(110)                        DEPARTMENT OF COMMERCE
                          Patent and Trademark Office
                                 37 CFR Part 1
                        [Docket No. 980108007-8131-02]
                                 RIN0651-AA97 

             Changes to Continued Prosecution Application Practice

AGENCY: Patent and Trademark Office, Commerce. 

ACTION: Final rule. 

SUMMARY: The Patent and Trademark Office (Office) is confirming the
amendment of its regulations that removed the requirement that the prior
application of a continued prosecution application (CPA) must have been
filed on or after June 8, 1995. This requirement was removed in response
to requests from the public. 

DATES: This final rule is effective on July 2, 1998. The interim rule,
published at 63 FR 5732, was effective February 4, 1998.

APPLICABILITY DATE: This rule change applies to all continued
prosecution applications filed on or after December 1, 1997. 

FOR FURTHER INFORMATION CONTACT: Concerning this final rule: Hiram H.
Bernstein or Robert W. Bahr, Senior Legal Advisors, by telephone at
(703) 305-9285; or by mail addressed to: Box Comments--Patents,
Assistant Commissioner for Patents, Washington, DC 20231; or by
facsimile to (703) 308-6916, marked to the attention of Mr. Bernstein.
Concerning    1.53 in General: John F. Gonzales, Fred A. Silverberg, or
Robert W. Bahr, Senior Legal Advisors, at the above-mentioned telephone
number. 

SUPPLEMENTARY INFORMATION: Continued Prosecution Application (CPA)
practice under    1.53(d) was adopted to permit applicants to obtain
further examination of an application. See Changes to Patent Practice
and Procedure; Final Rule Notice, 62 FR 53 13 1, 53 147 (October 10,
1997), 1203 Off. Gaz. Pat. Office 63, 76-77 (October 21, 1997). Section
1.53(d) as adopted, effective December 1, 1997, required, inter alia,
that the prior application of a CPA be filed on or after June 8, 1995.
See Final Rule Notice, 62 FR at 53186, 1203 Off. Gaz, Pat. Office at
112. Thus, if an application was filed before June 8, 1995, the
applicant was required to file a continuation (or divisional) under   
1.53(b) to obtain further examination.
   
Section 1.53(b) requires that any application filed thereunder
(including a continuation or divisional) contain a specification
(including at least one claim) and any necessary drawing. While   
1.53(b) permits the submission of a rewritten specification (with all
prior amendments incorporated), such an option is only practical to
those who have the prior application in electronic form. For those
applicants who do not have the prior application in electronic form,
their only option is to submit a copy of the prior application
(including any appendix) along with a copy of all the amendments made in
the prior application, as well as copies of all other papers filed in
the prior application (e.g., information disclosure statements (IDSs),
affidavits, declarations) that are to be considered in the continuing
application.
   
Subsequent to the adoption of the change to    1.53(d), the Office
received a number of comments indicating that it takes a considerable
amount of time to prepare the papers required by    1.53(b), even when
copied from a prior application. In view of these concerns, the Office
amended    1.53(d)(1)(i) by an immediately effective interim rule to
eliminate its requirement that the prior application of a CPA be filed
on or after June 8, 1995, and requested public comment on this interim
rule change. See Changes to Continued Prosecution Application Practice;
Interim Rule Notice, 63 FR 5732 (February 4, 1998), 1207 Off. Gaz, Pat.
Office 83 (February 24, 1998).
   
The Office has received a number of comments by telephone expressing
support for the change to    1.53(d)(1)(i), as well as its immediate
adoption and applicability to CPAs filed on or after December 1, 1997
(i.e., all CPAs). The Office, however, has received no written comments
on the change to    1.53(d)(1)(i). Accordingly, the change to   
1.53(d)(1)(i) in the interim rule--removal of the requirement that the
prior application of a continued prosecution application (CPA) under   
1.53(d) must have been filed on or after June 8, 1995--is adopted as a
final rule.
   
As discussed in the Interim Rule Notice, no patent issuing from a CPA
under    1.53(d) is entitled to the provisions of 35 U.S.C. 154(c). To
avoid confusion as to the term of any patent issuing on a CPA, other
than an application for a reissue or design patent, of an application
filed before June 8, 1995, the Office will include the following notice
on any patent, other than a reissue or design, issuing on a CPA:
   
šix This patent issued on a continued prosecution application filed
under 37 CFR 1.53(d), and is subject to the twenty-year patent term
provisions of35 U.S.C. 154(a)(2).
   
The term of a design patent is fourteen years beginning on the
date of grant as provided in 35 U.S.C. 173. The term of a reissue patent
is the unexpired part of the term of the original patent as provided in
35 U.S.C. 251. Since the term of a reissue or design patent is not
affected by the filing of a CPA, the above-mentioned notice will not be
printed on any reissue or design patent.

Other Considerations.

This final rule is in conformity with the requirements of the Regulatory
Flexibility Act (5 U.S.C. 601 et seq.), Executive Order 12612 (October
26, 1987), and the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.). It has been determined that this rulemaking is not significant
for the purposes of Executive Order 12866 (September 30, 1993).
   
This final rule involves a collection of information subject to the
Paperwork Reduction Act. This final rule involves the deletion of the
requirement which stated that the prior application of a continued
prosecution application must have been filed on or after June 8, 1995.
This collection of information has been previously approved by the
Office of Management and Budget (OMB) under OMB Control Number
0651-0032. The public reporting burden for this collection of
information is estimated to average 7.88 hours per response, including
the time for reviewing instructions, searching existing data sources,
gathering and maintaining the information. Send comments regarding this
burden estimate or any other aspect of the data requirement, including
suggestions for reducing the burden to Hiram H. Bernstein or Robert W.
Bahr at the address specified above and to the Office of Information and
Regulatory Affairs, OMB, 725 17th Street, N.W., Washington, D.C., 20503
(Attn: PTO Desk Officer).
   
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB Control Number.
   
The principal impact of this final rule is to relieve a restriction in  
 1.53(d)(1)(i) to permit applicants to file a CPA in the situation in
which the prior application was filed before June 8, 1995.
   
The Office has determined that this final rule has no Federalism
implications affecting the relationship between the National Government
and the States as outlined in Executive Order 12612 (October 26, 1987).
 
List of Subjects in 37 CFR Part 1

Administrative practice and procedure, Courts, Freedom of information,
Inventions and patents, Reporting and record keeping requirements, Small
Businesses.            
   
For the reasons set forth in the preamble, the interim rule mending 37
CFR Part 1 which was published at 63 FR 5732-5734 on February 4, 1998,
is adopted as a final rule without change.

June 25, 1998                                               BRUCE A. LEHMAN
                                        Assistant Secretary of Commerce and
                                     Commissioner of Patents and Trademarks

                                 [1213 OG 105]