may only be
obtained if a verified statement under 1.27 and a request for a refund
of the excess amount are filed within two months of the date of the timely
payment of the full fee. The two-month time period is not extendable under
1.136. Status as a small entity is waived for any fee by the failure to
establish the status prior to paying, at the time of paying, or within two
months of the date of payment of, the fee. Status as a small entity must
be specifically established in each application or patent in which the
status is available and desired. Status as a small entity in one
application or patent does not affect any other application or patent,
including applications or patents which are directly or indirectly
dependent upon the application or patent in which the status has been
established. A nonprovisional application claiming benefit under 35 U.S.C.
119(e), 120, 121, or 365(c) of a prior application may rely on a verified
statement filed in the prior application if the nonprovisional application
includes a reference to the verified statement in the prior application or
includes a copy of the verified statement in the prior application and
status as a small entity is still proper and desired. Once status as a
small entity has been established in an application or patent, the status
remains in that application or patent without the filing of a further
verified statement pursuant to 1.27 of this part unless the Office is
notified of a change in status.
* * * * *
10. Section 1.45 paragraph (c) is revised to read as follows:
1.45 Joint inventors.
* * * * *
(c) If multiple inventors are named in a nonprovisional application,
each named inventor must have made a contribution, individually or
jointly, to the subject matter of at least one claim of the application
and the application will be considered to be a joint application under 35
U.S.C. 116. If multiple inventors are named in a provisional application,
each named inventor must have made a contribution, individually or
jointly, to the subject matter disclosed in the provisional application
and the provisional application will be considered to be a joint
application under 35 U.S.C. 116.
11. Section 1.48 is revised to read as follows:
1.48 Correction of inventorship.
(a) If the correct inventor or inventors are not named in a
nonprovisional application through error without any deceptive intention
on the part of the actual inventor or inventors, the application may be
amended to name only the actual inventor or inventors. Such amendment must
be diligently made and must be accompanied by:
(1) a petition including a statement of facts verified by the original
named inventor or inventors establishing when the error without deceptive
intention was discovered and how it occurred;
(2) an oath or declaration by each actual inventor or inventors as
required by 1.63;
(3) the fee set forth in 1.17(h); and
(4) the written consent of any assignee. When the application is involved
in an interference, the petition shall comply with the requirements of
this section and shall be accompanied by a motion under 1.634.
(b) If the correct inventors are named in the nonprovisional
application when filed and the prosecution of the application results in
the amendment or cancellation of claims so that less than all of the
originally named inventors are the actual inventors of the invention being
claimed in the application, an amendment shall be filed deleting the names
of the person or persons who are not inventors of the invention being
claimed. The amendment must be diligently made and shall be accompanied
by:
(1) A petition including a statement identifying each named inventor who
is being deleted and acknowledging that the inventor's invention is no
longer being claimed in the application; and
(2) The fee set forth in 1.17(h).
(c) If a nonprovisional application discloses unclaimed subject matter
by an inventor or inventors not named in the application, the application
may be amended pursuant to paragraph (a) of this section to add claims to
the subject matter and name the correct inventors for the application.
(d) If the name or names of an inventor or inventors were omitted in a
provisional application through error without any deceptive intention on
the part of the actual inventor or inventors, the provisional application
may be amended to add the name or names of the actual inventor or
inventors. Such amendment must be accompanied by:
(1) a petition including a statement that the error occurred without
deceptive intention on the part of the actual inventor or inventors, which
statement must be a verified statement if made by a person not registered
to practice before the Patent and Trademark Office; and
(2) the fee set forth in 1.17(q).
(e) If a person or persons were named as an inventor or inventors in a
provisional application through error without any deceptive intention, an
amendment may be filed in the provisional application deleting the name or
names of the person or persons who were erroneously named. Such amendment
must be accompanied by:
(1) a petition including a statement of facts verified by the person or
persons whose name or names are being deleted establishing that the error
occurred without deceptive intention;
(2) the fee set forth in 1.17(q); and
(3) the written consent of any assignee.
12. Section 1.51 is amended by revising paragraphs (a) and (b) to read
as follows:
1.51 General requisites of an application.
(a) Applications for patents must be made to the Commissioner of
Patents and Trademarks.
(1) A complete application filed under 1.53(b)(1) comprises:
(i) A specification, including a claim or claims, see 1.71 to 1.77;
(ii) An oath or declaration, see 1.63 and 1.68;
(iii) Drawings, when necessary, see 1.81 to 1.85; and
(iv) The prescribed filing fee, see 1.16.
(2) A complete provisional application filed under 1.53(b)(2)
comprises:
(i) A cover sheet identifying:
(A) The application as a provisional application,
(B) The name or names of the inventor or inventors, (see 1.41),
(C) The residence of each named inventor,
(D) The title of the invention,
(E) The name and registration number of the attorney or agent (if
applicable),
(F) The docket number used by the person filing the application to
identify the application (if applicable),
(G) The correspondence address, and
(I) The name of the U.S. Government agency and Government contract number
(if the invention was made by an agency of the U.S. Government or under a
contract with an agency of the U.S. Government);
(ii) A specification as prescribed by 35 U.S.C. 112, first paragraph, see
1.71;
(iii) Drawings, when necessary, see 1.81 to 1.85; and
(iv) The prescribed filing fee, see 1.16.
(b) Applicants are encouraged to file an information disclosure
statement in nonprovisional applications. See 1.97 and 1.98. No
information disclosure statement may be filed in a provisional
application.
* * * * *
13. Section 1.53 paragraphs (a)-(e) are revised to read as follows:
1.53 Application number, filing date, and completion of application.
(a) Any application for a patent received in the Patent and Trademark
Office will be assigned an application number for identification purposes.
(b)(1) The filing date of an application for patent filed under this
section, except for a provisional application, is the date on which: a
specification containing a description pursuant to 1.71 and at least
one claim pursuant to 1.75; and any drawing required by 1.81(a), are
filed in the Patent and Trademark Office in the name of the actual
inventor or inventors as required by 1.41. No new matter may be
introduced into an application after its filing date ( 1.118). If all
the names of the actual inventor or inventors are not supplied when the
specification and any required drawing are filed, the application will not
be given a filing date earlier than the date upon which the names are
supplied unless a petition with the fee set forth in 1.17(i) is filed
which sets forth the reasons the delay in supplying the names should be
excused. A continuation or divisional application (filed under the
conditions specified in 35 U.S.C. 120 or 121 and 1.78(a)) may be filed
under this section, 1.60 or 1.62. A continuation-in-part application
may be filed under this section or 1.62.
(2) The filing date of a provisional application is the date on which:
a specification as prescribed by 35 U.S.C. 112, first paragraph; and any
drawing required by 1.81(a), are filed in the Patent and Trademark
Office in the name of the actual inventor or inventors as required by
1.41. No amendment, other than to make the provisional application comply
with all applicable regulations, may be made to the provisional
application after the filing date of the provisional application. If all
the names of the actual inventor or inventors are not supplied when the
specification and any required drawing are filed, the provisional
application will not be given a filing date earlier than the date upon
which the names are supplied unless a petition with the fee set forth in
1.17(q) is filed which sets forth the reasons the delay in supplying the
names should be excused.
(i) A provisional application must also include a cover sheet identifying
the application as a provisional application. Otherwise, the application
will be treated as an application filed under 1.53(b)(1).
(ii) An application for patent filed under 1.53(b)(1) may be treated as
a provisional application and be accorded the original filing date
provided that a petition requesting the conversion, with the fee set forth
in 1.17(q), is filed prior to the earlier of the abandonment of the
1.53(b)(1) application, the payment of the issue fee, the expiration of 12
months after the filing date of the 1.53(b)(1) application, or the
filing of a request for a statutory invention registration under 1.293.
The grant of any such petition will not entitle applicant to a refund of
the fees which were properly paid in the application filed under
1.53(b)(1).
(iii) A provisional application shall not be entitled to the right of
priority under 1.55 or 35 U.S.C. 119 or 365(a) or to the benefit of an
earlier filing date under 1.78 or 35 U.S.C. 120, 121 or 365(c) of any
other application. No claim for priority under 1.78(a)(3) may be made
in a design application based on a provisional application. No request
under 1.293 for a statutory invention registration may be filed in a
provisional application. The requirements of 1.821-1.825 regarding
application disclosures containing nucleotide and/or amino acid sequences
are not mandatory for provisional applications.
(c) If any application is filed without the specification, drawing or
name, or names, of the actual inventor or inventors required by paragraph
(b)(1) or (b)(2) of this section, applicant will be so notified and given
a time period within which to submit the omitted specification, drawing,
name, or names, of the actual inventor, or inventors, in order to obtain a
filing date as of the date of filing of such submission. A copy of the
"Notice of Incomplete Application" form notifying the applicant should
accompany any response thereto submitted to the Office. If the omission is
not corrected within the time period set, the application will be returned
or otherwise disposed of; the fee, if submitted, will be refunded less the
handling fee set forth in 1.21(n). Any request for review of a refusal
to accord an application a filing date must be by way of a petition
accompanied by the fee set forth in 1.17(i), if the application was
filed under 1.53(b)(1), or by the fee set forth in 1.17(q), if the
application was filed under 1.53(b)(2).
(d)(1) If an application which has been accorded a filing date pursuant
to paragraph (b)(1) of this section does not include the appropriate
filing fee or an oath or declaration by the applicant, applicant will be
so notified, if a correspondence address has been provided and given a
period of time within which to file the fee, oath, or declaration and to
pay the surcharge as set forth in 1.16(e) in order to prevent
abandonment of the application. A copy of the "Notice to File Missing
Parts" form mailed to applicant should accompany any response thereto
submitted to the Office. If the required filing fee is not timely paid, or
if the processing and retention fee set forth in 1.21(l) is not paid
within one year of the date of mailing of the notification required by
this paragraph, the application will be disposed of. No copies will be
provided or certified by the Office of an application which has been
disposed of or in which neither the required basic filing fee nor the
processing and retention fee has been paid. The notification pursuant to
this paragraph may be made simultaneously with any notification pursuant
to paragraph (c) of this section. If no correspondence address is included
in the application, applicant has two months from the filing date to file
the basic filing fee, oath or declaration and to pay the surcharge as set
forth in 1.16(e) in order to prevent abandonment of the application;
or, if no basic filing fee has been paid, one year from the filing date to
pay the processing and retention fee set forth in 1.21(l) to prevent
disposal of the application.
(2) If a provisional application which has been accorded a filing date
pursuant to paragraph (b)(2) of this section does not include the
appropriate filing fee or the cover sheet required by 1.51(a)(2),
applicant will be so notified if a correspondence address has been
provided and given a period of time within which to file the fee, cover
sheet and to pay the surcharge as set forth in 1.16(l) in order to
prevent abandonment of the application. A copy of the "Notice to File
Missing Parts" form mailed to applicant should accompany any response
thereto submitted to the Office. If the required filing fee is not timely
paid, the application will be disposed of. No copies will be provided or
certified by the Office of an application which has been disposed of or in
which the required basic filing fee has not been paid. The notification
pursuant to this paragraph may be made simultaneously with any
notification pursuant to paragraph (c) of this section. If no
correspondence address is included in the application, applicant has two
months from the filing date to file the basic filing fee, cover sheet and
to pay the surcharge as set forth in 1.16(l) in order to prevent
abandonment of the application.
(e)(1) An application for a patent filed under paragraph (b)(1) of this
section will not be placed upon the files for examination until all its
required parts, complying with the rules relating thereto, are received,
except that certain minor informalities may be waived subject to
subsequent correction whenever required.
(2) A provisional application for a patent filed under paragraph (b)(2)
of this section will not be placed upon the files for examination and will
become abandoned no later than twelve months after its filing date
pursuant to 35 U.S.C. 111(b)(1).
* * * * *
14. Section 1.55 is revised 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)-(d) and 172. The claim to
priority need be in no special form and may be made by the attorney or
agent if the foreign application is referred to in the oath or declaration
as required by 1.63. The claim for priority and the certified copy of
the foreign application specified in 35 U.S.C. 119(b) must be filed in the
case of an interference ( 1.630), when necessary to overcome the date of
a reference relied upon by the examiner, when specifically required by the
examiner, and in all other cases, 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 a
petition requesting entry and by the fee set forth in 1.17(i). If the
certified copy filed is not in the English language, a translation need
not be filed except in the case of interference; or when necessary to
overcome the date of a reference relied upon by the examiner; or when
specifically required by the examiner, in which event an English language
translation must be filed together with a statement that the translation
of the certified copy is accurate. The statement must be a verified
statement if made by a person not registered to practice before the Patent
and Trademark Office.
(b) An applicant in a nonprovisional application may under certain
circumstances claim priority on the basis of one or more applications for
an inventor's certificate in a country granting both inventor's
certificates and patents. To claim the right of priority on the basis of
an application for an inventor's certificate in such a country under 35
U.S.C. 119(d), the applicant when submitting a claim for such right as
specified in paragraph (a) of this section, shall include an affidavit or
declaration. The affidavit or declaration must include a specific
statement that, upon an investigation, he or she is satisfied that to the
best of his or her knowledge, the applicant, when filing the application
for the inventor's certificate, had the option to file an application for
either a patent or an inventor's certificate as to the subject matter of
the identified claim or claims forming the basis for the claim of
priority.
15. Section 1.59 is revised to read as follows:
1.59 Papers of application with filing date not to be returned.
Papers in an application which has received a filing date pursuant to
1.53 will not be returned for any purpose whatever. If applicants have
not preserved copies of the papers, the Office will furnish copies at the
usual cost of any application in which either the required basic filing
fee ( 1.16) or, if the application was filed under 1.53(b)(1), the
processing and retention fee ( 1.21(l)) has been paid. See 1.618 for
return of unauthorized and improper papers in interferences.
16. Section 1.60 is amended by revising paragraph (b) to read as
follows:
1.60 Continuation or divisional application for invention disclosed in
a prior nonprovisional application.
* * * * *
(b) An applicant may omit signing of the oath or declaration in a
continuation or divisional application (filed under the conditions
specified in 35 U.S.C.120 or 121 and 1.78(a)) if:
(1) the prior application was a nonprovisional application and a complete
application as set forth in 1.51(a)(1);
(2) applicant indicates that the application is being filed pursuant to
this section and files a true copy of the prior complete application as
filed including the specification (with claims), drawings, oath or
declaration showing the signature or an indication it was signed, and any
amendments referred to in the oath or declaration filed to complete the
prior application;
(3) the inventors named in the continuation or divisional application are
the same or less than all the inventors named in the prior application;
and
(4) the application is filed before the patenting, or abandonment of, or
termination of proceedings on the prior application. The copy of the prior
application must be accompanied by a statement that the application papers
filed are a true copy of the prior complete application. Such statement
must be by the applicant or applicant's attorney or agent and must be a
verified statement if made by a person not registered to practice before
the Patent and Trademark Office. Only amendments reducing the number of
claims or adding a reference to the prior application ( 1.78(a)) will be
entered before calculating the filing fee and granting the filing date. If
the continuation or divisional application is filed by less than all the
inventors named in the prior application, a statement must accompany the
application when filed requesting deletion of the names of the person or
persons who are not inventors of the invention being claimed in the
continuation or divisional application. Except as provided in paragraph
(d) of this section, if a true copy of the prior application as filed is
not filed with the application or if the statement that the application
papers are a true copy is omitted, the application will not be given a
filing date earlier than the date upon which the copy and statement are
filed, unless a petition with the fee set forth in 1.17(i) is filed
which satisfactorily explains the delay in filing these items.
* * * * *
17. Section 1.62 is amended by revising paragraphs (a) and (e) to read
as follows:
1.62 File wrapper continuing procedure.
(a) A continuation, continuation-in-part, or divisional application,
which uses the specification, drawings and oath or declaration from a
prior nonprovisional application which is complete as defined by
1.51(a)(1), and which is to be abandoned, may be filed under this section
before the payment of the issue fee, abandonment of, or termination of
proceedings on the prior application, or after payment of the issue fee if
a petition under 1.313(b)(5) is granted in the prior application. The
filing date of an application filed under this section is the date on
which a request is filed for an application under this section including
identification of the application number and the names of the inventors
named in the prior complete application. If the continuation,
continuation-in-part, or divisional application is filed by less than all
the inventors named in the prior application a statement must accompany
the application when filed requesting deletion of the names of the person
or persons who are not inventors of the invention being claimed in the
continuation, continuation-in-part, or divisional application.
* * * * *
(e) An application filed under this section will utilize the file
wrapper and contents of the prior application to constitute the new
continuation, continuation-in-part, or divisional application but will be
assigned a new application number. Changes to the prior application must
be made in the form of an amendment to the prior application as it exists
at the time of filing the application under this section. No copy of the
prior application or new specification is required. The filing of such a
copy or specification will be considered improper, and a filing date as of
the date of deposit of the request for an application under this section
will not be granted to the application unless a petition with the fee set
forth in 1.17(i) is filed with instructions to cancel the copy or
specification.
* * * * *
18. Section 1.63 is amended by revising paragraph (a) to read as
follows:
1.63 Oath or declaration.
(a) An oath or declaration filed under 1.51(a)(1)(ii) as a part of a
nonprovisional application must:
(1) Be executed in accordance with either 1.66 or 1.68;
(2) Identify the specification to which it is directed;
(3) Identify each inventor and the residence and country of citizenship of
each inventor; and
(4) State whether the inventor is a sole or joint inventor of the
invention claimed.
* * * * *
19. Section 1.67 is amended by revising paragraph (b) to read as
follows:
1.67 Supplemental oath or declaration.
* * * * *
(b) A supplemental oath or declaration meeting the requirements of
1.63 must be filed when a claim is presented for matter originally shown
or described but not substantially embraced in the statement of invention
or claims originally presented or when an oath or declaration submitted in
accordance with 1.53(d)(1) after the filing of the specification and
any required drawings specifically and improperly refers to an amendment
which includes new matter. No new matter may be introduced into a
nonprovisional application after its filing date even if a supplemental
oath or declaration is filed. In proper cases, the oath or declaration
here required may be made on information and belief by an applicant other
than inventor.
* * * * *
20. Section 1.78 is amended by revising paragraphs (a)(1) and (a)(2)
and by adding new paragraphs (a)(3) and (a)(4) to read as follows:
1.78 Claiming benefit of earlier filing date and cross- references to
other applications.
(a)(1) A nonprovisional application may claim an invention disclosed in
one or more prior filed copending nonprovisional applications or
international applications designating the United States of America. In
order for a nonprovisional application to claim the benefit of a prior
filed copending nonprovisional application or international application
designating the United States of America, each prior 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 application must be:
(i) complete as set forth in 1.51(a)(1); or
(ii) entitled to a filing date as set forth in 1.53(b)(1), 1.60 or
1.62 and include the basic filing fee set forth in 1.16; or
(iii) entitled to a filing date as set forth in 1.53(b)(1) and have
paid therein the processing and retention fee set forth in 1.21(l)
within the time period set forth in 1.53(d)(1).
(2) Any nonprovisional application claiming the benefit of one or more
prior filed copending nonprovisional applications or international
applications designating the United States of America must contain or be
amended to contain in the first sentence of the specification following
the title a reference to each such prior application, identifying it by
application number (consisting of the series code and serial number) or
international application number and international filing date and
indicating the relationship of the applications. Cross-references to other
related applications may be made when appropriate. (See 1.14(b)).
(3) A nonprovisional application other than for a design patent may claim
an invention disclosed in one or more prior filed copending provisional
applications. Since a provisional application can be pending for no more
than twelve months, the last day of pendency may occur on a Saturday,
Sunday, or Federal holiday within the District of Columbia which for
copendency would require the nonprovisional application to be filed prior
to the Saturday, Sunday, or Federal holiday. In order for a nonprovisional
application to claim the benefit of one or more prior filed copending
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:
(i) complete as set forth in 1.51(a)(2); or
(ii) entitled to a filing date as set forth in 1.53(b)(2) and include
the basic filing fee set forth in 1.16(k).
(4) Any nonprovisional application claiming the benefit of one or more
prior filed copending provisional applications must contain or be amended
to contain in the first sentence of the specification following the title
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).
* * * * *
21. Section 1.83 is amended by revising paragraphs (a) and (c) to read
as follows:
1.83 Content of drawing.
(a) The drawing in a nonprovisional application must show every feature
of the invention specified in the claims. However, conventional features
disclosed in the description and claims, where their detailed illustration
is not essential for a proper understanding of the invention, should be
illustrated in the drawing in the form of a graphical drawing symbol or a
labeled representation (e.g., a labeled rectangular box).
* * * * *
(c) Where the drawings in a nonprovisional application do not comply
with the requirements of paragraphs (a) and (b) of this section, the
examiner shall require such additional illustration within a time period
of not less than two months from the date of the sending of a notice
thereof. Such corrections are subject to the requirements of 1.81(d).
22. Section 1.97 is amended by revising paragraph (d) to read as
follows:
1.97 Filing of information disclosure statement.
* * * * *
(d) An information disclosure statement shall be considered by the
Office if filed after the mailing date of either a final action under
1.113 or a notice of allowance under 1.311, whichever occurs first, but
before payment of the issue fee, provided the statement is accompanied by:
(1) A certification as specified in paragraph (e) of this section;
(2) A petition requesting consideration of the information disclosure
statement; and
(3) The petition fee set forth in 1.17(i).
* * * * *
23. Section 1.101 is amended by revising paragraph (a) to read as
follows:
1.101 Order of examination.
(a) Nonprovisional applications filed in the Patent and Trademark
Office and accepted as complete applications are assigned for examination
to the respective examining groups having the classes of inventions to
which the applications relate. Nonprovisional applications shall be taken
up for examination by the examiner to whom they have been assigned in the
order in which they have been filed except for those applications in which
examination has been advanced pursuant to 1.102. See 1.496 for order
of examination of international applications in the national stage.
* * * * *
24. Section 1.102 is amended by revising paragraph (d) to read as
follows:
1.102 Advancement of examination.
* * * * *
(d) A petition to make an application special on grounds other than
those referred to in paragraph (c) of this section must be accompanied by
the petition fee set forth in 1.17(i).
25. Section 1.103 is amended by revising paragraph (a) to read as
follows:
1.103 Suspension of action.
(a) Suspension of action by the Office will be granted for good and
sufficient cause and for a reasonable time specified upon petition by the
applicant and, if such cause is not the fault of the Office, the payment
of the fee set forth in 1.17(i). Action will not be suspended when a
response by the applicant to an Office action is required.
* * * * *
26. A new, undesignated center heading and new section 1.129 are added
to Subpart B - National Processing Provisions to read as follows:
Transitional Provisions
1.129 Transitional procedures for limited examination after final
rejection and restriction practice.
(a) An applicant in an application, other than for reissue or a design
patent, that has been pending for at least two years as of June 8, 1995,
taking into account any reference made in such application to any earlier
filed application under 35 U.S.C. 120, 121 and 365(c), is entitled to have
a first submission entered and considered on the merits after final
rejection under the following circumstances: The Office will consider such
a submission, if the first submission and the fee set forth in 1.17(r)
are filed prior to the filing of an appeal brief and prior to abandonment
of the application. The finality of the final rejection is automatically
withdrawn upon the timely filing of the submission and payment of the fee
set forth in 1.17(r). If a subsequent final rejection is made in the
application, applicant is entitled to have a second submission entered and
considered on the merits after the subsequent final rejection under the
following circumstances: The Office will consider such a submission, if
the second submission and a second fee set forth in 1.17(r) are filed
prior to the filing of an appeal brief and prior to abandonment of the
application. The finality of the subsequent final rejection is
automatically withdrawn upon the timely filing of the submission and
payment of the second fee set forth in 1.17(r). Any submission filed
after a final rejection made in an application subsequent to the fee set
forth in 1.17(r) having been twice paid will be treated as set forth in
1.116. A submission as used in this paragraph includes, but is not
limited to, an information disclosure statement, an amendment to the
written description, claims or drawings and a new substantive argument or
new evidence in support of patentability.
(b)(1) In an application, other than for reissue or a design patent,
that has been pending for at least three years as of June 8, 1995, taking
into account any reference made in the application to any earlier filed
application under 35 U.S.C. 120, 121 and 365(c), no requirement for
restriction or for the filing of divisional applications shall be made or
maintained in the application after June 8, 1995, except where:
(i) the requirement was first made in the application or any earlier filed
application under 35 U.S.C. 120, 121 and 365(c) prior to April 8, 1995;
(ii) the examiner has not made a requirement for restriction in the
present or parent application prior to April 8, 1995, due to actions by
the applicant; or
(iii) the required fee for examination of each additional invention was
not paid.
(2) If the application contains more than one independent and distinct
invention and a requirement for restriction or for the filing of
divisional applications cannot be made or maintained pursuant to this
paragraph, applicant will be so notified and given a time period to:
(i) elect the invention or inventions to be searched and examined, if no
election has been made prior to the notice, and pay the fee set forth in
1.17(s) for each independent and distinct invention claimed in the
application in excess of one which applicant elects;
(ii) confirm an election made prior to the notice and pay the fee set
forth in 1.17(s) for each independent and distinct invention claimed in
the application in addition to the one invention which applicant
previously elected; or
(iii) file a petition under this section traversing the requirement. If
the required petition is filed in a timely manner, the original time
period for electing and paying the fee set forth in 1.17(s) will be
deferred and any decision on the petition affirming or modifying the
requirement will set a new time period to elect the invention or
inventions to be searched and examined and to pay the fee set forth in
1.17(s) for each independent and distinct invention claimed in the
application in excess of one which applicant elects.
(3) The additional inventions for which the required fee has not been
paid will be withdrawn from consideration under 1.142(b). An applicant
who desires examination of an invention so withdrawn from consideration
can file a divisional application under 35 U.S.C. 121.
(c) The provisions of this section shall not be applicable to any
application filed after June 8, 1995.
27. Section 1.137 is amended by revising paragraph (c) to read as
follows:
1.137 Revival of abandoned application.
* * * * *
(c) In all applications filed before June 8, 1995, and in all design
applications filed on or after June 8, 1995, any petition pursuant to
paragraph (a) of this section not filed within six months of the date of
abandonment of the application, must be accompanied by a terminal
disclaimer with fee under 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. The terminal disclaimer must also apply to
any patent granted on any continuing application entitled under 35 U.S.C.
120 to the benefit of the filing date of the application for which revival
is sought.
* * * * *
28. Section 1.139 is added to read as follows:
1.139 Revival of provisional application.
(a) A provisional application which has been accorded a filing date and
abandoned for failure to timely respond to an Office requirement may be
revived so as to be pending for a period of no longer than twelve months
from its filing date if it is shown to the satisfaction of the
Commissioner that the delay was unavoidable. Under no circumstances will
the provisional application be pending after twelve months from its filing
date. A petition to revive an abandoned provisional application must be
promptly filed after the applicant is notified of, or otherwise becomes
aware of, the abandonment, and must be accompanied by:
(1) the required response unless it has been previously filed;
(2) the petition fee as set forth in 1.17(l); and
(3) a showing that the delay was unavoidable. The showing must be a
verified showing if made by a person not registered to practice before the
Patent and Trademark Office.
(b) A provisional application which has been accorded a filing date and
abandoned for failure to timely respond to an Office requirement may be
revived so as to be pending for a period of no longer than twelve months
from its filing date if the delay was unintentional. Under no
circumstances will the provisional application be pending after twelve
months from its filing date. A petition to revive an abandoned provisional
application must be:
(1) accompanied by the required response unless it has been previously
filed;
(2) accompanied by the petition fee as set forth in 1.17(m);
(3) accompanied by a statement that the delay was unintentional. The
statement must be a verified statement if made by a person not registered
to practice before the Patent and Trademark Office. The Commissioner may
require additional information where there is a question whether the delay
was unintentional; and
(4) filed either:
(i) within one year of the date on which the provisional application
became abandoned; or
(ii) within three months of the date of the first decision on a petition
to revive under paragraph (a) of this section which was filed within one
year of the date on which the provisional application became abandoned.
(c) Any request for reconsideration or review of a decision refusing to
revive a provisional application upon petition filed pursuant to
paragraphs (a) or (b) of 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.
(d) The time periods set forth in this section cannot be extended,
except that the three-month period set forth in paragraph (b)(4)(ii) of
this section and the time period set forth in paragraph (c) of this
section may be extended under the provisions of 1.136.
29. Section 1.177 is revised to read as follows:
1.177 Reissue in divisions.
The Commissioner may, in his or her discretion, cause several patents
to be issued for distinct and separate parts of the thing patented, upon
demand of the applicant, and upon payment of the required fee for each
division. Each division of a reissue constitutes the subject of a separate
specification descriptive of the part or parts of the invention claimed in
such division; and the drawing may represent only such part or parts,
subject to the provisions of 1.83 and 1.84. On filing divisional
reissue applications, they shall be referred to the Commissioner. Unless
otherwise ordered by the Commissioner upon petition and payment of the fee
set forth in 1.17(i), all the divisions of a reissue will issue
simultaneously; if there is any controversy as to one division, the others
will be withheld from issue until the controversy is ended, unless the
Commissioner orders otherwise.
30. Section 1.312 is amended by revising paragraph (b) to read as
follows:
1.312 Amendments after allowance.
* * * * *
(b) Any amendment pursuant to paragraph (a) of this section filed after
the date the issue fee is paid must be accompanied by a petition including
the fee set forth in 1.17(i) and a showing of good and sufficient
reasons why the amendment is necessary and was not earlier presented.
31. Section 1.313 is amended by revising paragraph (a) to read as
follows:
1.313 Withdrawal from issue.
(a) Applications may be withdrawn from issue for further action at the
initiative of the Office or upon petition by the applicant. Any such
petition by the applicant must include a showing of good and sufficient
reasons why withdrawal of the application is necessary and, if the reason
for the withdrawal is not the fault of the Office, must be accompanied by
the fee set forth in 1.17(i). If the application is withdrawn from
issue, a new notice of allowance will be sent if the application is again
allowed. Any amendment accompanying a petition to withdraw an application
from issue must comply with the requirements of 1.312.
* * * * *
32. Section 1.314 is revised to read as follows:
1.314 Issuance of patent.
If payment of the issue fee is timely made, the patent will issue in
regular course unless the application is withdrawn from issue ( 1.313),
or issuance of the patent is deferred. Any petition by the applicant
requesting a deferral of the issuance of a patent must be accompanied by
the fee set forth in 1.17(i) and must include a showing of good and
sufficient reasons why it is necessary to defer issuance of the patent.
33. Section 1.316 is amended by revising paragraph (d) to read as
follows:
1.316 Application abandoned for failure to pay issue fee.
* * * * *
(d) In all applications filed before June 8, 1995, any petition
pursuant to paragraph (b) of this section not filed within six months of
the date of abandonment of the application, must be accompanied by a
terminal disclaimer with fee under 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. The terminal disclaimer must
also apply to any patent granted on any continuing application entitled
under 35 U.S.C. 120 to the benefit of the filing date of the application
for which revival is sought.
* * * * *
34. Section 1.317 is amended by removing and reserving paragraph (d):
1.317 Lapsed patents; delayed payment of balance of issue fee.
* * * * *
(d) [Reserved]
* * * * *
35. Section 1.666 is amended by revising paragraph (b) to read as
follows:
1.666 Filing of interference settlement agreements.
* * * * *
(b) If any party filing the agreement or understanding under paragraph
(a) of this section so requests, the copy will be kept separate from the
file of the interference, and made available only to Government agencies
on written request, or to any person upon petition accompanied by the fee
set forth in 1.17(i) and on a showing of good cause.
* * * * *
36. Section 1.701 is added to Subpart F to read as follows:
1.701 Extension of patent term due to prosecution delay.
(a) A patent, other than for designs, issued on an application filed on
or after June 8, 1995, is entitled to extension of the patent term if the
issuance of the patent was delayed due to:
(1) interference proceedings under 35 U.S.C. 135(a); and/or
(2) the application being placed under a secrecy order under 35 U.S.C.
181; and/or
(3) appellate review by the Board of Patent Appeals and Interferences or
by a Federal court under 35 U.S.C. 141 or 145, if the patent was issued
pursuant to a decision reversing an adverse determination of patentability
and if the patent is not subject to a terminal disclaimer due to the
issuance of another patent claiming subject matter that is not patentably
distinct from that under appellate review.
(b) The term of a patent entitled to extension under paragraph (a) of
this section shall be extended for the sum of the periods of delay
calculated under paragraphs (c)(1), (c)(2), (c)(3) and (d) of this
section, to the extent that these periods are not overlapping, up to a
maximum of five years. The extension will run from the expiration date of
the patent.
(c)(1) The period of delay under paragraph (a)(1) of this section for
an application is the sum of the following periods, to the extent that the
periods are not overlapping:
(i) with respect to each interference in which the application was
involved, the number of days, if any, in the period beginning on the date
the interference was declared or redeclared to involve the application in
the interference and ending on the date that the interference was
terminated with respect to the application; and
(ii) the number of days, if any, in the period beginning on the date
prosecution in the application was suspended by the Patent and Trademark
Office due to interference proceedings under 35 U.S.C. 135(a) not
involving the application and ending on the date of the termination of the
suspension.
(2) The period of delay under paragraph (a)(2) of this section for an
application is the sum of the following periods, to the extent that the
periods are not overlapping:
(i) the number of days, if any, the application was maintained in a sealed
condition under 35 U.S.C. 181;
(ii) the number of days, if any, in the period beginning on the date of
mailing of an examiner's answer under 1.193 in the application under
secrecy order and ending on the date the secrecy order and any renewal
thereof was removed;
(iii) the number of days, if any, in the period beginning on the date
applicant was notified that an interference would be declared but for the
secrecy order and ending on the date the secrecy order and any renewal
thereof was removed; and
(iv) the number of days, if any, in the period beginning on the date of
notification under 5.3(c) and ending on the date of mailing of the
notice of allowance under 1.311.
(3) The period of delay under paragraph (a)(3) of this section is the sum
of the number of days, if any, in the period beginning on the date on
which an appeal to the Board of Patent Appeals and Interferences was filed
under 35 U.S.C. 134 and ending on the date of a final decision in favor of
the applicant by the Board of Patent Appeals and Interferences or by a
Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35
U.S.C. 145.
(d) The period of delay set forth in paragraph (c)(3) shall be reduced
by:
(1) any time during the period of appellate review that occurred before
three years from the filing date of the first national application for
patent presented for examination; and
(2) any time during the period of appellate review, as determined by the
Commissioner, during which the applicant for patent did not act with due
diligence. In determining the due diligence of an applicant, the
Commissioner may examine the facts and circumstances of the applicant's
actions during the period of appellate review to determine whether the
applicant exhibited that degree of timeliness as may reasonably be
expected from, and which is ordinarily exercised by, a person during a
period of appellate review.
Part 3-- Assignment, Recording, and Rights of Assignee
37. The authority citation for 37 CFR Part 3 continues to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
38. Section 3.21 is revised to read as follows:
3.21 Identification of patents and patent applications.
An assignment relating to a patent must identify the patent by the
patent number. An assignment relating to a national patent application
must identify the national patent application by the application number
(consisting of the series code and the serial number, e.g., 07/123,456).
An assignment relating to an international patent application which
designates the United States of America must identify the international
application by the international number (e.g., PCT/US90/01234). If an
assignment of a patent application filed under 1.53(b)(1) or 1.62 is
executed concurrently with, or subsequent to, the execution of the patent
application, but before the patent application is filed, it must identify
the patent application by its date of execution, name of each inventor,
and title of the invention so that there can be no mistake as to the
patent application intended. If an assignment of a provisional application
is executed before the provisional application is filed, it must identify
the provisional application by name of each inventor and title of the
invention so that there can be no mistake as to the provisional
application intended.
39. Section 3.81 is amended by revising paragraph (b) to read as
follows:
3.81 Issue of patent to assignee.
* * * * *
(b) If the assignment is submitted for recording after the date of
payment of the issue fee, but prior to issuance of the patent, the
assignee may petition that the patent issue to the assignee. Any such
petition must be accompanied by the fee set forth in 1.17(i) of this
Chapter.
April 17, 1995 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
[1174 OG 15]
* For Actual Drawing Refer to OG