(107)                   Changes In Practice In Supplying
                     Certified Copies And Filing Receipts

   For many years, all newly filed patent applications were microfilmed by 
the Patent and Trademark Office (PTO) after all required parts of the 
applications were received. Since a certified copy of an application was 
supplied from the microfilm record, when available, the certified copy 
typically included a copy of the signed oath/declaration required by 37 CFR
    1.63. Recently, however, the PTO began phasing out the old microfilm 
process in favor of a new electronic Patent Image Capture System (PICS). 
Under the PICS, newly filed patent application papers are optically scanned 
and an electronic image file is saved in a secure electronic data base 
which is accessible only to certain authorized PTO employees. In addition,
instead of waiting until any required, but missing, parts of the
applications are received, the scanning will take place as soon as the
applications are found to meet the minimum requirements for granting a
filing date under 37 CFR    1.53(b). This means that these newly filed
applications may be scanned before basic filing fees and/or
oaths/declarations are received.
   
   During the initial pilot phase, a small percentage of newly filed patent
applications were both microfilmed under the old process and optically
scanned using the new PICS to test the scanning process, After the
initial pilot confirmed the viability of the PICS system, new
applications have been either scanned or microfilmed, and the Office
plans to increase the percentage of applications being scanned until all
newly filed patent applications are scanned and no applications are
microfilmed. The PICS system should be fully implemented by the end of
May 1997. The new electronic data base is presently being used to supply
certified copies of newly filed patent applications, if the electronic
data base contains the particular patent application for which a
certified copy is requested.
   
   In conjunction with the implementation of the PICS, the Office of
Initial Patent Examination (OIPE) has instituted new procedures for
issuing filing receipt notices to all new patent applications that meet
the minimum requirements for granting a filing date under 37 CFR   
1.53(b). Previously, a filing receipt was issued only after the patent
application met all requirements necessary for the application to begin
examination. Thus, the issuance of the filing receipt (and the
corresponding notification of granting of the foreign filing license)
was delayed whenever either a "Notice Of Omitted Item(s)" or a "Notice
To File Missing Parts" was mailed in the application. Under OIPE's new
procedures, the PTO will begin issuing filing receipts at the time a
determination is made that the application meets the minimum
requirements to receive a filing date. The filing receipt will provide
the same bibliographic information as before when the information is
available in the application as filed. A "Notice Of Omitted Item(s)" or
a "Notice To File Missing Parts," if needed, will be mailed separately.
Examination of the application will not begin until all the required
parts (e.g., filing fee and oath/declaration) are received. 37 CFR   
1.53(e)(1).
   
   As a result of the above changes in practice, applicants may notice that
a certified copy supplied by the PTO of a newly filed patent application
may or may not include a copy of the signed oath or declaration,
depending on when the oath or declaration was filed in the PTO and on
whether the application was scanned or microfilmed. Applicants are
reminded, however, that a copy of the signed oath or declaration is not
required to comply with the requirements of the Paris Convention. Copies
of individual papers filed after the application filing date, e.g., an
oath/declaration or a preliminary amendment, will be supplied separately
upon request at the published fee. See 37 CFR    1.19(b)(3). If a
petition for a later filing date under 37 CFR    1.182 is granted, a new
filing receipt will be issued. A certified copy of the application
supplied after the petition has been granted will include both the
papers actually filed on the original deposit date as well as the
page/figure supplied on the later filing date of the application.
   
   In order to further reduce the time for processing requests for
certified copies, the PTO is waiving, sua sponte, the requirements of 37
CFR      1.53(d)(1), (d)(2) and 1.59 for payment of either the basic
filing fee or the processing and retention fee in an application before
any copies of the application will be provided by the PTO. Effective
immediately, copies of an application will now be provided by the PTO
upon request at the usual cost without regard to whether the basic
filing fee or the processing and retention fee has been paid in the
application. While copies of an application will now be provided without
regard to whether the basic filing fee or the processing and retention
fee has been paid, the basic filing fee or the processing and retention
fee must still be paid in a nonprovisional application, if any claim for
benefits under 35 U.S.C.      120, 121, or 365(c) based on that
application is made in a subsequently filed copending nonprovisional
application. 37 CFR    1.78(a)(1). For any claim to be made under 35
U.S.C.    119(e) based on a prior copending provisional patent
application, the basic filing fee must still be paid in the provisional
application. 37 CFR    1.78(a)(3).
   
   Applicants are also reminded that requests for certified copies of
applications should not be requested until the filing receipt is
received. Also, if the individual requesting the certified copy is not a
named inventor, an attorney or agent of record, or an assignee of
record, the certified copy will only be supplied by mailing the
certified copy to the correspondence address provided in the application.
   
   These changes in practice should reduce delays in the issuance of filing
receipt notices and enable the Certification Division to supply
certified copies of the application, as filed, more promptly after the
filing receipt is received.
   
   Questions regarding the change in procedure relating to filing receipts
should be directed to OIPE's Customer Service Center at (703) 308-1202.
   
   Questions regarding the change in procedure relating to certified copies
should be directed to the Certification Division at (703) 308-9700 or
E-mail address: certdiv@uspto.gov.

May 13, 1997                                                BRUCE A. LEHMAN
                                        Assistant Secretary of Commerce and
                                     Commissioner of Patents and Trademarks

                                 [1199 OG 38]