(170) Department of Commerce
Patent and Trademark Office
37 CFR Parts 1, 3, 5, 7, and 10
[Docket #: 960606163-7130-02]
RIN 0651-AA80
Changes to Patent Practice and Procedure
Agency: Patent and Trademark Office, Commerce.
Action: Final Rule.
Summary: The Patent and Trademark Office (Office) is amending the rules
of practice to simplify the requirements of the rules, rearrange
portions of the rules for better context, and eliminate unnecessary
rules or portions thereof as part of a government-wide effort to reduce
the regulatory burden on the American public. Exemplary changes include:
(1) simplification of the procedure for filing continuation and
divisional applications; (2) amendment of a number of rules to permit
the filing of a statement that errors were made without deceptive
intent, without a requirement for a further showing of facts and
circumstances; and (3) elimination of the requirement that the
inventorship be named in an application on the day of its filing, which
eliminates the need for certain petitions to correct inventorship.
Effective Date: December 1, 1997.
For Further Information Contact: 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 marked to the attention of Mr. Bernstein or by
facsimile to (703) 308-6916.
Supplementary Information: This rule change implements the
Administration's program of reducing the regulatory burden on the
American public in accordance with the changes proposed in the Notice of
Proposed Rulemaking entitled "1996 Changes to Patent Practice and
Procedure" (Notice of Proposed Rulemaking), published in the Federal
Register at 61 FR 49819 (September 23, 1996), and in the Official
Gazette at 1191 Off. Gaz. Pat. Office 105 (October 22, 1996). The
changes involve: (1) simplification of procedures for filing
continuation and divisional applications, establishing lack of deceptive
intent in reissues, petition practice, and in the filing of papers
correcting improperly requested small entity status; (2) elimination of
unnecessary requirements, such as certain types of petitions to correct
inventorship under 1.48; (3) removal of rules and portions thereof
that merely represent instructions as to the internal management of the
Office more appropriate for inclusion in the Manual of Patent Examining
Procedure (MPEP); (4) rearrangement of portions of rules to improve
their context; and (5) clarification of rules to aid in understanding of
the requirements that they set forth.
Changes to proposed rules: This Final Rule contains a number of changes
to the text of the rules as proposed for comment. The significant
changes (as opposed to additional grammatical corrections) are discussed
below. Familiarity with the Notice of Proposed Rulemaking is assumed.
Discussion of Specific Rules and Response to Comments: Forty-three
written comments were received in response to the Notice of Proposed
Rulemaking. The written comments have been analyzed. For contextual
purposes, the comment on a specific rule and response to the comment are
provided with the discussion of the specific rule. Comments in support
of proposed rule changes generally have not been reported in the
responses to comments sections.
Title 37 of the Code of Federal Regulations, Parts 1, 3, 5, 7, and 10
are amended as follows:
Part 1:
Section 1.4: Section 1.4, paragraphs (d)(1) and (2), are amended to be
combined into 1.4 paragraphs (d)(1)(i) and (d)(1)(ii). Section
1.4(d)(1)(ii) is also amended to include the phrase "direct or indirect
copy" to clarify that the copy of the document(s) constituting the
correspondence submitted to the Office may be a copy of a copy (of any
generation) of the original document(s), or a direct copy of the
original document(s).
Section 1.4(d)(2) is amended to provide that the presentation to the
Office (whether by signing, filing, submitting, or later advocating) of
any paper by a party, whether a practitioner or non-practitioner,
constitutes a certification under 10.18(b), and that violations of
10.18(b)(2) may subject the party to sanctions under 10.18(c). That
is, by presenting a paper to the Office, the party is making the
certifications set forth in 10.18(b), and is subject to sanctions
under 10.18(c) for violations of 10.18(b)(2), regardless of
whether the party is a practitioner or non-practitioner. The sentence
"[a]ny practitioner violating 10.18(b) may also be subject to
disciplinary action" clarifies that a practitioner may be subject to
disciplinary action in lieu of or in addition to sanctions under
10.18(c) for violations of 10.18(b).
Section 1.4(d)(2) is amended so that the certifications set forth in
10.18(b) are automatically made upon presenting any paper to the Office
by the party presenting the paper. The amendments to 1.4(d) and
10.18 support the amendments to 1.6, 1.8, 1.10, 1.27, 1.28,1.48,
1.52, 1.55, 1.69, 1.102, 1.125, 1.137, 1.377, 1.378, 1.804, 1.805, (
1.821 and 1.825 will be reviewed at a later date in connection with
other matters), 3.26, and 5.4 that delete the requirement for
verification (MPEP 602) of statements of facts by applicants and other
parties who are not registered to practice before the Office. The
absence of a required verification has been a source of delay in the
prosecution of applications, particularly where such absence is the only
defect noted. The change to 1.4(d) and 10.18 automatically
incorporates required averments thereby eliminating the necessity for a
separate verification for each statement of facts that is to be
presented, except for those instances where the verification requirement
is retained. Similarly, the amendments to 1.4(d) and 10.18 support
an amendment to 1.97 ( 1.637 and 1.673 will be reviewed at a
later date in connection with other matters) that changes the
requirements for certifications to requirements for statements. This
change in practice does not affect the separate verification requirement
for an oath or declaration under 1.63, affidavits or declarations
under 1.130, 1.131, and 1.132, or statements submitted in support
of a petition under 5.25 for a retroactive license. The statements in
1.494(e) and 1.495(f) that verification of translations of
documents filed in a language other than English may be required is also
maintained, as such requirements are made rarely and only when deemed
necessary (e.g., when persons persist in translations which appear on
their face to be inaccurate). The requirements for certification of
service on parties in 1.248, 1.510, 1.637 and 10.142 are also
maintained.
Section 1.4 is also amended to add a new paragraph (g) related to an
applicant who has not made of record a registered attorney or agent
being required to state whether assistance was received in the
preparation or prosecution of a patent application. This is transferred
from 1.33(b) for consistent contextual purposes.
Section 1.6: Section 1.6(d)(3) is amended to provide that continued
prosecution applications under 1.53(d) may be transmitted to the
Office by facsimile. However, the procedures described in 1.8 do not
apply to, and no benefit under 1.8 will be given to, a continued
prosecution application under 1.53(d). That is, an applicant may file
a continued prosecution application by facsimile transmission, but the
filing date accorded such continued prosecution application will be the
date the complete transmission of the continued prosecution application
is received in the Office. For example, a continued prosecution
application transmitted by facsimile from Cali fornia at 10:30 pm
(Pacific time) on November 18, 1997, and received in the Office at 1:30
am (Eastern time) on November 19, 1997, will be accorded a filing date
of November 19, 1997. An applicant filing a continued prosecution
application by facsimile transmission bears the responsibility of
transmit ting such application in a manner and at a time that will
ensure its complete and timely ( 1.53(d)(1)(ii)) receipt in the Office.
An applicant filing an application under 1.53(d) (a continued
prosecution application) by facsimile must include an authorization to
charge (at least) the basic filing fee to a deposit account, or the
application must be treated under 1.53(f) as having been filed
without the basic filing fee (as fees cannot otherwise be transmitted by
facsimile). To avoid paying the late filing surcharge under 1.16(e),
an application (including an application under 1.53(d)) must include
the basic filing fee ( 1.16(e)). As such, payment of the basic filing
fee for an application under 1.53(d) on any date later than the
filing date of the application under 1.53(d) (even if paid within the
period for reply to the last action in the prior application) is
ineffective to avoid the late filing surcharge under 1.16(e).
Therefore, unless an application under 1.53(d) filed by facsimile
includes an authorization to charge the basic filing fee to a deposit
account, the applicant will be given a notification requiring payment of
the appropriate filing fee ( 1.53(d)(3)) and the late filing surcharge
under 1.16(e) to avoid abandonment of the 1.53(d) application.
Section 1.6(d)(3) is also amended to delete the reference to
1.8(a)(2)(ii)(D) as this paragraph was deleted in the Final Rule
entitled "Communications with the Patent and Trademark Office"
("Communications with the Office"), published in the Federal Register at
61 FR56439, 56443 (November 1, 1996), and in the Official Gazette at
1192 Off. Gaz. Pat. Office 95 (November 26, 1996).
Section 1.6(d)(6) is amended to reflect the transfer of material from
5.6, 5.7, and 5.8 to 5.1 through 5.5.
Section 1.6(e)(2) is amended to remove the requirement that the
statement be verified in accordance with the change to 1.4(d)(2)
and 10.18.
Section 1.6(f) is added to provide for the situation in which the Office
has no evidence of receipt of an application under 1.53(d) (a
continued prosecution application) transmitted to the Office by
facsimile transmission. Section 1.6(f) requires that a showing
thereunder include, inter alia, a copy of the sending unit's report
confirming transmission of the application under 1.53(d) or evidence
that came into being after the complete transmission of the application
under 1.53(d) and within one business day of the complete
transmission of the application under 1.53(d). Therefore, applicants
are advised to retain copies of the sending unit's reports in situations
in which such unit is used to transmit applications under 1.53(d) to
the Office or otherwise maintain a log book of the transmission of any
application under 1.53(d) to the Office. See also "Communications
with the Patent and Trademark Office" Final Rule.
No comments were received regarding the proposed change to 1.6.
Section 1.8: Section 1.8(a)(2)(i)(A) is amended to specifically refer to
a request for a continued prosecution application under 1.53(d) as a
correspondence filed for the purposes of obtaining an application filing
date, which is excluded by 1.8(a)(2)(i)(A) from the procedure set
forth in 1.8. The purpose of this amendment is to render it clear
that, notwithstanding that a continued prosecution application under
1.53(d) may be filed by facsimile transmission, the procedure set forth
in 1.8 does not apply to a request for a continued prosecution
application under 1.53(d) (or any correspondence filed for the
purpose of obtaining an application filing date). That is, the date on
the certificate of transmission ( 1.8(a)) of an application under
1.53(d) is not controlling (or even relevant), in that an application
under 1.53(d) (a continued prosecution application) filed by
facsimile transmission will not be accorded a filing date as of the date
on the certificate of transmission ( 1.8(a)), unless Office records
indicate, or applicant otherwise establishes pursuant to 1.6(f),
receipt in the Office of the complete application under 1.53(d) on
the date on the certificate of transmission, and that date is not a
Saturday, Sunday, or Federal holiday.
Section 1.8(b)(3) is amended to remove the requirement that the
statement be verified in accordance with the change to 1.4(d)(2)
and 10.18.
Section 1.9: Section 1.9(d) is amended to define a small business
concern as used in 37 CFR Chapter I as any business concern meeting the
size standards set forth in 13 CFR Part 121 to be eligible for reduced
patent fees. The regulations of the Small Business Administration (SBA)
set forth the size standards of a business concern to be eligible for
reduced patent fees. See 13 CFR 121.802. Thus, the language in 1.9(d)
duplicating such size standards is deleted as redundant, and to avoid
confusion in the event that such size standards are subsequently changed
by the SBA. The MPEP will include SBA's regulations concerning size
standards for a business concern to be eligible for reduced patent fees.
Section 1.9(f) is amended to add the phrase "eligible for reduced patent
fees" to clarify that a small entity as used in 37 CFR Chapter I is
limited to an independent inventor, a small business concern or a
non-profit organization that is eligible for reduced patent fees under
35 U.S.C. 41(h)(1).
Section 1.10: Sections 1.10(d) and (e) are amended to remove the
requirement for a statement that is verified.
Comment 1: One comment suggested that 1.10 be amended to clearly set
forth the controlling date for correspondence filed by "Express Mail"
under 1.10.
Response: Section 1.10 was substantially amended in the "Communications
with the Office" Rule Final (discussed supra). Section 1.10(a) as
amended in the aforementioned Final Rule provides that: (1)
correspondence received by the Office that was delivered by the "Express
Mail Post Office to Addressee" service of the United States Postal
Service (USPS) under 1.10 will be considered filed in the Office on
the date of deposit with the USPS; (2) the date of deposit with the USPS
is shown by the "date-in" on the "Express Mail" mailing label or other
official USPS notation; and (3) if the USPS deposit date cannot be
determined, the correspondence will be accorded the Office receipt date
as the filing date.
Section 1.11: Section 1.11(b) is amended to provide that the filing of a
continued prosecution application under 1.53(d) of a reissue
application will not be announced in the Official Gazette. Although the
filing of a continued prosecution application of a reissue application
constitutes the filing of a reissue application, the announcement of the
filing of such continued prosecution application would be redundant in
view of the announcement of the filing of the prior reissue application
in the Official Gazette.
Section 1.14: Section 1.14(a) is amended to: (1) clarify the provisions
of 1.14(a); (2) provide that copies of an application-as-filed may be
provided to any person on written request accompanied by the fee set
forth in 1.19(b), without notice to the applicant, if the application
is incorporated by reference in a U.S. patent; and (3) treat
applications in the file jacket of a pending application under
1.53(d) as pending rather than abandoned in determining whether copies
of, and access to, such applications will be granted.
Under current practice, the public is entitled to access to the original
disclosure (or application-as-filed) of an application, when the
application is incorporated by reference into a U.S. patent. See In re
Gallo, 231 USPQ 496 (Comm'r Pat. 1986). Section 1.14(a)(2) is added to
avoid the need for a petition under 1.14(e) to obtain a copy of the
original disclosure (or application-as-filed) of an application that is
incorporated by reference into a U.S. patent.
Section 1.14 is also amended to add a paragraph (f) to recognize the
change to 1.47(a) and(b) which add exceptions to maintaining pending
applications in confidence by providing public notice to nonsigning
inventors of the filing of a patent application.
Comment 2: One comment stated that the change from "applications
preserved in secrecy" to "applications preserved in confidence" suggests
a lower level of security for the applications permitting greater
discovery by third parties.
Response: The term "secrecy" in 1.14 was changed to "confidence" in
the Final Rule entitled "Miscellaneous Changes in Patent Practice"
("Miscellaneous Changes in Patent Practice"), published in the Federal
Register at 61 FR 42790 (August 19, 1996), and in the Official Gazette
at 1190 Off. Gaz. Pat. Office 67 (September 17, 1996). This change did
not represent a change in practice, but merely conformed the language of
1.14 to that of 35 U.S.C. 122 (the term "secrecy" is a term of art in
regard to matters of national security, and its former use in 1.14
was inappropriate).
Section 1.16: Section 1.16 is amended to add new paragraphs (m) and (n)
including the unassociated text following paragraphs (d) and (l).
No comments were received concerning 1.16.
Section 1.17: Section 1.17 (and 1.136(a)) adds a recitation to an
extension of time fee payment for a reply filed within a fifth month
after a nonstatutory or shortened statutory period for reply was set.
Section 1.17(a) is subdivided into paragraphs (a)(1) through (a)(5),
with paragraphs (a)(1)through (a)(4) setting forth the amounts for
one-month through four-month extension fees. Section 1.17(a)(5) provides
the small entity and other than small entity amounts for the new
fifth-month extension fee.
Section 1.17(a) is being amended to permit a petition for a fifth-month
extension of time. As the Office may set a shortened statutory period
for reply of one-month or thirty days, whichever is longer, this
authority for a petition under 1.136(a) will permit an applicant to
extend the period for reply until the six-month statutory maximum (35
U.S.C. 133) without resorting to a petition under 1.136(b), or to
extend by five months, pursuant to 1.136(a), a non-statutory period
for taking action (e.g., the time period in 1.192(a) for filing an
appeal brief).
Section 1.17 paragraphs (e), (f), and (g) are rewritten as 1.17
paragraphs (b), (c), and (d).
Section 1.17(h) is amended to delete references to petitions under
1.47, 1.48, and 1.84. Sections 1.47, 1.48, and 1.84(a) and (b) are
amended to contain a reference to the petition fee set forth in
1.17(i), rather than the petition fee set forth in 1.17(h).
Section 1.17(i) is amended to: (1) add a petition under 1.41 to
supply the name(s) of the inventor(s) after the filing date without an
oath or declaration as prescribed by 1.63, excepting provisional
applications; (2) add a petition under 1.47 for filing by other than
all the inventors or a person not the inventor; (3) add a petition under
1.48 for correction of inventorship, except in provisional
applications; (4) add a petition under 1.59 for expungement and
return of information; (5) delete the references to petitions under
1.60 and 1.62 in view of the deletion of 1.60 and 1.62; (6) add a
petition under 1.84 for accepting color drawings or photographs; and
(7) add a petition under 1.91 for entry of a model or exhibit.
Section 1.17(q) is amended to add a petition under 1.41 to supply the
name(s) of the inventor(s) after the filing date without a cover sheet
as prescribed by 1.51(c)(1) in a provisional application.
Section 1.17, as well as 1.103, 1.112, 1.113, 1.133, 1.134, 1.135,
1.136, 1.142, 1.144, 1.146, 1.191, 1.192, 1.291, 1.294, 1.484, 1.485,
1.488, 1.494, 1.495, ( 1.530, 1.550, 1.560, 1.605, 1.617, 1.640, and
1.652 will be reviewed at a later date in connection with other
matters), 1.770, 1.785, ( 1.821 will be reviewed at a later date in
connection with other matters), and 5.3 are also amended to replace the
phrases "response" and "respond" with the phrase "reply" for consistency
with 1.111.
Comment 3: One comment questioned why the terms "respond" and "response"
in the rules of practice were being replaced with the term "reply."
Response: It is appropriate to use a single term ("reply") throughout
the rules of practice, to the extent possible, to refer to that "reply"
by an applicant to an Office action required to avoid abandonment and
continue prosecution.
Comment 4: At least one comment noted that there is no statutory
authority under 35 U.S.C. 41(a)(8)(C) for the $2,010 amount set for the
fifth month extension of time.
Response: While the Notice of Proposed Rulemaking proposed a fifth month
extension fee of $2010, a Notice of Proposed Rulemaking entitled
"Revision of Patent and Trademark Fees for Fiscal Year 1998" ("1998 Fee
Revision"), published in the Federal Register at 62 FR 24865 (May 7,
1997), and in the Official Gazette at 1198 Off. Gaz. Pat. Office 97 (May
27, 1997), proposed that this fee be set at $2060. The Office is now
adopting the $2060 fifth month extension fee as proposed in the "1998
Fee Revision" Notice of Proposed Rulemaking.
Under 35 U.S.C. 41(a)(8)(C) (1991), the Commissioner is authorized to
charge $340 for any third or subsequent petition for a one-month
extension of time. However, under 35 U.S.C. 41(f), the additional fee
established pursuant to 35 U.S.C. 41(a)(8)(C) for a subsequent petition
for a one-month extension of time has been increased to $560 (i.e., $560
is the current difference (established under 35 U.S.C. 41(a)(8)(C))
between the $1510 fee for a four-month extension of time and the $950
three-month extension of time). The $1510 fee for a four-month extension
of time plus the $560 fee for an additional month is $2070 (this differs
from the $2060 fee proposed in the "1998 Fee Revision" Notice of
Proposed Rulemaking due to rounding). Therefore, the Office is
authorized under 35 U.S.C. 41(a)(8) to establish a fee of $2060 for a
five-month extension of time.
Section 1.21: Section 1.21(l) is amended for consistency with 1.53,
and 1.21(n) is amended to change the reference to an improper
application under 1.60 or 1.62 to a reference to an application in
which proceedings are terminated pursuant to 1.53(e).
No comments were received regarding the proposed change to 1.21.
Section 1.26: Section 1.26(a) is amended to better track the statutory
language of 35 U.S.C. 42(d) and to add back language relating to refunds
of fees paid that were not "required" that was inadvertently dropped in
the July 1, 1993, publication of title 37 CFR, and from subsequent
publications.
No comments were received regarding the proposed change to 1.26.
Section 1.27: Section 1.27 paragraphs (a) through (d) are amended to
remove the requirement that a statement filed thereunder be "verified,"
and to replace "aver" and "averring" with "state" and "stating." See
comments relating to 1.4(d). Section 1.27(b) is also amended for
clarification with the movement of a clause relating to "any verified
statement" within a sentence.
No comments were received regarding the proposed change to 1.27.
Section 1.28: Section 1.28(a) is amended to remove the requirement for a
statement that is "verified." See comments relating to 1.4(d).
Section 1.28(a) is also amended to provide that a new small entity
statement is not required for a continuing or reissue application where
small entity status is still proper and reliance is placed on a
reference to a small entity statement filed in a prior application or
patent or a copy thereof is supplied. Section 1.28(a) is further amended
to state that the payment of a small entity basic statutory filing fee
in a nonprovisional application, which claims benefit under 35 U.S.C.
119(e), 120, 121, or 365(c) of a prior application (including a
continued prosecution application) or in a reissue application, where
the prior application or the patent has small entity status, will
constitute a reference in the continuing or reissue application to the
small entity statement in the prior application or in the patent,
thereby establishing small entity status in such a nonprovisional
application.
Section 1.28(a) is also amended to require a new determination of
continued entitlement to small entity status for continued prosecution
applications filed under 1.53(d) and to clarify that the refiling of
applications as continuations, divisions and continuation-in-part
applications and the filing of reissue applications also require a new
determination of continued entitlement to small entity status prior to
reliance on small entity status in a prior application or patent.
Comment 5: One comment asked whether the change to 1.28 regarding
small entity requires that a small entity statement be filed with each
continuing application.
Response: While the filing of a continuing application requires a new
determination of entitlement to small entity status, 1.28(a)
continues to permit reliance on a small entity statement filed in a
prior application for nonprovisional continuing applications.
Section 1.28(c) is amended to remove the requirement for a statement of
facts explaining how an error in payment of a small entity fee(s)
occurred in good faith and how and when the error was discovered. A fee
deficiency payment under 1.28(c) must include the difference between
fee(s) originally paid as a small entity and the other than small entity
fee(s) in effect at the time of payment of the complete fee deficiency.
A fee deficiency payment under 1.28(c) will be treated as a
representation by the party submitting the payment that small entity
status was established in good faith and that the original payment of
small entity fees was made in good faith. Any paper submitted under
1.28(c) will be placed in the appropriate file without review after the
processing of any check or the charging of any feed efficiency payment
specifically authorized.
Comment 6: One comment suggested that 1.28(c) be amended to clarify
current Office practice regarding the acceptance of papers under
1.28(c)(2) in light of two recent District Court decisions: (1) Haden
Schweitzer Corp. v. Arthur B. Myr Industries, Inc., 901 F.Supp. 1235, 36
USPQ2d 1020 (E.D. Mich. 1995); and (2) DH Technology, Inc. v. Synergstex
International, Inc., 937 F. Supp. 902, 40 USPQ2d 1754 (N.D. Cal. 1996).
Response: The Office is also aware of a recent District Court decision
in Jewish Hospital of St. Louis v. Idexx Laboratories, 951 F. Supp 1, 42
USPQ2d 1720 (D. Me. 1996), that relies on 1.28(c)(2) exclusively. The
changes to 1.28(c) are not directed to the issue of whether
1.28(c)(2) must be viewed as the exclusive remedy. Nevertheless, an
applicant or patentee can avoid undesirable results by not claiming
small entity status unless it is absolutely certain that the applicant
or patentee is entitled to small entity status (i.e., resolving any
doubt,uncertainty, or lack of information in favor of payment of the
full fee). See MPEP 509.03 ("Small entity status must not be established
unless the person or persons signing the . . . statement can
unequivocally make the required self-certification" (emphasis added)).
Section 1.33: Section 1.33 is amended to no longer provide that the
required residence and post office address of the applicant can appear
elsewhere than in the oath or declaration under 1.63. Section
1.63(a)(3) is amended to require that the post office address as well as
the residence be identified therein and not elsewhere. Permitting the
residence to be elsewhere in the application other than the oath or
declaration, as was in 1.33(a), would be inconsistent with unamended
1.63(c) that states that the residence must appear in the oath or
declaration. The requirement for placement of the post office address is
equivalent to the requirement for the residence to eliminate confusion
between the two, which often are the same destination and are usually
provided in the oath or declaration. The reference in 1.33(a) to the
assignee providing a correspondence address has been moved within
1.33(a) for clarification. Other clarifying language includes a
reference to 1.34(b), use of the terms "provided," "furnished" rather
than "notified," and "application" rather than "case," and deletion of
the expression "of which the Office."
The former language of 1.33(b) is transferred to new 1.4(g).
Section 1.33(b) is amended to set forth the signature requirement for
papers filed in an application (formerly in 1.33(a)). Section 1.33(b)
is specifically amended to provide that amendments and other papers
filed in an application must be signed by: (1) an attorney or agent of
record appointed in compliance with 1.34(b); (2) a registered
attorney or agent not of record who acts in are presentative capacity
under the provisions of 1.34(a); (3) the assignee of record of the
entire interest (if there is such); (4) an assignee of record of an
undivided part interest (if there is such), so long as the amendment or
other paper is also signed by any assignee(s) of the remaining interest
and any applicant retaining an interest; or (5) all of the applicants,
including applicants under 1.42, 1.43 and 1.47, unless there is an
assignee of record of the entire interest and such assignee has chosen
to prosecute the application to the exclusion of the applicant(s), and,
as such, has taken action in the application in accordance with
3.71 and 3.73. This is not a change in practice, but simply a
clarification of current signature requirements.
No comments were received regarding the proposed change to 1.33.
Section 1.41: Section 1.41(a) (and 1.53) is amended to no longer
require that a patent be applied for in the name of the actual inventors
for an application for patent to be accorded a filing date. The
requirement for use of full names is moved to 1.63(a) for better
context. Section 1.41(a) is specifically amended: (1) to provide that a
patent is applied for in the name(s) of the actual inventor(s); (2) to
add paragraphs (a)(1) and (a)(2) indicating how the inventorship is set
forth in a nonprovisional and provisional application; and (3) to add
paragraph (a)(3) indicating the need for an identifier consisting of
alphanumeric characters if no name of an actual inventor is provided.
Section 1.41(a)(1) provides that the inventorship of a nonprovisional
application is that inventorship set forth in the oath or declaration as
prescribed by 1.63, except as provided for in 1.53(d)(4) and
1.63(d). Section 1.41(a)(1) also provides that if an oath or declaration
as prescribed by 1.63 is not filed during the pendency of a
nonprovisional application, the inventorship is that inventorship set
forth in the application papers filed pursuant to 1.53(b), unless a
petition under this paragraph accompanied by the fee set forth in
1.17(i) is filed supplying the name(s) of the inventor(s).
Section 1.41(a)(2) provides that the inventorship of a provisional
application is that inventorship set forth in the cover sheet as
prescribed by 1.51(c)(1). Section 1.41(a)(2) also provides that if a
cover sheet as prescribed by 1.51(c)(1) is not filed during the
pendency of a provisional application, the inventorship is that
inventorship set forth in the application papers filed pursuant to
1.53(c), unless a petition under this paragraph accompanied by the fee
set forth in 1.17(q) is filed supplying the name(s) of the
inventor(s).
35 U.S.C. 120 and 1.78(a) require, inter alia, that an application
have at least one inventor in common with a prior application to obtain
the benefit of the filing date of such application. Considering the
executed oath or declaration (or cover sheet in a provisional
application) the sole mechanism for naming the inventor(s) would operate
as a trap in the event that an application were abandoned prior to the
filing of an oath or declaration in favor of a continuing application
(or in the event that a cover sheet was not filed in a provisional
application). To avoid this result, 1.41 as adopted provides that the
inventorship is that inventorship named in an executed oath or
declaration under 1.63 (or in the cover sheet under 1.51(c)(1) in
a provisional application), but that if no executed oath or declaration
under 1.63 (or cover sheet under 1.51(c)(1) in a provisional
application) is filed during the pendency of the application, the
inventorship will be considered to be the inventor(s) named in the
original application papers.
In the peculiar situation in which no inventor is named in the original
application papers (or the correct inventor(s) are not named in the
original application papers), and no executed oath or declaration under
1.63 (or cover sheet under 1.51(c)(1) in a provisional application)
is filed during the pendency of the application, it will be necessary
for the applicant to file a petition under 1.41(a) (and appropriate
fee) to name the inventor(s). No explanation (other than that the paper
is supplying or changing the name(s) of the inventor(s)) or showing off
acts concerning the inventorship or any delay in naming the inventorship
is required or desired in a petition under 1.41(a). The petition fee
is required to cover (or defray in a provisional application) the costs
of updating the Office's records for the application.
Where no inventor(s) is named on filing, the Office requests that an
identifying name be submitted for the application. The use of very short
identifiers should be avoided to prevent confusion. Without supplying at
least a unique identifying name the Office may have no ability or only a
delayed ability to match any papers submitted after filing of the
application and before issuance of an identifying application number
with the application file. Any identifier used that is not an inventor's
name should be specific, alphanumeric characters of reasonable length,
and should be presented in such a manner that it is clear to application
processing personnel what the identifier is and where it is to be found.
It is strongly suggested that applications filed without an executed
oath or declaration under 1.63 or 1.175 include the name of the
person(s) believed to be the inventor for identification purposes.
Failure to apprise the Office of the application identifier being used
may result in applicants having to resubmit papers that could not be
matched with the application and proof of the earlier receipt of such
papers where submission was time dependent.
As any inventor(s) named in the original application papers is
considered to be the inventor(s) only when no oath or declaration under
1.63 is filed in a nonprovisional application or cover sheet under
1.51(c)(1) filed in a provisional application, the recitation of the
inventorship in an application submitted under 1.53(b) or (d) without
an executed oath or declaration or cover sheet, respectively, for
purposes of identification may be changed merely by the later submission
of an oath or declaration executed by a different inventive entity
without recourse to a petition under 1.41 or 1.48.
Comment 7: One comment noted that when an application is filed only an
alphanumeric identifier may be used, which would of necessity require a
correction of inventorship, and questioned how a verified statement
under 1.48(a) could be filed as there would be no person to sign such
statement, whether the Office will require that the name(s) of the
inventor(s) be submitted within a specified period, and whether the
filing date will be lost if the name(s) of the inventor(s) is not
submitted within such period.
Response: The name(s) of the inventor(s) in a nonprovisional application
are provided in the oath or declaration under 1.63 ( 1.41(a)(2))
and the name(s) of the inventor(s) in a provisional application are
provided in the cover sheet ( 1.41(a)(3)). Thus, an application filed
without the name(s) of the inventor(s) must also have been filed without
an oath or declaration under 1.63 (nonprovisional) or cover sheet
(provisional).
The Office will set a time period in a nonprovisional application filed
without an oath or declaration under 1.63 for the filing of such an
oath or declaration ( 1.53(f)). The Office will set a time period in a
provisional application filed without a cover sheet for the filing of
such cover sheet ( 1.53(g)). The subsequently filed oath or
declaration or cover sheet will provide the name(s) of the inventor(s).
No petition under 1.48(a) would be required where there was an
alphanumeric identifier (and not a name of a person) or where the
person(s) set forth as the inventor(s) was incorrect.
In the event that an oath or declaration or cover sheet is not timely
filed, the application will become abandoned and the inventorship will
be considered to be the inventor(s) named in the original application
papers. The failure to timely file an oath or declaration, cover sheet,
or the name(s) of the inventor(s) is not a filing date issue.
Comment 8: One comment thought that the proposed change eliminating the
need to identify any inventor would lead to sloppy filing procedures and
that it should in almost all cases be possible for practitioners to
correctly identify the inventors at the time of filing.
Response: Experience has demonstrated that a significant number of
applications filed under 1.53(b) without an executed oath or
declaration have been filed with incorrect inventorships with
explanations running from "there was no time to investigate the
inventorship" to "the inventors contacted either did not understand the
inventorship requirements under U.S. patent law or did not appreciate
that the claims as filed included or did not include the contribution of
the omitted or erroneously added inventor." Additionally, Office
experience is that while almost all 1.48(a) petitions concerning such
matters are eventually granted, only a small percentage are granted on
the initial petition thereby causing a prolonged prosecution period,
which is undesirable in view of the amendment to 35 U.S.C. 154 contained
in the Uruguay Round Agreements Act (URAA), Pub. L. 103-465, 108 Stat.
4809 (1994).
Section 1.47: Section 1.47 paragraphs (a) and (b) are amended, pursuant
to 35 U.S.C. 116 and 35 U.S.C 118, to provide for publication in the
Official Gazette of a notice of filing for all applications, except for
continued prosecution applications under 1.53(d), submitted under
this section rather than only when notice to the nonsigning inventor(s)
is returned to the Office undelivered or when the address of the
nonsigning inventor(s) is unknown. The information to be published,
after grant of the 1.47 petition, will include: The application
number, filing date, invention title and name(s) of the nonsigning
inventor(s). Letters returned as undeliverable are difficult to match
with the related application file, and when matched with the file, the
applications are burdensome to flag as requiring further action by the
Office. Accordingly, the return of letters is not a desirable means of
triggering publication of a notice to a nonsigning inventor as to the
filing of the application. Furthermore, when a returned letter is used
as such a trigger, another review of the application must be made for
returned correspondence. As the best time for review of returned letters
is after allowance, but before issuance, of an application, processing
of the application would be delayed and done at a time that could be
best used for printing related processing requirements. Printing of
notice of the filing of all applications wherein 1.47 status is
granted does not require any such review to be made. In order to best
balance the obligation of providing notice to inventors and efficient
processing of applications, notice in the Official Gazette of the filing
of 1.47 applications will be prepared essentially at the same time
that the letter notice is directly sent to the nonsigning inventor.
Paragraphs (a) and (b) of this section are also amended to exclude the
filing of continued prosecution applications under 1.53(d) from the
notice requirement.
Section 1.47 is also amended for clarification purposes. A reference to
an "omitted inventor" in 1.47(a) is replaced with "nonsigning
inventor." The statements in 1.47 paragraphs (a)and (b) that a patent
will be granted upon a satisfactory showing to the Commissioner are
deleted as unnecessary. Section 1.47(b) is amended to clarify that it
applies only where none of the inventors are willing or can be found to
sign the oath or declaration by substitution of "an inventor" by "all
the inventors." The use of "must state" in regard to the last known
address is deleted as redundant in view of the explicit requirement for
such address in the rule. The sentence in 1.47(b) referring to the
filing of the assignment, written agreement to assign or other evidence
of proprietary interest is deleted as redundant in view of the
requirement appearing earlier in 1.47(b) calling for "proof of
pertinent facts."
Comment 9: One comment believed that the amendment to 1.47(b) results
in a change in practice permitting an assignee to proceed thereunder
only where all the inventors refuse to sign, and that the assignee
should not be precluded from making the required declaration where only
one inventor refuses to cooperate as the other inventors may not have
personal knowledge of the facts.
Response: While the specific language of 1.47(b) is amended to recite
the condition that "all the inventors refuse to execute an application"
the prior use of the term "inventor" was intended to mean and was
interpreted as meaning all inventors. See MPEP 409.03(b). Accordingly,
the language clarification is not a change in practice.
Although it is unclear as to what particular "facts" the comment is
addressed to that the other inventors would not have personal knowledge
of, facts as to the inventorship of the noncooperating inventor would
better lie with the other inventors who are after all required to be
joint inventors, 35 U.S.C. 116, and therefore the other inventors should
have the best knowledge of the facts required for a declaration under
1.63. Any declaration of facts, in support of the petition, to show,
e.g., that an inventor has refused to sign a declaration after having
been given an opportunity to do so, should be made by someone with
first-hand knowledge of the events, such as the attorney who presented
the inventor with the application papers.
Section 1.48: Section 1.48 provides for correction of inventorship in an
application (other than a reissue application). Section 1.324 provides
for correction of inventorship in a patent. Sections 1.171 and 1.175
provide for correction of inventorship in a patent via a reissue
application.
Section 1.48 is amended in its title to clarify that the section
concerns patent applications, other than reissue applications, and not
patents. Where a patent names an incorrect inventive entity, the
inventorship error may be corrected by reissue. See MPEP 1402. Where a
reissue application names an incorrect inventive entity in the executed
reissue oath or declaration (whether the reissue application is filed
for the sole purpose or in-part to correct the inventorship, or is filed
for purposes other than correction of the inventorship), a new reissue
oath or declaration in compliance with 1.175 may be submitted with
the correct inventorship without a petition under 1.48. This is
because it is the inventorship of the patent being reissued that is
being corrected (via a reissue application).
35 U.S.C. 251, 3, provides that the provisions of title 35, U.S.C.,
relating to applications apply to reissue applications. 35 U.S.C. 116,
3, authorizes the Commissioner to permit correction of inventorship
in an application under such terms as the Commissioner prescribes. The
Commissioner has determined that correction of inventorship in a reissue
application may be accomplished under 35 U.S.C. 251 via the reissue oath
or declaration, without resort to a petition under 1.48. Therefore,
1.48 has been amended to specifically exclude its applicability to
correction of inventorship in a reissue application.
Section 1.48(a) will not require correction of the inventorship if the
inventorship or other identification under 1.41 was set forth in
error on filing of the application. Section 1.48(a) is amended to apply
only to correction of inventor or inventors, in applications, other than
reissue applications, from that named in an originally filed executed
oath or declaration andnot to the naming of inventors or others for
identification purposes under 1.41. The statement to be submitted
will be required only from the person named in error as an inventor or
from the person who through error was not named as an inventor rather
than from all the original named inventors so as to comply with 35
U.S.C. 116. The requirement that any amendment of the inventorship under
1.48(a) be "diligently" made has been removed. The applicability of
a rejection under 35 U.S.C. 102(f) or (g) against an application with
the wrong inventorship set forth therein and any patent that would issue
thereon is a sufficient motivation for prompt correction of the
inventorship without the need for a separate requirement for diligence.
Comment 10: Two comments expressed opposition to deletion of the
diligence requirement in 1.48 paragraphs (a) through (c) in that
removal thereof would seem to promote delay in correction of the
inventorship and decrease the importance of having the correct
inventorship.
Response: In addition to the motivation noted in the explanation of the
rules for not allowing a patent to issue with improper inventorship, the
criteria for correction of the inventorship becomes more restrictive
subsequent to issuance under 1.324 (having a statutory basis under 35
U.S.C. 256) than under 1.48(a) (having a statutory basis under 35
U.S.C. 116). 35 U.S.C. 256 requires participation by all the parties
including each original named inventor, which participation may be
harder to obtain after the patent has issued. Petitions under 1.48(a)
filed earlier while the application is pending may seek waiver under
1.183 of participation of some of the parties needed to participate.
Additionally, petitions under 1.48 in pending applications are not
entered as a matter of right in rejected (the criteria of 1.116
applies) or allowed (the criteria of 1.312 applies) applications. See
1.48(a) and MPEP 201.03.
A clarifying reference to 1.634 is added in 1.48(a) for instances
when inventorship correction is necessary during an interference and has
been moved from 1.48(a)(4) for improved contextual purposes.
The 1.48(a)(1) statement requires a statement only as to the lack of
deceptive intent rather than a statement of facts to establish how the
inventorship error was discovered and how it occurred, since the latter
requirement is deleted. Additionally, the persons from whom a statement
is required now includes any person who through error was not named as
an inventor but limits statements from the original named inventors to
only those persons named in error as inventors rather than all persons
originally named as inventors including those correctly named. The
paragraph is amended to remove the requirement that the statement be
verified in accordance with the change to 1.4(d)(2) and 10.18.
Comment 11: One comment opposed the removal of the Office from examining
the issue of inventorship as substantive law invalidates patents that
have issued in the names of incorrect inventors and the Office is
charged with the duty of examining applications for the purpose of
denying issue to those applications that do not meet the standards of
patentability. Where an oath has originally been filed asserting the
proper inventor is one entity and a subsequent paper asserts that the
proper inventor is another, under such circumstances "the facts are
inherently suspect" and an investigation by the Office is warranted and
required by statute.
Response: The amendments to 1.48 have otherwise received overwhelming
support.
The Office has pursued the existence of improper inventorship in
applications by rejection under 35 U.S.C. 102(f) or (g) and will
continue to do so independent of the change in the verified statement
requirements under 1.48 paragraphs (a) or (c). A request to change
inventorship, however, often requested by the current inventors or
assignee on their own initiative is not seen to be inherently fraught
with deceptive intent as to warrant a close and detailed examination
absent more. A statement that the error was made without deceptive
intent is seen to be a sufficient investigation complying with the
statutory requirement under 35 U.S.C. 116, particularly as most
petitions are eventually granted or an application can be refiled naming
the new desired inventive entity. Refiling of the application to change
the inventorship will not cause the Office, absent more, to initiate an
investigation as to the correct inventorship or cause a rejection under
35 U.S.C. 102(f) or (g) to be made. Additionally, it should be noted
that the Office views a petition under 1.48 to be a procedural matter
and not to represent a substantive determination as to the actual
inventorship. See MPEP 201.03, Verified Statement of Facts.
For those situations where there was deceptive intent, the Office is
lacking certain necessary tools for a thorough inquiry (e.g., subpoena
authority) to ascertain the truth thereof (as in other situations under
1.28 and 1.56). However, the inquiry cannot be waived by the Office
due to the statutory requirement under 35 U.S.C. 116. There is no other
reasonable course of action than to accept as an explanation for the
execution of a 1.63 oath or declaration setting forth an erroneous
inventive entity that the inventor did not remember the contribution of
the omitted inventor at the time the oath or declaration was executed
(absent subpoena power and inter parties hearings), and therefore
further inquiries into the matter other than a statement of lack of
deceptive intent are a waste of Office resources.
Comment 12: One comment suggested that in limiting the submission of a
verified statement of facts to only the parties being added or deleted
as inventors, agreement of the original named inventors should also be
obtained as is currently done when verified statements of facts from all
the original named inventors are required.
Response: Agreement or acquiescence of the original named inventors, to
the extent that they remain as inventors, to the new inventorship will
be obtained through the retained requirement that the actual inventive
entity complete a new oath or declaration under 1.63, which must set
forth the new inventive entity. Additionally, through the rule changes
to this section and 1.28 and 1.175 the Office is decreasing its
investigation of claims relating to a lack of deceptive intent. The
remaining purpose of these rules is to force the applicant(s) to merely
make an assertion as to a lack of deceptive intent thereby permitting
subsequent reviewers (tribunals or otherwise) to determine, in light of
all the available facts, whether the applicant(s) complied with the
statute.
Section 1.48(a)(2) is amended for clarification purposes to indicate the
availability of 1.42, 1.43 or 1.47 in meeting the requirement for
an executed oath or declaration under 1.63 from each actual inventor.
Section 1.47 is only applicable to the person to be added as an inventor
(inventors named in an application transmittal letter can be deleted
without petition). For those persons already having submitted an
executed oath or declaration under 1.63, apetition under 1.183,
requesting waiver of reexecution of an oath or declaration, may be an
appropriate remedy. The requirement for an oath or declaration is
maintained in 1.48(a) notwithstanding its replacement in 1.324 for
issued patents by a statement of agreement or lack of disagreement with
the requested change in view of the need to satisfy the duty of
disclosure requirement in a pending application that is set forth in a
1.63 oath or declaration.
Section 1.48(a)(4) is amended to include a citation to 3.73(b) to
clarify the requirements for submitting a written consent of assignee,
which is subject to the requirement under 3.73(b),and to delete the
reference to an application involved in an interference, which is being
moved to 1.48(a). Section 1.48(a)(4) is also amended to clarify that
the assignee required to submit its written consent is only the existing
assignee of the original named inventors at the time the petition is
filed and not any party that would become an assignee based on the grant
of the inventorship correction.
Section 1.48(b) is also amended to remove the requirement that a
petition thereunder be diligently filed. The applicability of a
rejection under 35 U.S.C. 102(f) or (g) against an application with the
wrong inventorship set forth therein and any patent that would issue
thereon is sufficient motivation for prompt correction of the
inventorship without the need for a separate requirement for diligence.
Section 1.48(b) is amended to have a clarifying reference to 1.634
added for instances when inventorship correction is necessary during an
interference.
Comment 13: A comment noted that the literal wording of 1.48(b)
permits correction thereunder only where the correct inventors were
named on filing thereby excluding correction under 1.48(b) where an
incorrect inventorship was named on filing that was subsequently
corrected under 1.48(a) and, subsequent to the correction prosecution
of the application, required additional correction under 1.48(b).
Response: The comment is accepted and 1.48(b) has been modified to
delete "when filed" after "nonprovisional application" for clarification
purposes. Additionally, the term "originally" in the first sentence of
paragraph (b) has been replaced with "currently."
Section 1.48(c) is amended so that a petition thereunder no longer needs
to meet the current requirements of 1.48(a), which are also changed.
A statement from each inventor being added that the inventorship
amendment is necessitated by amendment of the claims and that the error
occurred without deceptive intent is required under 1.48(c)(1) rather
than the previous requirement of a statement from each original named
inventor. The previous requirements under 1.48(a) for an oath or
declaration, the written consent of an assignee and the written consent
of any assignee are retained, but are now separately set forth in
1.48 paragraphs (c)(2) through (c)(4). The particular circumstances of a
petition under this paragraph, adding an inventor due to an amendment of
the claims that incorporates material attributable to the inventor to be
added, is seen to be indicative of a lack of deceptive intent in the
original naming of inventors. Accordingly, all that must be averred to
is that an amendment of the claims has necessitated correction of the
inventorship and that the inventorship error existing in view of the
claim amendment occurred without deceptive intent. The previous
requirement for diligence in filing the petition based on an amendment
to the claims is not retained as applicants have the right, prior to
final rejection or allowance, to determine when particular subject
matter is to be claimed. Applicants should note that any petition under
1.48 submitted after allowance is subject to the requirements of
1.312, and a petition submitted after final rejection is not entered as
a matter of right.
Section 1.48(c)(2) is amended to clarify the availability of 1.42,
1.43 and 1.47 in meeting the requirement for an executed oath or
declaration under 1.63. Section 1.47 is only applicable to the person
to be added as an inventor. For those persons already having an executed
oath or declaration under 1.63, a petition under 1.183, requesting
waiver of reexecution of an oath or declaration, may be an appropriate
remedy.
Section 1.48(c)(4) is amended to clarify that the assignee required to
submit its written consent is only the existing assignee of the original
named inventors at the time the petition is filed and not any party that
would become an assignee based on the grant of the inventorship
correction. A citation to 3.73(b) is presented.
Section 1.48(d) is amended by addition of "their part" to replace "the
part of the actual inventor or inventors" and of "omitted" to replace
"actual" to require statements from the inventors to be added rather
than from all the actual inventors so as to comply with 35 U.S.C.116.
Section 1.48(d)(1) is also clarified to specify that the error to be
addressed is the inventorship error. It is not expected that the party
filing a provisional application will normally need to correct an error
in inventorship under this paragraph by adding an inventor therein
except when necessary under 1.78 to establish an overlap of
inventorship with a continuing application.
Section 1.48(d)(1) is also amended to remove the requirement that the
statement be verified in accordance with the change to 1.4(d)(2)
and 10.18.
Section 1.48(e)(1) is amended to replace a requirement in provisional
applications that the required statement be one "of facts" directed
towards "establishing that the error" being corrected "occurred without
deceptive intention," requiring only a statement that the inventorship
error occurred without deceptive intent. Paragraph (e)(1) is also
amended to remove the requirement that the statement be verified in
accordance with the change to 1.4(d)(2) and 10.18. It is not
expected that the party filing a provisional application would need to
file a petition under this paragraph since the application will go
abandoned by operation of law (35 U.S.C. 111(b)(5)), and the need to
delete an inventor will not affect the overlap of inventorship needed to
claim priority under 1.78(a)(3) for any subsequently filed
nonprovisional application.
Section 1.48(e)(3) is amended to clarify that the assignee required to
submit its written consent is only the prior existing assignee before
correction of the inventorship is granted and not any party that would
become an assignee based on the grant of the inventorship correction. A
reference to 3.73(b) is added.
Section 1.48(f) is added to provide that the later filing of an executed
oath or declaration (or cover sheet ( 1.51(c)(1)) in a provisional
application) during the pendency of the application would act to correct
the inventorship without a specific petition for such correction and
will be used to further process the application notwithstanding any
inventorship or other identification name earlier presented.
Section 1.48(g) is added to specifically recognize that the Office may
require such other information as may be deemed appropriate under the
particular circumstances surrounding a correction of the inventorship.
Section 1.51: Section 1.51, paragraphs (a)(1) and (a)(2), are re-written
as 1.51, paragraphs(b) and (c), respectively, and 1.51(b) is
re-written as 1.51(d). Section 1.51(c) covering the use of an
authorization to charge a deposit account is removed as unnecessary in
view of 1.25(b).
No comments were received regarding the proposed change to 1.51.
Section 1.52: Section 1.52, paragraphs (a) and (d), are amended to
remove the requirement that the translation be verified in accordance
with the change to 1.4(d)(2) and 10.18. Section 1.52, paragraph
(c), is amended to remove the reference to 1.123 through 1.125 to:
(1) reflect a transfer of material from 1.123 and 1.124 to
1.121; (2) further clarify that 1.125 is not a vehicle amendment of
an application; and (3) to clarify that alterations to application
papers may be made on, as well as before, the signing of the oath or
declaration. Section 1.52, paragraphs (a) and (d), are also amended to
clarify the need for a statement that the translation being offered is
an accurate translation, as in 1.69(b).
Comment 14: Two comments were received asking whether the attorney can
sign the statement that the translation is accurate, and how much
firsthand knowledge does a practitioner need to know that the
translation is accurate.
Response: The Office will accept a statement that the translation is
accurate from any party. However, any party signing such statement must
keep in mind the averments that are made under 1.4(d) and 10.18.
The actual firsthand knowledge needed by a practitioner is that amount
of knowledge to comply with the averments in 1.4(d) and 10.18.
Comment 15: A comment questioned whether there is any difference between
the previous language of "verified translation" and the present language
of "accurate translation."
Response: The previous language was directed at a verification that the
translation is accurate. A verification requirement is now unnecessary
due to the amendments to 1.4(d) and 10.18. Thus, 1.52(d) is
amended to include the more direct term "accurate."
Section 1.53: Section 1.53 is amended to include headings for each
paragraph for purposes of clarity.
Section 1.53(a) is amended to state that "[a]ny papers received in the
Patent and Trademark Office which purport to be an application for a
patent will be assigned an application number for identification
purposes." That is, the Office will refer to papers purporting to be an
application for a patent as an "application" and assign such
"application" an application number for identification purposes. This
reference, however, does not imply that such papers meet the
requirements in 1.53(b) to be accorded a filing date or constitute an
"application" within the meaning of 35 U.S.C. 111.
Section 1.53(b) is amended to provide that: (1) the filing date of an
application for patent filed under 1.53(b) is the date on which a
specification as prescribed by 35 U.S.C. 112 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 Office; (2) no new
matter may be introduced into an application after its filing date; (3)
a continuation or divisional application filed by all or by fewer than
all of the inventors named in a prior nonprovisional application may be
filed under 1.53(b) or (d); and (4) a continuation or divisional
application naming an inventor not named in the prior nonprovisional
application or a continuation-in-part application must be filed under
1.53(b).
Section 1.53(c) is amended to provide for provisional applications
(formerly provided for in 1.53(b)(2)). Section 1.53(c) includes the
language of former 1.53(b)(2), with certain changes for purposes of
clarity. Section 1.53(c)(i), for example, includes language requiring
either the provisional application cover sheet required by 1.51(c)(1)
or a cover letter identifying the application as a provisional
application. The cover letter may be an application transmittal letter
or some other paper identifying the accompanying papers as a provisional
application.
Section 1.53(d) is amended to provide for continued prosecution
applications. Section 1.53(d)(1) provides that a continuation or
divisional application, but not a continuation-in-part, of a prior
nonprovisional application may be filed as a continued prosecution
application under 1.53(d), subject to the conditions specified in
paragraph (d)(1)(i) and (d)(1)(ii). That is, an application under
1.53(d) cannot be a continuation-in-part application, and the prior
application cannot be a provisional application.
Section 1.53(d)(1)(i) specifies that the prior application be either:
(1) complete as defined by 1.51(b) and filed on or after June 8,
1995; or (2) the national stage of an international application in
compliance with 35 U.S.C. 371 and filed on or after June 8, 1995. The
phrase "prior" application in 1.53(d)(1) means the application
immediately prior to the continued prosecution application under
1.53(d), in that a continued prosecution application under 1.53(d)
may claim the benefit under 35 U.S.C. 120, 121, or 365(c) of
applications filed prior to June 8, 1995 so long as the application that
is immediately prior to the continued prosecution application under
1.53(d) was filed on or after June 8, 1995.
Section 1.53(d)(1)(ii) specifies that the application under 1.53(d)
be filed before the earliest of: (1) payment of the issue fee on the
prior application, unless a petition under 1.313(b)(5) is granted in
the prior application; (2) abandonment of the prior application; or (3)
termination of proceedings on the prior application.
Section 1.53(d)(2) provides that the filing date of a continued
prosecution application is the date on which a request on a separate
paper for an application under 1.53(d) is filed. That is, a request
for an application under 1.53(d) cannot be submitted within papers
filed for another purpose (e.g., the filing of a "conditional" request
for a continued prosecution application within an amendment after final
for the prior application is an improper request for a continued
prosecution application under 1.53(d)).
In addition, a "conditional" request for a continued prosecution
application will not be permitted. Any "conditional" request for a
continued prosecution application submitted (as a separate paper) with
an amendment after final in an application will be treated as an
unconditional request for a continued prosecution application of such
application. This will result (by operation of 1.53(d)(2)(v)) in the
abandonment of such (prior) application, and (if so instructed in the
request for a continued prosecution application) the amendment after
final in the prior application will be treated as a preliminary
amendment in the continued prosecution application.
Section 1.53(d)(2) further provides that an application filed under
1.53(d): (1) must identify the prior application ( 1.53(d)(i)); (2)
discloses and claims only subject matter disclosed in the prior
application (i.e., is a continuation or divisional, but not a
continuation-in-part) ( 1.53(d)(1)(ii)); (3) names as inventors the
same inventors named in the prior application on the date the
application under 1.53(d) was filed, except as provided in
1.53(d)(4) ( 1.53(d)(2)(iii)); (4) includes the request for an
application under 1.53(d), will utilize the file jacket and contents
of the prior application, including the specification, drawings and oath
or declaration, from the prior application to constitute the new
application, and will be assigned the application number of the prior
application for identification purposes ( 1.53(d)(2)(iv)); and (5) is
a request to expressly abandon the prior application as of the filing
date of the request for an application under 1.53(d) (
1.53(d)(2)(v)).
Section 1.53(d)(3) provides that the filing fee for a continued
prosecution application filed under 1.53(d) is: (1) the basic filing
fee as set forth in 1.16; and (2) any additional 1.16 fee due
based on the number of claims remaining in the application after entry
of any amendment accompanying the request for an application under
1.53(d) and entry of any amendments under 1.116 not entered in the
prior application which applicant has requested to be entered in the
continued prosecution application. See 35 U.S.C. 41(a)(1)-(4).
Section 1.53(d)(4) provides that an application filed under 1.53(d)
may be filed by fewer than all the inventors named in the prior
application, provided that the request for an application under
1.53(d) when filed is accompanied by a statement requesting deletion of
the name or names of the person or persons who are not inventors of the
invention being claimed in the new application, and that no person may
be named as an inventor in an application filed under 1.53(d) who was
not named as an inventor in the prior application on the date the
application under 1.53(d) was filed, except by way of a petition
under 1.48. Thus, an application under 1.53(d) must name as
inventors either the same as ( 1.53(d)(2)(iii)) or fewer than all of (
1.53(d)(4)) the inventors named in the prior application. A request
for an application under 1.53(d) purporting to name as an inventor a
person not named as an inventor in the prior application (even if
accompanied by a new oath or declaration under 1.63 listing that
person as an inventor) will be treated as naming the same inventors
named in the prior application ( 1.53(d)(2)(iii)).
Section 1.53(d)(5) provides that: (1) any new change must be made in the
form of an amendment to the prior application; (2) no amendment in an
application under 1.53(d) (a continued prosecution application) may
introduce new matter or matter that would have been new matter in the
prior application; and (3) any new specification filed with the request
for an application under 1.53(d) will not be considered part of the
original application papers, but will be treated as a substitute
specification in accordance with 1.125. Pursuant to the provisions of
1.53(d)(5), where applicant desires entry of an amendment in the
application under 1.53(d) that was previously denied entry under
1.116 in the prior application, the applicant must request its entry
(and pay any additional claims fee required by 1.53(d)(3)(ii)) in the
application under 1.53(d) prior to action by the Office in the
application under 1.53(d). Any amendment submitted with the request
for an application under 1.53(d) that seeks to add matter that would
have been new matter in the prior application will be objected to under
1.53(d), and the applicant will be required to cancel the subject
matter that would have been new matter in the prior application.
Section 1.53(d)(6) provides that the filing of a continued prosecution
application under 1.53(d) will be construed to include a waiver of
confidentiality by the applicant under 35 U.S.C. 122 to the extent that
any member of the public who is entitled under the provisions of 1.14
to access to, copies of, or information concerning either the prior
application or any continuing application filed under the provisions of
this paragraph may be given similar access to, copies of, or similar
information concerning, the other application(s) in the application file.
Section 1.53(d)(7) provides that a request for an application under
1.53(d) is a specific reference under 35 U.S.C. 120 to every application
assigned the application number identified in such request, and that no
amendment in a continued prosecution application under 1.53(d) shall
delete this specific reference to any prior application. That is, other
than the identification of the prior application in the request required
by 1.53(d) for a continued prosecution application, a continued
prosecution application needs no further identification of or reference
to the prior application (or any prior application assigned the
application number of such application under 1.53(d)) under 35 U.S.C.
120 and 1.78(a)(2).
Section 1.53(d)(8) provides that in addition to identifying the
application number of the prior application, applicant is urged to
furnish in the request for an application under 1.53(d) the following
information relating to the prior application to the best of his or her
ability: (1) title of invention; (2) name of applicant(s); and (3)
correspondence address.
Section 1.53(d)(9) provides that: (1) envelopes containing only requests
and fees for filing an application under 1.53(d) should be marked
"Box CPA" and (2) requests for an application under 1.53(d) filed by
facsimile transmission should be clearly marked "Box CPA."
Section 1.53(e)(1) provides that if an application deposited under
1.53 paragraphs (b), (c), or (d) does not meet the respective
requirements in 1.53 paragraphs (b), (c), or (d) to be entitled to a
filing date, applicant will be so notified, if a correspondence address
has been provided, and given a time period within which to correct the
filing error.
Section 1.53(e)(2) provides that: (1) any request for review of a
notification pursuant to 1.53(e)(1), or a notification that the
original application papers lack a portion of the specification or
drawing(s), must be by way of a petition pursuant to 1.53(e); (2) any
petition under 1.53(e) must be accompanied by the fee set forth in
1.17(i) in an application filed under 1.53 paragraphs (b) or (d), and
the fee set forth in 1.17(q) in an application filed under
1.53(c); and (3) in the absence of a timely ( 1.181(f)) petition
pursuant to this paragraph, the filing date of an application in which
the applicant was notified of a filing error pursuant to paragraph
(e)(1) of this section will be the date the filing error is corrected.
Section 1.53(e)(3) provides that if an applicant is notified of a filing
error pursuant to 1.53(e)(1), but fails to correct the filing error
within the given time period or otherwise timely ( 1.181(f)) take
action pursuant to 1.53(e)(2), proceedings in the application will be
considered terminated, and that where proceedings in an application are
terminated pursuant to 1.53(e)(3), the application may be disposed
of, and any filing fees, less the handling fee set forth in 1.21(n),
will be refunded.
Section 1.53(f) is amended to include the language of former
1.53(d)(1) and to provide that the oath or declaration required for a
continuation or divisional application under 1.53(b) may be a copy of
the executed oath or declaration filed in the prior application (under
1.63(d)).
Section 1.53 paragraphs (g), (h), (i), and (j) are added and include the
language of former 1.53 paragraphs (d)(2), (e)(1), (e)(2), and (f),
respectively.
Comment 16: The majority of the comments supported the deletion of
1.60 and 1.62 in favor of the proposed amendment to 1.53.
Response: The Office is deleting 1.60 and 1.62 in favor of an
amended 1.53.
Comment 17: Several comments suggested that the Office adopt a continued
prosecution procedure for applications filed on or after June 8, 1995
similar to the practice set forth in 1.129(a), rather than the
continued prosecution application practice set forth in 1.53(d).
Response: Section 532(a)(2)(A) of Pub. L. 103-465 provides specific
authorization for the practice set forth in 1.129(a). There is
currently no statutory authority for the Office to simply charge the
patent fees set forth in 35 U.S.C. 41(a) for further examination of an
application. 35 U.S.C. 41(d) would authorize the Office to further
examine an application for a fee that recovers the estimated average
cost to the Office of such further examination; however, as 35 U.S.C.
41(h) is applicable only to fees under 35 U.S.C. 41(a) and (b), the
Office would not be authorized to provide a small entity reduction in
regard to such fee. Thus, the only mechanism by which the Office may
provide further examination for a fee to which the small entity
reduction is applicable is via a continuing application.
Section 209 of H.R. 3460, 104th Cong., 2d Sess. (1996), would have
provided statutory authority for the further reexamination of an
application for a fee to which the small entity reduction was
applicable. Section 209 of H.R. 400, 105th Cong., 1st Sess. (1997),
ifenacted, will provide statutory authority for the further
reexamination of an application for a fee to which the small entity
reduction will be applicable.
Comment 18: One comment stated that the combination of 1.53, 1.60,
and 1.62 into a single 1.53 was complex and confusing. Another
comment suggested that 1.53 be split into a number of sections, or
that headings be used in 1.53 in the manner that headings are used in
1.84 and 1.96.
Response: Placing the provisions of 1.53 into multiple sections,
rather than multiple paragraphs of a single section, would not result in
a simplification of its provisions. The Office considers it appropriate
to place the filing provisions concerning all applications
(nonprovisional, provisional, and continued prosecution) into a single
section to reduce the confusion as to the filing requirements for any
application for patent. Section 1.53 as adopted includes headings in
each paragraph of 1.53 to indicate the subject to which each of these
paragraphs pertains.
Comment 19: One comment suggested amending 1.53 to require applicants
to indicate changes to the disclosure in a continuation or divisional
application.
Response: The suggestion is not adopted. The Office did not propose to
amend 1.53 to require applicants to indicate changes to the
disclosure in any continuing application. Thus, adopting a change to
impose this additional burden on an applicant is not considered
appropriate in this Final Rule.
Comment 20: One comment suggested that the Office permit applicants to
file a statement requesting deletion of an inventor in a continuation or
divisional application any time prior to or coincident with the mailing
of an issue fee payment. The comment questioned whether the time period
in 1.53(e)(1) addresses this issue.
Response: Unless a statement requesting the deletion of the names of the
person or persons who are not inventors in the continuation or
divisional application accompanies the copy of the executed oath or
declaration submitted in accordance with 1.63(d) in an application
filed pursuant to 1.53(b), or accompanies the request for an
application under 1.53(d) in an application filed pursuant to
1.53(d), the inventorship of the continuation or divisional application
filed under 1.53(b) using a copy of the oath or declaration of the
prior application pursuant to 1.63(d) or filed under 1.53(d) will
be considered identical to that in the prior application, and correction
of the inventorship (if appropriate) must be by way of 1.48.
Identification of the inventorship is necessary to the examination of an
application (e.g., 35 U.S.C. 102(f) and (g)). As such, the Office must
require identification of the inventorship prior to examination of an
application.
Section 1.53(e)(1) applies in those instances in which papers filed as
an application under 1.53(b), (c), or (d) do not meet the respective
requirements of 1.53(b), (c), or (d) to be entitled to a filing date.
Submitting an oath or declaration is not a filing date issue, and naming
the inventors is no longer a filing date issue. Thus, the provisions of
1.53(e) do not apply to the filing of a statement requesting deletion
of an inventor in a continuation or divisional application.
Comment 21: One comment questioned whether 1.53(d) applies only to
applications filed on or after June 8, 1995, and questioned whether
1.53(d) should be made applicable to pending applications filed prior to
June 8, 1995. The comment also questioned the relationship between
1.129(a) and 1.53(d).
Response: Section 1.53(d), by its terms, permits the filing of a
continuation or divisional thereunder of only a nonprovisional
application that, inter alia, is either: (1) complete as defined by
1.51(b) and filed on or after June 8, 1995 or; (2) resulted from entry
into the national stage of an international application in compliance
with 35 U.S.C. 371 filed on or after June 8, 1995. While 1.53(d) and
1.129(a) both provide for the continued prosecution of an application,
these sections are distinct in that they apply to a virtually mutually
exclusive class of applications and have separate requirements (e.g., a
request for a 1.53(d) application may be filed subsequent to the
filing of an appeal brief, so long as the request is filed before the
earliest of: (1) payment of the issue fee on the prior application,
unless a petition under 1.313(b)(5) is granted in the prior
application; (2) abandonment of the prior application; or (3)
termination of proceedings on the prior application).
Comment 22: One comment suggested that the rules of practice permit the
execution of copies of an oath or declaration by fewer than all of the
inventors, without cross-reference to the other copies to facilitate
contemporaneous executions by geographically separated inventors.
Response: The suggestion is not adopted. Section 1.63(a)(3) requires
that an oath (or declaration), inter alia, identify each inventor. The
rules of practice permit inventors to execute separate oaths (or
declarations), so long as each oath (or declaration) sets forth all of
the inventors (the necessary cross-reference). That is, 1.63(a)(3)
prohibits the execution of separate oaths (or declarations) in which
each oath (or declaration) sets forth only the name of the executing
inventor. An amendment to the rules of practice to permit an inventor to
execute an oath or declaration that does not set forth each inventor
would not only lead to confusion as to the inventorship of an
application, but would be inconsistent with the requirement in 35 U.S.C.
115 that the applicant make an oath (or declaration) that the applicant
believes himself (or herself) to be the original and first inventor of
the subject matter for which a patent is sought, as the oaths or
declarations would conflict as to the inventorship of the application.
Comment 23: Several comments suggested that the statement required under
35 U.S.C. 120 in a continued prosecution application will be confusing
as the continued prosecution application will have the same application
number as the prior application. One comment indicated that this will
cause confusion: (1) as to which application is being referenced in a 35
U.S.C. 120 statement in the divisional application when a divisional
application under 1.53(b) and a continued prosecution application
filed under 1.53(d) are filed from the same prior application; and
(2) in docketing applications as most commercially available software
identify applications by application number. Another comment questioned
what sentence was required pursuant to 1.78(a)(2) in a continued
prosecution application.
Response: 35 U.S.C. 120 provides that an application may obtain the
benefit of the filing date of an earlier filed application if, inter
alia, the application "contains or is amended to contain a specific
reference to the earlier filed application." Section 1.78(a) requires
that this specific reference be in the first sentence of the
specification and identify each earlier filed application by application
number or international application number and international filing date
and relationship of the applications. Thus, while a "specific reference
to the earlier filed application" is a requirement of statute (35 U.S.C.
120), the particulars of this specific reference (by application number,
filing date, and relationship) is a requirement of regulation (
1.78(a)), not the patent statute.
The purpose of the "specific reference" requirement of 35 U.S.C. 120 is
to provide notice to the public of the filing date upon which a patentee
may rely to support the validity of the patent:
[35 U.S.C. 120] embodies an important public policy. The information
required to be disclosed is information that would enable a person
searching the records of the Patent Office to determine with a minimum
of effort the exact filing date upon which a patent applicant is relying
to support the validity of his application or the validity of a patent
issued on the basis of one of a series of applications. In cases such as
this, in which two or more applications have been filed and the validity
of a patent rests upon the filing date of an application other than that
upon which the patent was issued, a person, even if he had conducted a
search of the Patent Office records, could unwittingly subject himself
to exactly this type of infringement suit unless the later application
adequately put him on notice that the applicant was relying upon a
filing date different from that stated in the later application.
Sampson v. Ampex Corp., 463 F.2d 1042, 1045, 174 USPQ 417, 419 (2d Cir.
1972); see also Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d
90, 93, 160 USPQ 177, 179(7th Cir. 1968) ("Congress may well have
thought that [35 U.S.C.] 120 was necessary to eliminate the burden on
the public to engage in long and expensive search of previous
applications in order to determine the filing date of a later patent . .
. . The inventor is the person best suited to understand the relation of
his applications, and it is no hardship to require him to disclose this
information").
To reduce the delay in processing a continued prosecution application,
the Office will maintain in its records (e.g., in the Patent Application
Locating and Monitoring (PALM) records for an application) for
identification purposes the application number and filing date of the
prior application. Thus, in a continued prosecution application, the
application number of the continued prosecution application will be the
application number of the prior application, and the filing date
indicated on any patent issuing from a continued prosecution application
will be the filing date of the prior application (or, in a chain of
continued prosecution applications, the filing date of the application
immediately preceding the first continued prosecution application in the
chain). In addition, as a continued prosecution application will use the
file wrapper of the prior application, the prior application will be
available upon inspection of the continued prosecution application.
Unless excepted from 1.78(a)(2), the first sentence of a continued
prosecution application would consist of a reference to that application
as a continuation or divisional of an application having the identical
application number and the effective filing date of (the filing date to
be printed on any patent issuing from) the continued prosecution
application. Such a sentence would provide no useful information to the
public.
Therefore, 1.53(d)(7) as adopted provides that a request for an
application under 1.53(d) is a specific reference under 35 U.S.C. 120
to every application assigned the application number identified in such
request, and 1.78(a)(2) as adopted provides that the request for a
continued prosecution application under 1.53(d) is the specific
reference under 35 U.S.C. 120 to the prior application. That is, the
continued prosecution application includes the request for an
application under 1.53(d) ( 1.53(d)(2)(iv)), and the recitation of
the application number of the prior application in such request (as
required by 1.53(d)) is the "specific reference to the earlier filed
application" required by 35 U.S.C. 120. No further amendment to the
specification is required by 35 U.S.C. 120 or 1.78(a) for a continued
prosecution application for such continued prosecution application to
contain the required specific reference to the prior application, as
well as any other application assigned the application number of the
prior application (e.g., in instances in which a continued prosecution
application is the last in a chain of continued prosecution
applications).
Where an application claims a benefit under 35 U.S.C. 120 of a chain of
applications, the application must make a reference to the first
(earliest) application and every intermediate application. See Sampson,
463 F.2d at 1044-45, 174 USPQ at 418-19; Sticker Indus. Supply Corp.,
405 F.2d at 93, 160 USPQ at 179; Hovlid v. Asari, 305 F.2d 747, 751, 134
USPQ162, 165 (9th Cir. 1962); see also MPEP 201.11. In addition, every
intermediate application must also make a reference to the first
(earliest) application and every application after the first application
and before such intermediate application.
In the situation in which there is a chain of continued prosecution
applications, each continued prosecution application in the chain will,
by operation of 1.53(d)(7), contain the required specific reference
to its immediate prior application, as well as every other application
assigned the application number identified in such request. Put simply,
a specific reference to a continued prosecution application by
application number and filing date will constitute a specific reference
to: (1) the non-continued prosecution application originally assigned
such application number (the prior application as to the first continued
prosecution application in the chain); and (2) every continued
prosecution application assigned the application number of such
non-continued prosecution application.
Where the non-continued prosecution application originally assigned such
application number itself claims the benefit of a prior application or
applications under 35 U.S.C. 120, 121, or 365(c), 1.78(a)(2)
continues to require that such application contain in its first sentence
a reference to any such prior application(s). As a continued prosecution
application uses the specification of the prior application, such a
specific reference in the prior application (as to the continued
prosecution application) will constitute such a specific reference in
the continued prosecution application, as well as every continued
prosecution application in the event that there is a chain of continued
prosecution applications.
Where an applicant in an application filed under 1.53(b) seeks to
claim the benefit of an application filed under 1.53(d) under 35
U.S.C. 120 or 121 (as a continuation, divisional, or
continuation-in-part), 1.78(a)(2) requires a reference to the
continued prosecution application by application number in the first
sentence of such application. Section 1.78(a)(2) has been amended to
also provide that "[t]he identification of an application by application
number under this section is the specific reference required by 35
U.S.C. 120 to every application assigned that application number." Thus,
where a referenced continued prosecution application is in a chain of
continued prosecution applications, this reference will constitute a
reference under 35 U.S.C. 120 and 1.78(a)(2) to every continued
prosecution application in the chain as well as the non-continued
prosecution application originally assigned such application number.
Therefore, regardless of whether an application is filed under
1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a
continued prosecution application is, by operation of 1.53(d)(7) and
1.78(a)(2), a claim to every application assigned the application
number of such continued prosecution application. In addition,
applicants will not be permitted to choose to delete such a claim as to
certain applications assigned that application number (e.g., for patent
term purposes).
Finally, while it is recognized that using a common application number
(and file wrapper) for a continued prosecution application and its prior
application (which may also be a continued prosecution application) will
necessitate docketing modifications (as well as the Office's PALM
system), the burden of such modifications is outweighed by the benefits
that will result from the elimination of the initial processing of such
applications.
Comment 24: One comment suggested that the phrase "now refiled" be used
in lieu of "now abandoned" to reflect the status of the prior
application.
Response: Under 35 U.S.C. 120, the status of an application is one of
three conditions: (1) pending; (2) patented; or (3) abandoned. See In re
Morganroth, 6 USPQ2d 1802, 1803 (Comm'r Pat. 1988). As the filing of a
continued prosecution application under 1.53(d) operates to expressly
abandon the prior application under 1.53(d)(2)(v), the status of the
prior application is appropriately designated as "abandoned."
Comment 25: Several comments suggested that the proposed continued
prosecution application practice be made applicable in instances in
which the prior application was filed prior to June 8, 1995, to expedite
the prosecution of such applications.
Response: Permitting the continued prosecution application practice to
be applicable in instances in which the prior application was filed
prior to June 8, 1995, would result in confusion as to whether the
patent issuing from the continued prosecution application is entitled to
the provisions of 35 U.S.C. 154(c). As the continued prosecution
application practice was not in effect prior to June 8, 1995, no patent
issuing from a continued prosecution application is entitled to the
provisions of 35 U.S.C. 154(c).
As discussed supra, the application number of a continued prosecution
application will be the application number of the prior application, and
the filing date indicated on any patent issuing from a continued
prosecution application will be the filing date of the prior application
(or, in a chain of continued prosecution applications, the filing date
of the application immediately preceding the first continued prosecution
application in the chain). Thus, any patent issuing from a continued
prosecution application, where the prior application was filed prior to
June 8, 1995, will indicate that the filing date of the application for
that patent was prior to June 8, 1995, which will confuse the public
(and possible the patentee) into believing that such patent is entitled
to the provisions of 35 U.S.C. 154(c).
The Office has implemented 532(a)(2)(A) of Pub. L. 103-465 in
1.129(a) to conclude the examination of applications pending 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). Further examination of any application may be
obtained via the filing of a continuing application under 1.53(b).
Requiring applications filed prior to June 8, 1995, that are not
eligible for the transitional procedure set forth in 1.129(a) to
obtain further examination via the filing of a continuing application
under 1.53(b) is a reasonable requirement to avoid confusion as to
whether a patent issuing from a continued prosecution ( 1.53(d))
application is entitled to the provisions of 35 U.S.C. 154(c).
Comment 26: One comment suggested that the phrase "most immediate prior
national application" rather than "prior application" was confusing. The
comment further stated that if the prior application was one filed under
1.62, there is no copy in that complete application of the (oath or)
declaration filed in the application under 1.62.
Response: The phrase "most immediate prior national application for
which priority is claimed under 35 U.S.C. 120, 121 or 365(c)" is changed
to "prior application." An application under 1.53(d), 1.60, or 1.62
must ultimately be a continuing application of an application filed
under 1.53(b). Where the prior application is an application under
1.60, the oath or declaration is the copy of the oath or declaration
from the prior application vis-ašsm©-vis the application under 1.60
submitted in accordance with 1.60(b)(2). Where the prior application
is an application under 1.62 or 1.53(d), the oath or declaration is
the oath or declaration from the prior application vis-ašsm©-vis the
application under 1.62 or 1.53(d). Where there is a chain of
applications under 1.62 or 1.53(d) preceding the prior application
to an application under 1.53(d), the oath or declaration of the prior
application will be the oath or declaration of the application under
1.53 or 1.60 immediately preceding the chain of applications under
1.62 or 1.53(d), as each application in the chain of applications under
1.62 or 1.53(d) utilizes the oath or declaration of the prior
application.
Comment 27: One comment suggested that applications filed under
1.53(d) should be taken up as amended applications, rather than as newly
filed applications.
Response: The comment implies that taking up a continued prosecution
application as an amended application may result in the examiner acting
on the application in a more timely manner than if the application were
accounted for as a new application. The matter is under consideration
along with other administrative issues, and a decision shall be made in
due course.
Comment 28: One comment suggested that 1.129(a) be amended so as not
to be limited to applications under final rejection, such that an
applicant in an application in which a notice of allowance under
1.311 has been mailed may obtain entry of an information disclosure
statement without regard to the requirements of 1.97(d).
Response: The Notice of Proposed Rulemaking did not propose to amend
1.129(a). While the language of 532(a)(2)(A) of Pub. L. 103-465 does
not expressly exclude the further examination of an application that has
been allowed (as opposed to an application under a final rejection),
102(d) of Pub. L. 103-465 provides that "[t]he statement of
administrative action approved by the Congress under section 101(a)
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 statement of
administrative action specifies that such further examination is to
facilitate the completion of prosecution of applications pending before
the Office, and to permit applicants to present a submission after the
Office has issued a final rejection on an application. See H.R. Rep.
826(i), 103rd Cong., 2nd Sess. 1005-06, reprinted in 1984 U.S.C.C.A.N.
3773, 4298.
Upon mailing of a notice of allowance under 1.311, prosecution of an
application before the Office is concluded. The proposed amendment to
obtain further examination pursuant to 1.129(a) after allowance would
nullify (rather than facilitate) the completion of prosecution of the
above-identified application, and, as such, would be inconsistent with
the purpose for the provisions of 532(a)(2)(A) of Pub. L. 103-465.
Comment 29: One comment questioned how the filing of a continued
prosecution application would result in less delay than the filing of a
continuing application under 1.53(b), as a continued prosecution
application would be subject to pre-examination processing delays.
Response: The Office will not issue a new filing receipt for a continued
prosecution application under 1.53(d). See 1.54(b). By not issuing
a filing receipt for a continued prosecution application, the Office
will be able to perform the pre-examination of any continued prosecution
application in the examining group to which the prior application was
assigned. Likewise, 1.6(d) has been amended to permit an applicant to
file a continued prosecution application under 1.53(d) by facsimile,
and the use of this means of filing a continued prosecution application
will avoid the delay inherent in routing an application (or any paper)
from the mailroom to the appropriate examining group. These provisions
will enable the Office to process a continued prosecution application in
the manner that a submission under 1.129(a) is processed.
Comment 30: One comment questioned whether the filing date of a
continued prosecution application is the filing date for determining
patent term, or is significant only in establishing copendency. Another
comment questioned what filing date was relevant for determining patent
term.
Response: Notwithstanding that a continued prosecution application is
assigned the application number of the prior application, the filing
date of the continued prosecution application is the date on which the
request for such continued prosecution application was filed (
1.53(d)). While the filing date of the continued prosecution application
is relevant to establishing the copendency required by 35 U.S.C. 120 and
1.78(a) between the continuedprosecution application and the prior
application, the filing date of a continued prosecution application will
never be relevant to the term under 35 U.S.C. 154(b) of any patent
issuing from the continued prosecution application.
Any continued prosecution application under 1.53(d) will be filed on
or after June 8, 1995, and will claim the benefit of an earlier
application as a continuation or divisional application. Section
1.53(d)(7) specifically provides that:
A request for an application under this paragraph is the specific
reference required by 35 U.S.C. 120 to every application assigned the
application number identified in such request. No amendment in an
application under this paragraph shall delete this specific reference to
any prior application.
Thus, an application under 1.53(d) cannot be amended to delete the
specific reference to the prior application, as well as the specific
reference to any application to which the prior application contains a
specific reference under 35 U.S.C. 120, 121, and 365(c). As an
application under 1.53(d) will also contain a specific reference to
at least one other application under 35 U.S.C. 120, 121, and 365(c), the
expiration date under 35 U.S.C. 154(b)(2) of any patent issuing from the
application under 1.53(d) will be based upon the filing date of the
prior application (or the earliest application to which the prior
application contains a specific reference under 35 U.S.C. 120, 121, and
365(c)).
Comment 31: One comment argued that the Office should address not only
the filing requirements for continuing applications, but also the cause
of the filing of continuing applications. The comment specifically
argued that the current second action final practice should be
reevaluated as an applicant no longer has an incentive to delay the
prosecution of an application due to Pub. L. 103-465.
Response: The suggestion is being taken under advisement as part of a
comprehensive effort by the Office to reengineer the entire patent
process. However, it should be noted that any changes to the current
second action final practice to provide additional examination of an
application prior to a final Office action would necessitate a
corresponding increase in patent fees.
Comment 32: One comment suggested that the Office simply eliminate the
"true copy" requirement of 1.60, rather than add new provisions
permitting the use of a copy of the oath or declaration of a prior
application. The comment also suggested that the Office simply amend
1.62 to eliminate the requirement that the Office assign a new
application number to the application, rather than add a new 1.53(d).
Response: The amendments to 1.53 do not simply make minor changes to
1.60 and 1.62. Sections 1.60 and 1.62 are anachronisms that have
outlived their usefulness. A significant number of applications filed
under 1.60 do not meet the requirements of 1.60 (and, as such are
improper), but would be proper under 1.53 (in the absence of a
reference to 1.60). The elimination of 1.60 will result in a
reduction in the Office's burden in treating and the applicant's burden
in correcting these improper applications under 1.60, as such
applications would generally have been proper applications if filed
under 1.53 (without a reference to 1.60). Section 1.63(d) retains
most of the benefits of 1.60, but eliminatesthe filing "traps" of
1.60.
Section 1.62 practice also causes problems concerning its prohibition
against including a new or substitute specification, and its permitting
the filing of a continuation-in-part. To avoid continued prosecution
application practice under 1.53(d) being confused with the former
file-wrapper-continuation practice under 1.62, the Office has deemed
it advisable to use a new 1.53(d) rather than 1.62 in regard to
continued prosecution application practice.
Comment 33: One comment stated that the Office should anticipate the
filing of applications containing a reference to 1.60 or 1.62 for
some period.
Response: That applications containing a reference to 1.60 or 1.62
will continue to be filed has been anticipated. The treatment of such
applications is discussed infra with respect to the elimination of
1.60 and 1.62.
Comment 34: One comment stated that the safeguard in 1.60 concerning
the filing of an application lacking all of the pages of specification
or sheets of drawings of the prior application has not been retained in
1.53(b). The comment suggested that 1.53 contain a presumption that
a continuation or divisional be presumed, absent evidence to the
contrary, to be the filing of an application identical to the prior
application.
Response: The Court of Customs and Patent Appeals (CCPA) has held that a
mere reference to another application, patent, or publication is not an
incorporation of anything therein into the application containing such
reference. See In re de Seversky, 474 F.2d 671, 177 USPQ144 (CCPA 1973);
see also Dart Industries v. Banner, 636 F.2d 684, 207 USPQ 273
(CCPA1980) (related decision). These decisions relied upon In re Lund,
376 F.2d 982, 153 USPQ625 (CCPA 1967), which considered the
incorporation by reference issue in the context of whether a prior art
patent adequately incorporated by reference a prior application. The
court, in Lund, specifically stated:
There is little in the term "continuation-in-part" which would suggest
to the reader of the patent that a disclosure of the nature of Example 2
is present in the earlier application and should be considered a part of
the patent specification. Thus, we cannot agree that the subject matter
of claim 3 is tacitly "described" in the Margerison patent within the
meaning of 102(e).
Id. at 989, 153 USPQ 631-32 (footnote discussing the definition of
"continuation-in-part" as set forth in MPEP 201.08 omitted). While the
holdings in Dart Industries, de Seversky and Lund appear to be based
upon the definitions of the various categories of continuing
applications set forth in the MPEP (and thus could be changed by a
revision to the MPEP), the Office is not at this time inclined to
disturb settled law in this area.
Nevertheless, an applicant may incorporate by reference the prior
application by including, in the continuing application-as-filed, a
statement that such specifically enumerated prior application or
applications are "hereby incorporated herein by reference." The
inclusion of this incorporation by reference of the prior application(s)
will permit an applicant to amend the continuing application to include
any subject matter in such prior application(s), without the need for a
petition.
Section 1.54: Section 1.54(b) is amended to add the phrase "unless the
application is an application filed under 1.53(d)." To minimize
application processing delays in applications filed under 1.53(d),
such applications will not be processed by the Office of Initial Patent
Examination as new applications.
No comments were received regarding the proposed change to 1.54.
Section 1.55: Section 1.55(a) is amended to remove the requirement that
the statement be verified in accordance with the change to
1.4(d)(2) and 10.18.
No comments were received regarding the proposed change to 1.55.
Section 1.59: Section 1.59 is amended: (1) by revising the title to
indicate that expungement of information from an application file would
come under this section; (2) by revising the existing paragraph and
designating it as paragraph (a)(1); and (3) by adding paragraphs
(a)(2),(b) and (c). Section 1.59(a)(1) retains the general prohibition
on the return of information submitted in an application, but no longer
limits that prohibition to an application that has been accorded a
filing date under 1.53. The portion of the paragraph relating to the
Office furnishing copies of application papers has been shifted to new
paragraph (c). Section 1.59(a)(2) makes explicit that information,
forming part of the original disclosure (i.e., written specification
including the claims, drawings, and any preliminary amendment
specifically incorporated into an executed oath or declaration under
1.63 and 1.175) will not be expunged from the application file.
Section 1.59(b) provides an exception to the general prohibition of
paragraph (a) on the expungement and return of information and would
allow for such when it is established to the satisfaction of the
Commissioner that the requested expungement and return is appropriate.
Section 1.59(b) covers the current practice set forth in MPEP 724.05
where information is submitted as part of an information disclosure
statement and the submitted information has initially been identified as
trade secret, proprietary, and/or subject to a protective order and
where applicant may file a petition for its expungement and return that
will be granted upon a determination by the examiner that the
information is not material to patentability. Any such petition should
be submitted in reply to an Office action closing prosecution so that
the examiner can make a determination of materiality based on a closed
record. Any petition submitted earlier than close of prosecution may be
dismissed as premature or returned unacted upon. In the event pending
legislation for pre-grant publication of applications, which provides
public access to the application file, is enacted, then the timing of
petition submissions under this section will be reconsidered.
Petitions to expunge were formerly considered under 1.182, with the
Office of Petitions consulting with the examiner on the materiality of
the information at issue prior to rendering a decision. A possible
result of the amendment to 1.59 would be to have petitions under
1.59 to expunge simply decided by the examiner who determines the
materiality of the information.
Comment 35: One comment suggested that petitions to expunge under
1.59 should be decided by Group Directors or officials in the Office of
Petitions, rather than by examiners. The comment argued that any
individual examiner would decide such a petition so rarely that it would
be difficult to produce uniform and consistent decisions.
Response: The preamble has been amended to reflect that a possible
result of the rule change is to have petitions under 1.59 decided by
the examiners. The heart of most petitions to expunge is a determination
as to whether the material sought to be expunged is material to
examination, a matter that is now referred to examiners prior to a
decision on the petition. Given the major role examiners now play in
expungement matters, it is not clear why examiners would be rendering
inconsistent decisions, particularly as so many other matters are
routinely assigned to examiners including petitions under 1.48.
Nevertheless, the comment is not germane to 1.59 as proposed (or
adopted), but concerns the internal Office delegation of such petitions
for consideration. Moreover, a petition to expunge a part of the
original disclosure would have to be filed under 1.183 and would
continue to be decided in the Office of Petitions.
Comment 36: A comment in requesting some examples of things that may be
expunged asked whether a design code listing as an appendix in an
application may be expunged.
Response: The standard set forth in paragraph (b) of 1.59 permits
information other than what is enumerated in paragraph (a) of the
section to be expunged if it is established to the satisfaction of the
Commissioner that the return of the information is appropriate. The
types of information and rationales why the information may be returned
are varied and will be evaluated on a case-by-case basis with the basic
inquiry being whether the information is material to examination of the
application. However, to the extent that an appendix to a specification
of an application is considered part of the original disclosure it
cannot be expunged from the file under 1.59(a)(2).
Section 1.59(b) also covers information that was unintentionally
submitted in an application, provided that: (1) the Office can effect
such return prior to the issuance of any patent on the application in
issue; (2) it is stated that the information submitted was
unintentionally submitted and the failure to obtain its return would
cause irreparable harm to the party who submitted the information or to
the party in interest on whose behalf the information was submitted; (3)
the information has not otherwise been made public; (4) there is a
commitment on the part of the petitioner to retain such information for
the period of any patent with regard to which such information is
submitted; and (5) it is established to the satisfaction of the
Commissioner that the information to be returned is not material
information under 1.56. A request to return information that has not
been clearly identified as information that may be later subject to such
a request by marking and placement in a separate sealed envelope or
container shall be treated on a case-by-case basis. It should be noted
that the Office intends to start electronic scanning of all papers filed
in an application, and the practicality of expungement from the
electronic file created by a scanning procedure is not as yet
determinable. Applicants should also note that unidentified information
that is a trade secret, proprietary, or subject to a protective order
that is submitted in an Information Disclosure Statement may
inadvertently be placed in an Office prior art search file by the
examiner due to the lack of such identification and may not be
retrievable.
Section 1.59(b) also covers the situation where an unintended heading
has been placed on papers so that they are present in an incorrect
application file. In such a situation, a petition should request return
of the papers rather than transfer of the papers to the correct
application file. The grant of such a petition will be governed by the
factors enumerated above in regard to the unintentional submission of
information. Where the Office can determine the correct application file
that the papers were actually intended for, based on identifying
information in the heading of the papers (e.g., Application number,
filing date, title of invention and inventor(s) name(s)), the Office
will transfer the papers to the correct application file for which they
were intended without the need of a petition.
Section 1.59(c) retains the practice that copies of application papers
will be furnished by the Office upon request and payment of the cost for
supplying such copies.
Section 1.60: Section 1.60 is removed and reserved.
Section 1.60 is now unnecessary due to the amendment to 1.63(d) to
expressly permit the filing in a continuation or divisional application
using a copy of the oath or declaration filed in the prior application,
and to provide ( 1.63(d)(2)) for the filing of a continuation or
divisional application by all or by fewer than all the inventors named
in a prior application.
See comments relating to 1.53.
Section 1.62: Section 1.62 is removed and reserved.
Section 1.62 is unnecessary due to the addition of 1.53(d) to permit
the filing of a continued prosecution application.
It is anticipated that applications purporting to be applications filed
under 1.60 or 1.62 will be filed until the deletion of 1.60
and 1.62 become well known among patent practitioners. An application
purporting to be an application filed under 1.60 will simply be
treated as a new application filed under 1.53 (i.e., the reference to
1.60 will simply be ignored).
Applications purporting to be an application filed under 1.62 will be
treated as continued prosecution applications under 1.53(d), and
those applications that do not meet the requirements of 1.53(d)
(e.g., continuation-in-part applications or continuations or divisional
of applications filed before June 8, 1995) will be treated as improper
continued prosecution applications under 1.53(d). Such an improper
application under 1.53(d) may be accepted and treated as a proper
application under 1.53(b) by way of petition under 1.53(e) (and
submission of the $130 fee pursuant to 1.17(i)).
A petition under 1.53(e) to accept and treat an improper application
under 1.53(d) as a proper application under 1.53(b) must include:
(1) the $130 petition fee; (2) a true copy of the complete application
designated as the prior application in the purported 1.62 application
papers; (3) any amendments entered in the prior application; and (4) any
amendments submitted but not entered in the prior application and
directed to be entered in the purported 1.62 application papers. In
an application purporting to be a continuation or divisional application
under 1.62, the true copy of the prior application will constitute
the original disclosure of the application under 1.53(b), and any
amendments entered in the prior application or not entered in the prior
application but directed to be entered in the purported 1.62
application papers and submitted with the 1.53(e) petition will be
entered in the application under 1.53(b) and considered by the
examiner for new matter under 35 U.S.C. 112, 1, and 132. In an
application purporting to be a continuation-in-part application under
1.62, the true copy of the prior application, any amendments entered in
the prior application or not entered in the prior application but
directed to be entered in the purported 1.62 application papers and
submitted with the 1.53(e) petition, and any preliminary amendment
submitted with the purported 1.62 application will constitute the
original disclosure of the application under 1.53(b).
See comments relating to 1.53.
Section 1.63: Section 1.63(a)(3) is amended to require the post office
address to appear in the oath or declaration and to have the requirement
from 1.41(a) for the full names of the inventors placed therein.
Comment 37: Two comments raised the issue regarding the continued
requirement that both a post office address and a residence be supplied
and indicated that the residence is not required by statute, the post
office address is sufficient for communication purposes, and that the
burden of submitting both far outweighs the infrequent need to contact
any particular inventor by passing counsel so that the residence alone
should be sufficient.
Response: Under the proposed comment the applicants would still be
required to submit either the residence or post office address. To
request that they also supply the other or state that both are the same
is not seen to be a significant burden as the information is to be
supplied on the oath or declaration form that they must sign anyway and
spaces can be provided to ensure that the information is supplied. While
neither the residence nor the post office address are statutory
requirements, the Office requires this information for the applicant's
benefit. As more than one person may have the same name, a person's name
is often not sufficient to provide a unique identification of the
inventor. Thus, the Office also requires an inventor's residence (which
is not required to be sufficiently detailed to suffice as a post office
address) to specifically identify the person(s) named in the oath or
declaration as the inventor(s), which is a common practice for legal
documents. The post office address is also required in the event that
the Office finds it necessary to directly contact the inventor(s). It is
not uncommon for an inventor to revoke a power of attorney or
authorization of agent in a paper providing no address for future
correspondence from the Office. Also, the Office will need to directly
contact the inventor if the Office is notified of the death of a sole
attorney or agent of record (MPEP 406).
Section 1.63(d) is amended to: (1) relocate its current language in a
new 1.63(e); and (2) provide that a newly executed oath or
declaration is not required under 1.51(b)(2) and 1.53(f) in a
continuation or divisional application filed by all or by fewer than all
of the inventors named in a prior nonprovisional application containing
an oath or declaration as prescribed by 1.63, provided that a copy of
the executed oath or declaration filed in the prior application is
submitted for the continuation or divisional application and the
specification and drawings filed in the continuation or divisional
application contain no matter that would have been new matter in the
prior application. The copy of the oath or declaration must show the
signature of the inventor(s) or contain an indication thereon that the
oath or declaration was signed (e.g., the notation "/s/" on the line
provided for the signature).
A continuation or divisional application may be filed under 35 U.S.C.
111(a) using the procedures set forth in 1.53(b), by providing
either: (1) a copy of the prior application, including a copy of the
oath or declaration in such prior application, as filed; or (2) a new
specification and drawings and a copy of the oath or declaration as
filed in the prior application so long as no matter is included in the
new specification and drawings that would have been new matter in the
prior application. The specification and drawings of a continuation or
divisional application is not limited to a reproduction or "true copy"
of the prior application, but may be revised for clarity or contextual
purposes vis-a-vis the prior application in the manner that an
applicant may file a substitute specification ( 1.125) or amend the
drawings of an application so long as it does not result in the
introduction of new matter. Of course, 35 U.S.C. 115 requires that a
supplemental oath or declaration meeting the requirements of 1.63 be
filed in the continuation or divisional application, if a claim is
allowed in the continuation or divisional application which is drawn to
subject matter originally shown or described in the prior application
but not substantially embraced in the statement of the invention or
claims originally presented in the prior application as filed. See
1.67(b).
The patent statute and rules of practice do not require that an oath or
declaration include a date of execution, and the Examining Corps has
been directed not to object to an oath or declaration as lacking either
a recent date of execution or any date of execution. The applicant's
duty of candor and good faith including compliance with the duty of
disclosure requirements of 1.56 is continuous and applies to the
continuing application.
A new application containing a copy of an oath or declaration under
1.63 referring to an attached specification is indistinguishable from a
continuation or divisional application containing a copy of an oath or
declaration from a prior application submitted pursuant to 1.63(d).
Unless an application is submitted with a statement that the application
is a continuation or divisional application ( 1.78(a)(2)), the Office
will process such application as a new non-continuing application.
Applicants are advised to clearly designate any continuation or
divisional application as such to avoid the issuance of a filing receipt
that does not indicate that the application is a continuation or
divisional.
To continue the practice in 1.60(b)(4) of permitting the filing of a
continuation or divisional application by all or by fewer than all of
the inventors named in a prior application without a newly executed oath
or declaration, new 1.63(d)(2) provides that the copy of the oath or
declaration submitted for a continuation or divisional application under
1.63(d) must be accompanied by a statement from applicant, counsel
for applicant or other authorized party requesting the deletion of the
names of the person or persons who are not inventors in the continuation
or divisional application. Where the continuation or divisional
application and copy of the oath or declaration from the prior
application is filed without a statement from an authorized party
requesting deletion of the names of any person or persons named in the
prior application, the continuation or divisional application will be
treated as naming as inventors the person or persons named in the copy
of the executed oath or declaration from the prior application.
Accordingly, if a petition under 1.48(a) or (c) was granted in the
prior application, an oath or declaration filed in a continuation or
divisional application pursuant to 1.63(d) should be the oath or
declaration also executed by the added inventor(s). For situations where
an inventor or inventors are to be added in a continuation or divisional
application, see 1.63(d)(5).
The statement requesting the deletion of the names of the person or
persons who are not inventors in the continuation or divisional
application must be signed by person(s) authorized pursuant to
1.33(b) to sign an amendment in the continuation or divisional
application.
Section 1.63(d)(3) provides for the situation in which the executed oath
or declaration of which a copy is submitted for a continuation or
divisional application was originally filed in a prior application
accorded status under 1.47. Section 1.63(d)(3)(i) requires a copy of
any decision granting a petition to accord 1.47 status to such
application, unless each nonsigning inventor(s) or legal representative
(pursuant to 1.42 or 1.43) has filed an oath or declaration to join
in an application of which the continuation or divisional application
claims a benefit under 35 U.S.C. 120, 121 or 365(c). Where a nonsigning
inventor or legal representative (pursuant to 1.42 or 1.43)
subsequently joins in any application of which the continuation or
divisional application claims a benefit under 35 U.S.C. 120, 121 or
365(c), 1.63(d)(3)(ii) also requires a copy of any oath or
declaration filed by an inventor or legal representative to subsequently
join in such application.
Section 1.63(d)(4) provides that where the power of attorney (or
authorization of agent) or correspondence address was changed during the
prosecution of the prior application, the change in power of attorney
(or authorization of agent) or correspondence address must be identified
in the continuation or divisional application, or the Office may not
recognize in the continuation or divisional application the change of
power of attorney (or authorization of agent) or correspondence address
during the prosecution of the prior application.
A newly executed oath or declaration will continue to be required in a
continuation or divisional application naming an inventor not named in
the prior application, or a continuation-in-part application, and
1.63(d)(5) expressly states that a newly executed oath or declaration
must be filed in a continuation or divisional application naming an
inventor not named in the prior application.
New 1.63(e) provides that a newly executed oath or declaration must
be filed in a continuation-in-part application, which application may
name all, more, or fewer than all of the inventors named in the prior
application, and includes the language relocated from former 1.63(d)
concerning an oath or declaration in a continuation-in-part application.
Comment 38: One comment suggested that the practice of permitting the
use of an executed oath or declaration of a prior application creates a
trap for the unwary in the situation in which an applicant believes in
error that no new matter has been added in the "continuation"
application and does not file a new declaration.
Response: The situation outlined in the comment is less of a trap for
the unwary than the situation in which an applicant files a substitute
specification and believes in error that no new matter has been added,
in that the error in the "continuation" may be corrected by
redesignation of the application as a continuation-in-part and the
filing of a new oath or declaration. Nevertheless, it remains the
applicant's responsibility to review any substitute specification or new
specification submitted for a continuation application to determine that
it contains no new matter. See MPEP 608.01(q). An applicant is advised
to simply file a continuing application with a newly executed oath or
declaration when it is questionable as to whether the continuing
application adds material that would have been new matter if presented
in the prior application.
Comment 39: One comment suggested that the option of submitting "a copy
of an unexecuted oath or declaration, and a statement that the copy is a
true copy of the oath or declaration that was subsequently executed and
filed to complete . . . the most immediate prior national application
for which priority is claimed under 35 U.S.C. 120, 121 or 365(c)" was
strange at best as the applicant or representative should have a copy of
the oath or declaration that was filed to complete the prior application
or could obtain one from Office records.
Response: The suggestion is adopted. Section 1.63(d) as adopted provides
that: "[a] newly executed oath or declaration is not required under
1.51(b)(2) and 1.53(f) in a continuation or divisional application
filed by all or by fewer than all of the inventors named in a prior
nonprovisional application containing an oath or declaration as
prescribed by paragraphs (a) through (c) of this section, provided that
a copy of the executed oath or declaration filed in the prior
application is submitted for the continuation or divisional application."
Comment 40: One comment questioned whether 1.53 (or 1.63) is
consistent with 1.48 as to whether the oath or declaration filed in a
continuing application adding an inventor must be executed by all of the
inventors, or just the added inventor.
Response: The oath or declaration filed in a continuing application
adding an inventor or a continuation-in-part application must name and
be executed by all of the inventors. Sections 1.48 and 1.63(e) are
consistent in this regard.
Comment 41: One comment questioned whether, in a continuation or
divisional application following a chain of continuation or divisional
applications, the copy of the executed oath or declaration may be a copy
of the oath or declaration filed in the immediate prior application
(which may itself be a copy of an oath or declaration from a prior
application), or must be a direct copy of the originally executed oath
or declaration.
Response: Section 1.63(d) requires a copy of the oath or declaration
from the prior application. In instances in which the oath or
declaration filed in the prior application is itself a copy of an oath
or declaration from a prior application, either a copy of the copy of
the oath or declaration in the prior application or a direct copy of the
original oath or declaration is acceptable, as both are a copy of the
oath or declaration in the prior application. See 1.4(d)(1)(ii).
Section 1.67: Section 1.67 paragraph (b) is amended to change "
1.53(d)(1)" to " 1.53(f)" for consistency with 1.53.
No comments were received regarding 1.67.
Section 1.69: Section 1.69(b) is amended to remove the requirement that
the translation be verified in accordance with the change to
1.4(d)(2) and 10.18. Section 1.69(b) is also amended to clarify the need
for a statement that the translation being offered is an accurate
translation, as in 1.52 paragraphs (a) and (d).
Two comments were received in regard to 1.69 that also raised similar
issues in regard to 1.52, which comments are treated with 1.52.
Section 1.78: Section 1.78(a)(1) is amended to remove the references to
1.60 and 1.62 in view of the deletion of 1.60 and 1.62, and to
include a reference to an "international application entitled to a
filing date in accordance with PCT Article 11 and designating the United
States of America." Section 1.78(a)(2) is amended for consistency with
the changes to 1.53, and to provide that "[t]he identification of an
application by application number under this section is the specific
reference required by 35 U.S.C. 120 to every application assigned that
application number."
No comments were received regarding the proposed change to 1.78.
Section 1.84: Section 1.84(b) is amended by removing references to the
filing of black and white photographs in design applications as
unnecessary in view of the reference in 1.152 to 1.84(b). Section
1.84 paragraphs (c) and (g) are amended for consistency in regard to the
English equivalents (5/8 inch.) for 1.5 cm.
No adverse comments were received regarding the proposed change to
1.84.
Section 1.91: The title of 1.91 is amended to clarify that a certain
type of material is not generally admitted in the file record by
substitution of "admitted" for "required."
Section 1.91 is also amended to clarify the type of material that is not
generally admitted into the file record of an application. Section
1.91(a) specifically requires a petition (with the fee set forth in
1.17(i)) including an appropriate showing why entry of the model or
exhibit into the file record is necessary to demonstrate patentability,
unless the model or exhibit: (1) substantially conforms with 1.52 or
1.84; or (2) was required by the Office.
Section 1.91 is also amended to state that a model, working model or
other physical exhibit, whose submission by applicants is generally not
permitted, may be required by the Office if deemed necessary for any
purpose in the examination of the application. This language is moved
from 1.92.
Comment 42: Several adverse comments were received expressing concern
that the addition of the term "exhibits" to the bar against admission of
models, unless specifically required by the Office, would prevent
applicants from making their best possible case for patentability, and
that exhibits would be interpreted by the Office as barring
two-dimensional as well as three-dimensional exhibits.
Response: The preamble of the proposed rule indicated that the change to
the rule is in the nature of a clarification and not a change in
practice. Further clarification has been added to the rule by reference
to 1.52 or 1.84 and to the instant discussion of the rule to
indicate that the use of the term "exhibits" is in the nature of other
three-dimensional models, such as videos, and will not bar
two-dimensional exhibits currently being accepted. Additionally, a
petition route has been added to the rule that would permit entry of
three-dimensional models or exhibits where they are necessary to
establish patentability. Section 1.91 is also amended to expressly
provide for the filing of a petition thereunder (rather than to require
the filing of a petition under 1.183) such that an applicant may gain
entry of a model or exhibit, without a showing of an extraordinary
situation where justice requires grant of the relief sought.
The fact that a three-dimensional model or exhibit will not generally be
entered in the record absent an appropriate showing does not prevent an
applicant from showing the exhibit to the examiner for purposes of
clarifying the examiner's understanding of the invention and reducing
the model or exhibit to two-dimensional conformance with 1.52 or
1.84 for entry of that reduction to the record (which issues are
separate and distinct from the questions as to whether the later
presented material was originally required for an understanding of the
invention and its subsequent addition being subject to a new matter
objection under 35 U.S.C.132).
Due to the unusual difficulties of storage for three-dimensional
materials and little demonstrated need for their presence in the file
record over what would be provided for via petition under 1.91, it is
not seen to be appropriate to permit unrestricted entry of
three-dimensional exhibits in the file record.
Section 1.92: Section 1.92 is removed and reserved and the language
transferred to 1.91(b) for improved contextual purposes.
No comments were received regarding the proposed change to 1.92.
Section 1.97: Sections 1.97(c) through (e) are amended by replacement of
"certification" by "statement" (see comments relating to 1.4(d)), and
by clarifying the current use of "statement" by the terms "information
disclosure."
Section 1.97(e)(2) is further amended to replace "or" by "and" to
require that no item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application, and, to the knowledge of
the person signing the statement, after making reasonable inquiry, no
item of information contained in the information disclosure was known to
any individual designated in 1.56(c) more than three months prior to
the filing of the information disclosure statement. The use of "and"
rather than "or" is in keeping with the intent of the rule as expressed
in the MPEP609(B)(2)(ii), that the conjunction be conjunctive rather
than disjunctive. The mere absence of an item of information from a
foreign patent office communication was clearly not intended to
represent an opportunity to delay the submission of the item when known
more than three months prior to the filing of an information disclosure
statement to an individual having a duty of disclosure under 1.56.
No comments were received regarding the proposed change to 1.97.
Section 1.101: Section 1.101 is removed and reserved as relating to
internal Office instructions.
Comment 43: A number of comments opposed the deletion of the rules that
solely govern Office procedure. The reasons given for this opposition
are: (1) the Office should subject its procedures to the notice and
comment provisions of the Administrative Procedure Act (APA); (2) the
inclusion of such procedures in the rules of practice imparts the force
and effect of law to such procedures; (3) the greater deference given to
procedures set forth in the rules of practice, rather than the MPEP,
during court action.
Response: The CCPA has held that applicants before the Office are
entitled to rely not onlyon the patent statute and rules of practice,
but on the provisions of the MPEP, during the prosecution of an
application for patent. See In re Kaghan, 387 F.2d 398, 401, 156
USPQ130, 132 (CCPA 1967). Thus, there is in practice little, if any,
benefit to applicants before the Office in having the Office procedure
set forth in the rules of practice, rather than the MPEP. In any event,
no comment pointed to any specific decision, and the Office is not aware
of any decision, in which the result turned on the inclusion of Office
procedure in the rules of practice (rather than simply in the MPEP).
Nevertheless, in view of the concern expressed in the comments as to the
rules of practice setting forth the fundamentals of the examination of
an application, the Office will retain the substance of 1.104 and
1.105 in the rules of practice. See In re Phillips, 608 F.2d 879,883
n.6, 203 USPQ 971, 974 n.6 (CCPA 1979) (although irrelevant to the
result, the Office was criticized for piecemeal examination contrary to
1.104 and 1.105). The substance of 1.104, 1.105, 1.106, 1.107,
and 1.109, however, will be combined into 1.104 paragraphs (a)-(e).
The Office will also retain 1.351 in the rules of practice, as it has
been relied upon as the notice that the Office will provide concerning
changes to the rules of practice in 37 CFR Part 1. See In re Nielson,
816 F.2d 1567, 1571, 2 USPQ2d 1525, 1527 (Fed. Cir. 1987). Finally, the
Office will retain 1.181 paragraphs (d), (e), and (g) to avoid
confusing petition practice, and 1.325 to avoid confusion as to the
requirements for correction of a patent.
The Office, however, will delete 1.101, 1.108, 1.122, 1.184, 1.318,
and 1.352 from 37 CFR Part 1. The procedures set forth in 1.101,
1.122, 1.184 and 1.318 do not provide meaningful safeguards to
applicants (e.g., 1.101 does not ensure or give an applicant the
right to examination of an application within any reasonably specific
time frame). The proscription in 1.108 is simply an administrative
instruction based upon the fact that, unless otherwise publicly
available, abandoned applications do not constitute prior art under 35
U.S.C. 102 (and thus 103). Finally, as former 1.352 included a
"whenever required by law" prerequisite, it provided no independent
requirement that the Office publish proposed rule changes for comment.
Section 1.102: Section 1.102(a) is amended to remove the requirement
that the showing be verified in accordance with the change to
1.4(d)(2) and 10.18.
No comments were received regarding the proposed change to 1.102.
Section 1.103: Section 1.103(a) is amended by replacement of "response"
with "reply" in accordance with the change to 1.111.
No comments were received regarding the proposed change to 1.103.
Section 1.104: Section 1.104 is amended to include paragraphs (a)
through (e) including the substance of former 1.104, 1.105, 1.106,
1.107, and 1.109. The re-writing of 1.104, 1.105, 1.106, 1.107, and
1.109 as 1.104(a) through (e) involves no change in substance.
See comment relating to 1.101.
Section 1.105: Section 1.105 is removed and reserved as the subject
matter was transferred to 1.104(b).
See comment relating to 1.101.
Section 1.106: Section 1.106 is removed and reserved as the subject
matter was transferred to 1.104(c).
See comment relating to 1.101.
Section 1.107: Section 1.107 is removed and reserved as the subject
matter was transferred to 1.104(d).
See comment relating to 1.101.
Section 1.108: Section 1.108 is removed and reserved as relating to
internal Office instructions.
See comment relating to 1.101.
Section 1.109: Section 1.109 is removed and reserved as the subject
matter was transferred to 1.104(e).
See comment relating to 1.101.
Section 1.111: Section 1.111 is amended to consistently refer to a
"reply" to an Office action. The prior section used the term "response"
and "reply" in an inconsistent manner and created some confusion.
Paragraph (b) of 1.111 is also amended to explicitly recognize that a
reply must be reduced to a writing which must point out the specific
distinctions believed to render the claims, including any newly
presented claims, patentable. It is noted that an examiner's amendment
reducing a telephone interview to writing would comply with 1.2.
Comment 44: One comment asked whether pointing out one distinction is
sufficient or must applicant provide an exhaustive list of all
distinctions. Additionally, inquiry is made as to whether it is
sufficient to point out the impropriety of a rejection under 35 U.S.C.
102 that should have been a rejection under 35 U.S.C. 103, or must a
rejection under 35 U.S.C. 103 be anticipated and answered.
Response: A distinction should be kept in mind between what is necessary
for a reply to be considered sufficient to continue prosecution of the
application and what will advance the application to issuance in the
most efficient manner. While pointing out only one distinction, such as
why a rejection under 35 U.S.C. 102 is inappropriate, would comply with
the requirements of 1.111, advancement of the prosecution of the
application would best be served by pointing out all possible
distinctions, so that if the argument for one distinction is not
persuasive, another may be. Similarly, anticipation of and argument
against a rejection under 35 U.S.C. 103 where a rejection under 35
U.S.C. 102 should have been made under 35 U.S.C. 103 could possibly
prevent making of the rejection under 35 U.S.C. 103 by the examiner and
an earlier issuance of the application thereby preserving patent term
under 35 U.S.C. 154 as amended by Pub. L. 103-465.
Comment 45: Three comments pointed to instances where a reply would not
necessarily require that distinctions be pointed out, such as: (1) where
context and arguments presented make the distinctions clear beyond
doubt; (2) where a prima facie case has not been established or
motivation for modification of a reference is lacking; (3) a secondary
reference is from a nonanalogous art improperly combined; or (4) no
reference has been applied.
Response: The comment has been adopted to the extent that the paragraph
(b) of the rule has been amended to refer to "any" rather than "the"
applied references. Any argument that would make the distinctions clear
beyond doubt would seem to require identification of the distinctions
therein. Where a reply contains an argument that motivation for a
modification of a reference made by an examiner does not exist, or that
a nonanalogous secondary reference has been improperly combined, the
identification of the claim element involved and the particular factual
basis that makes the modification or combination relating to that claim
element inappropriate are necessary elements of a reply. That an
applicant considers a rejection, objection, or other requirement in an
Office action to be inappropriate does not relieve the applicant of the
burden under 35 U.S.C. 133 of prosecuting the application to avoid
abandonment.
Comment 46: A comment suggested that the requirement for supplying claim
distinctions for a newly presented claim is at odds with the Office's
burden in the first instance of explaining any objection or rejection of
an applicant's claim, and that the existing requirement that an
applicant distinctly and specifically point out the errors in the
examiner's action and reply to every ground of objection and rejection
are sufficient without the added language. Another comment noted that it
is believed that the rule already requires that specific distinctions be
supplied and questions what new requirements are being added by that
additional language.
Response: To the extent that the already existing language would require
that claim distinctions be presented, the added language is seen to
clarify what is required of an applicant in replying to an Office action
and is not seen to be at odds with the Office's burdenin first going
forward with a rejection of the claims. Once a claim is rejected, there
is a duty on applicants under 1.111 to provide an appropriate reply
as defined therein for applicant to be entitled to reconsideration or
further examination.
Section 1.112: Section 1.112 is amended to remove as unnecessary the
statement that "any amendments after a second Office action must
ordinarily be restricted to the rejection, objections or requirements
made in the office action" to reflect actual practice, in which
amendments after the second action need not be restricted to the
rejection or the objections or requirements set forth in an Office
action. The heading of 1.112 is also amended to add "before final
action" to clarify that such reconsideration does not apply after a
final Office action.
No comments were received regarding the proposed change to 1.112.
Section 1.113: Section 1.113(a) is amended to add "by the examiner"
after "examination or consideration," change "objections to form" to
"objections as to form" for clarity, and replace "response" with "reply"
in accordance with the change to 1.111.
Section 1.113(b) is amended to change "clearly stating the reasons
therefor" to "clearly stating the reasons in support thereof" for
clarity.
Comment 47: A number of comments argued that first action final practice
should be eliminated without regard to an amendment to 1.116 as: (1)
35 U.S.C. 132 does not authorize first action final practice; and (2)
the filing fee paid in a continuing application should entitle an
applicant to an examination and reexamination in the continuing
application.
Response: The argument that 35 U.S.C. 132 does not authorize first
action final practice has been considered by the Office and rejected in
In re Bogese, 22 USPQ2d 1821 (Comm'r Pat. 1992). Specifically,
continuing applications have historically been considered part of a
continuous proceeding in regard to the prior application. Id. at 1827.
First action final practice denies an applicant the delay inherent in an
additional Office action in a continuation application, thus compelling
the applicant to draft claims in a continuation application in view of
the prosecution history of the parent application (i.e., the rejections
and prior art of record in the parent application), and thus make a bona
fide effort to define the issues for appeal or allowance. Id. at 1824-25.
In addition, under the current patent fee structure, a significant
portion of the Office's costs of examining patent applications is
recovered through issue and maintenance fees. That is, the filing fees
required by 35 U.S.C. 41(a)(1)-(4) and 1.16 for an application do not
cover the Office's full costs of examining that application pursuant to
35 U.S.C. 131 and 132. Therefore, the argument that first action final
practice is inherently unfair in view of the filing fees paid by the
applicant fails to appreciate the current patent fee structure.
Due to the overwhelming opposition to the proposed changes to 1.116
to simplify after final practice, the proposed change to 1.113 to
eliminate first action final practice and the proposed changes to
1.116 to simplify after final practice are not adopted in this Final
Rule. The Office will give further consideration to the elimination of
first action final practice.
Comment 48: One comment suggested that 1.113 should be clarified to
reflect the intent of the rule change that a first action final
rejection not issue in a continuation application.
Response: The proposed change to 1.113 to prohibit a first action
final rejection is not being adopted.
Section 1.115: Section 1.115 has been removed and reserved, rather than
amended to contain the material of former 1.117 through 1.118,
1.123 and 1.124. The subject matter proposed to be included in 1.115
has been transferred to 1.121. The change does not constitute a
change in substance; the material of the deleted sections has simply
been rearranged and edited for clarity and contextual purposes in
1.121. The reference in 1.115(b)(2) relating to the rejection of
claims containing new matter has not been retained in 1.121 as
unnecessary.
Comment 49: One comment recognizing that the subject matter of 1.118
is transferred to 1.115 (now 1.121) noted that the particular
material of the second and third sentences of paragraph (a) of
1.118(a) was not so transferred and should be.
Response: While the exact language of the second and third sentences of
paragraph (a) of 1.118 was not transferred to 1.121 ( 1.115 as
originally proposed), the concept is retained in 1.121, paragraphs
(a)(6), (b)(5), and (c)(1), in condensed form.
Comment 50: One comment objected to the requirement of paragraph (d) of
1.115 (now 1.121) where a disclosure must be amended to secure
correspondence between the claims, the specification and the drawings.
Forcing the specification to parrot the language of new claims, where
only new claims originally use a term not found in the original
disclosure and in the original claims, is said to impose an undue burden
on applicant and jeopardize the validity of all the claims if the new
term is found to be new matter.
Response: The comment does not explain why a specification containing a
later added expression subsequently found to contain new matter will
adversely affect claims that do not contain that expression,
particularly if a portion of the specification is retained that provides
support for claims not containing that expression. Additionally, the
requirement being criticized is not a new requirement but was material
transferred from 1.117. However, the comment was adopted in-part in
that 1.121, paragraphs (a)(5) and (b)(4), require only "substantial
correspondence" between the claims, the remainder of the specification,
and the drawings.
Comment 51: One comment suggested that the term "sketch" in paragraph
(e) of 1.115 (now 1.121) be broadened to "drawing."
Response: Sections 1.121(a)(3)(ii) and 1.121(b)(3)(ii) recite sketch,
which has been interpreted by the Office to include a copy. The use of
sketch is seen to be the broader term in allowing a handwritten
alteration of a copy of the previously submitted drawing to be done
without the need for a color copy being obtained.
Comment 52: One comment suggested that paragraph (f) of 1.115 (now
1.121), requiring no interlineations to appear in a clause as finally
presented, is inconsistent with the requirements of 1.121 requiring
brackets and underlining of the subject matter deleted and added.
Response: The comment was adopted by clarifying 1.121(a)(iii) as
adopted by reciting that the interlineation prohibition relates to
previous amendments being depicted in a subsequent amendment, and to
limit its applicability to applications other than reissue applications
(thereby also excluding reexamination proceedings) in that all changes
from the patent are required to be shown in reissue applications and
reexamination proceedings.
Section 1.116: Section 1.116 is amended by adding the phrase "or appeal"
to its heading. This change clarifies the current practice that
paragraphs (b) and (c) apply to amendments filed after an appeal,
regardless of whether the application was subject to a final rejection
prior to the appeal.
Section 1.116(a) is also amended for clarity to limit amendments after a
final rejection or other final action ( 1.113) to those amendments
cancelling claims or complying with any requirement of form set forth in
a previous Office action, and replaces the phrase "any proceedings
relative thereto" with "any related proceedings" for clarity. The
amendment does not represent a change in practice under 1.116(a) as
was originally proposed, but merely a clarification of when an applicant
is entitled to entry of an amendment under 1.116(a).
Comment 53: Almost every comment relating to the proposed change to
1.116 to limit entry of amendments after a final Office action based on
simplification of issues for appeal opposed the change. The various
rationales included: (1) a liberal practice by examiners in entering
amendments after final rejection based on a willingness to engage in
significant negotiations after final rejection; (2) an increased burden
on the Board of Patent Appeals and Interferences (Board); (3) a loss of
potential patent term under 35 U.S.C. 154 if refiling an application was
routinely required; (4) a loss of clarity by applicant and the examiner
of theissues involved, in that it is frequently only after the second
action that the issues become clarified, particularly as counsel are not
aware of the art that may actually be applied against the claims and
therefore do not submit claims that can read over such art; (5) to the
extent the need to enter amendments causes refiling of an application,
greater resources from the Office are required as opposed to simply
entering the amendment in the prior application; (6) there will be an
increase in the requests for interviews after first action; (7) the
change represents encouragement for examiners to cut down on papers
entered particularly in view of the crediting system; and (8) the
proposal is not helpful to applicant and is only a revenue generator.
Several alternative suggestions were made including: (1) a fee to have
amendments after final entered as a matter of right; (2) discretion for
examiners to enter any amendment should be explicitly stated in the
rule; (3) consider substantive amendments if submitted at least one
month in advance of the end of the reply period; (4) eliminate
applicant's concern for expedited handling of 1.116 amendments by
having a new period for appealing or refiling; (5) entry of amendment to
solely correct rejections under 35 U.S.C. 112, 2, should be
permitted; (6) first after final submission permitted entry under
simplification of issuesstandard and any subsequent submission would
only be permitted under standard as proposed without simplification of
issues available; (7) merging of a dependent claim into an independent
claim ought to be explicitly permitted as a matter of right; (8) provide
a standard of entry dependent upon good and sufficient reason as to why
the amendment after final was not made earlier; (9) permit consideration
of the amendment for allowable subject matter to save applicant cost of
refiling for such determination; and (10) change should be linked with a
prohibition on applying a new reference in a final rejection.
Response: In view of the issues raised and the alternative suggestions
presented, it has been determined that further study is required. The
comments have been adopted solely to the extent that the proposed change
to delete simplification of issues for purpose of appeal, as a basis for
entry of an amendment after final rejection, will not be implemented at
this time.
Section 1.117: Section 1.117 is removed and reserved as the subject
matter was transferred to 1.121.
No comments were received regarding the proposed change to 1.117.
Section 1.118: Section 1.118 is removed and reserved and its subject
matter transferred to 1.121.
See first comment related to 1.115.
Section 1.119: Section 1.119 is removed and reserved as duplicative of
the provisions of 1.111 and 1.121.
No comments were received regarding the proposed change to 1.119.
Section 1.121: Section 1.121, paragraphs (a) through (f), are replaced
with paragraphs (a) through (c), which separately treat amendments in
non-reissue nonprovisional applications (paragraph (a)), amendments in
reissue applications (paragraph (b)), and amendments in reexamination
proceedings (paragraph (c)). The intent of the changes is to retain
amendment practice in regard to non-reissue applications prior to the
changes proposed in the Notice of Proposed Rulemaking and to make final
the changes in amendment practice in regard to reissue applications
proposed in the Notice of Proposed Rulemaking, except for requiring
copies of all claims as of the date of submission of an amendment and a
constructive cancellation in their absence. Additionally, while
retaining the previous amendment practice in non-reissue applications,
the regulations have been clarified by deletion of 1.115, 1.117
through 1.118, 1.123, and 1.124 and placement of subject matter thereof
in 1.121.
Comment 54: Most comments received on the proposed change in amendment
practice as it relates to non-reissue applications to bring it into line
with reissue and reexamination amendment practices were very negative.
In particular, the proposed changes to present a complete copy of the
claims when any amendment to the claims is made, and to hold a
constructive cancellation for any claim copy not presented were
alarming. However, similar comments were not received in regard to the
proposed changes to bring reissue and reexamination practice closer
together.
Response: The comments were adopted in that the proposed changes, other
than clarifications of current practice, will not be implemented now and
further study will be undertaken to include suggestions presented in
regard to this rule.
Comment 55: Several comments offered suggestions and requested
clarifications: (1) whether this was an attempt to push the practice
closer to PCT where substitute pages are used; (2) use of different
markings such as strikeouts of word processors; (3) only requirecomplete
copy of claims at issue; (4) only have a status listing of all claims
not complete copy with each response; (5) continuations or divisions
should be filed showing markups; (6) require only that new claims pages
be substituted; (7) objection to the submission of a separate complete
set of claims in addition to the amendments being made; (8) some
instances separate set may be appropriate and not too much of a burden;
and (9) there should beexception, liberal reinstatement, or rebuttable
presumption for constructive cancellation if clerical omission.
Response: Paragraphs (a) and (b) of 1.121 each separately treat
amendment of the specification (paragraphs (a)(1) and (b)(1)), and of
the claims (paragraphs (a)(2) and (b)(2)). In comparing amendment
practice to the specification for non-reissue and reissue applications,
all amendments in the reissue application are to be made relative to
(i.e., vis-a-vis) the specification (including the claims) and
drawings of the original patent as of the date of the filing of the
reissue application. Changes are shown using underlining and bracketing
relative to the patent specification. In addition, the entire paragraph
of disclosure with the changes and the entire claim with the changes
must be presented, in making the amendment. On the other hand,
amendments in a non-reissue application are to be made relative to prior
amendments (with underlining and bracketing in a reproduced claim
reflecting changes made relative to the prior amendment), and insertions
and deletions can be made without reproducing the entire paragraph of
disclosure or the entire claim. Further (for a non-reissue application),
in amending the text of the disclosure other than the claims, changes
are not shown by underlining and bracketing, even where a paragraph of
disclosure is reproduced.
Paragraph (a) of 1.121 relates to amendments in non-provisional
applications, other than reissue applications, and retains a reference
to 1.52. Paragraph (a)(1) relates to the manner of making amendments
in the specification, other than in the claims. Paragraph (a)(1)(i)
requires the precise point in the specification to be indicated where an
addition is to be inserted. Paragraph (a)(1)(ii) requires the precise
point in the specification to be indicated where a deletion is to be
made. This should be compared to addition or cancellation of material
from the patent specification in a reissue application (paragraph
(b)(1)(ii)) or in are examination proceeding ( 1.530(d)(1)(ii), e.g.,
by way of a copy of the rewritten material). An amendment containing
deletions mixed with additions will be treated according to both
paragraphs (a)(1)(i) and (a)(1)(ii). Amendments to the specification,
additions or deletions, do not require markings, only identification of
an insertion point. However, where the changes made are not readily
apparent the applicant may be requested by the examiner to provide an
explanation of the changes or a marked up copy showing the changes made.
Paragraph(a)(1)(iii) provides that to reinstate matter previously
deleted it must be reinstated by a new amendment inserting the matter.
Paragraph (a)(2) of 1.121 relates to the manner of making amendments
in the claims of a non-reissue application. Paragraph (a)(2)(i) permits
amendment by instructions to the Office for a deletion, paragraph
(a)(2)(i)(A), or for an addition limited to five words in any one claim,
paragraph (a)(2)(i)(B). The ability to provide directions to the Office
for the handwritten deletion of five words or less for each claim does
not encompass deletion of equations, charts or other non-word material.
Paragraph (a)(2)(ii) sets forth that a claim may be amended by a
direction to cancel the claim, or by rewriting the claim with markings
showing material to be added and deleted. Additionally, previously
rewritten claims are required to be so marked and not to have
interlineations showing amendment(s) previous to the one currently being
submitted.
Paragraph (a)(3) of 1.121 clarifies that amendments to the original
application drawings for non-reissue applications are not permitted and
are to be made by way of a substitute sheet for each original drawing
sheet that is to be amended. The paragraph contains material from
cancelled 1.115.
Paragraph (a)(4) of 1.121 requires that any amendment presented in a
substitute specification must be presented under the provision of this
section either prior to or concurrent with the submission of the
substitute specification. The paragraph contains material from cancelled
1.115.
Paragraph (a)(5) of 1.121 requires amendment of the disclosure in
certain situations (i.e., to correct inaccuracies of description and
definition) and to secure substantial correspondence. The paragraph
contains material from cancelled 1.117. The previous requirement for
"correspondence" has been modified by use of "substantial
correspondence." See comments to 1.115.
Paragraph (a)(6) prohibits the introduction of new matter into the
disclosure of a non-reissue, non-provisional application.
Paragraph (b) of 1.121 applies to amendments in reissue applications.
Paragraph (b)(1) of 1.121 relates to the manner of making amendments
to the specification, other than in the claims, in reissue applications.
Paragraph (b)(1)(i) requires that amendments including deletions be made
by submission of a copy of one or more newly added or rewritten
paragraphs with markings, except that an entire paragraph may be deleted
by a statement deleting the paragraph without presentation of the text
of the paragraph. Paragraph (b)(1)(ii) requires indication of the
precise point in the specification where the paragraph which is being
amended is located. When a change in one sentence, paragraph or page
results in only format changes to other pages (e.g., shifting of
non-amended text to subsequent pages) not otherwise being amended, such
format changes are not to be submitted. Compare to amendments to the
specification, other than in the claims, of non-reissue applications
wherein deletions are permitted, paragraph (a)(1)(ii) of this section.
Paragraph (b)(1)(iii) defines the marking set forth in paragraph
(b)(1)(ii) of this section. Proposed paragraph (b)(1)(iii), relating to
a requirement for submission of all amendments be presented when any
amendment to the specification is made, was not implemented.
Paragraph (b)(2) of 1.121 relates to the manner of making amendments
to the claims in reissue applications. Paragraph (b)(2)(i)(A) of
1.121 requires the entire text of each patent claim that is being
amended by the current amendment and of each claim being added by the
current amendment. Requests that the Office hand-enter changes of five
or less words, former 1.121(c)(2), will no longer be permitted.
Pending claims, whether previously amended or not, that are not being
amended by the current amendment are not to be resubmitted. This
procedure is different from 1.121(a)(2)(i)(B), which permits requests
that the Office hand-enter changes of five or less words in a
non-reissue application. Additionally, provision is made for the
cancellation of a patent claim by a direction to cancel without the need
for marking by brackets. Paragraph (b)(2)(i)(B) requires that patent
claims not be renumbered. Paragraph (b)(2)(i)(C) identifies the type of
marking required by paragraph (b)(2)(i)(A), single underlining for added
material and single brackets for material deleted.
Paragraph (b)(2)(ii) of 1.121 requires that each amendment submission
set forth the status (i.e., pending or cancelled) of all patent claims
and all added claims as of the date of the submission, as not all claims
(non-amended claims) are to be presented with each submission, paragraph
(b)(2)(iv). The absence of submission of the claim status would result
in an incomplete reply ( 1.135(c)).
Paragraph (b)(2)(iii) of 1.121 requires that each claim amendment be
accompanied by an explanation of the support in the disclosure of the
patent for the amendment. The absence of an explanation would result in
an incomplete reply ( 1.135(c)).
Comment 56: One comment requested that the Office clarify how an
applicant would satisfy this requirement when the amendment involves a
simple editorial change, or when the amendment uses terms that find no
explicit support in the patent.
Response: When it is clear that the amendment simply involves an
editorial change and doesnot add material for which support in the
disclosure is required, the reply may simply explain that the amendment
is merely making an editorial change. When the amendment uses terms that
find no explicit support in the specification, the reply must set forth
where the specification provides, at least implicitly, support for the
amendment as required by 35 U.S.C. 112, 1. In addition, an amendment
to the specification to secure correspondence between the specification
and the claims will also be required. See 1.75(d)(1) and MPEP
608.01(o). Obviously, an amendment that does not find either explicit or
at least implicit support in the specification as required by 35 U.S.C.
112, 1, is not permitted. See 35 U.S.C. 251, 1, (last sentence).
Proposed paragraphs (b)(2)(iv) and (v) of this section, relating to a
requirement for presentation of all amendments as of the date any
amendment to the claims is made, and to the treatment of the failure to
submit a copy of any added claim as a direction to cancel that claim,
were not implemented.
Paragraph (b)(3) of 1.121 clarifies that amendments to the patent
drawings are not permitted and that any change must be by way of a new
sheet of drawings with the amended figures being identified as "amended"
and with added figures identified as "new" for each sheet that has
changed. The paragraph contains material from cancelled 1.115.
Paragraph (b)(4) of 1.121, added in view of the deletion of 1.115
paragraph (d), requires amendment of the disclosure in certain
situations (i.e., to correct inaccuracies of description and definition)
and to secure substantial correspondence between the claims, the
remainder of the specification, and the drawings. The previous
requirement for "correspondence" has been modified by use of
"substantial correspondence." See comments to 1.115.
Paragraph (b)(5) of 1.121, containing material transferred from
proposed paragraph (b)(2)(vi) (now deleted), clarifies that: (1) No
reissue patent will be granted enlarging the scope of the claims unless
applied for within two years from the grant of the original patent
(additional broadening outside the two-year limit is appropriate as long
as some broadening occurred within the two-year period, In re Doll, 419
F.2d 925, 164 USPQ 218 (CCPA1970)); and (2) no amendment may introduce
new matter or be made in an expired patent.
Paragraph (b)(6) of 1.121 has been added to clarify that all
amendments must be made relative to (i.e., vis-a-vis) the
specification (including the claims) and drawings of the original patent
as of the date of the filing of the reissue application. If there was a
prior change to the patent (made via a prior reexamination certificate,
reissue of the patent, certificate of correction, etc.), the first
amendment must be made relative to the patent specification aschanged by
the prior proceeding or other mechanism for changing the patent. In
addition, all amendments subsequent to the first amendment must be made
relative to the patent specification in effect as of the date of the
filing of the reissue application, and not relative to the prior
amendment.
Paragraph (c) of 1.121 clarifies that amendments in reexamination
proceedings are to be made in accordance with 1.530(d).
Section 1.121 as applied to reissue applications does not provide for
replacement pages whereby a new page would be physically substituted for
a currently existing page. However, an applicant can direct that a page
or pages ("Page(s) ) be cancelled and that updated materials be
inserted in its place.
The wide availability of word processing should enable applicants to
more easily submit updated material providing greater accuracy and
thereby eliminating the need for the Office to hand-enter amendments. To
that end, 1.125 is amended to reflect current practice that a
substitute specification may be submitted in an application, other than
a reissue application, at any point up to payment of the issue fee as a
matter of right, provided that such substitute specification is
submitted in compliance with the requirements set forth in 1.125.
Section 1.122: Section 1.122 is removed and reserved as representing
internal Office instruction.
See comments related to 1.101.
Section 1.123: Section 1.123 is removed and reserved and its subject
matter transferred to 1.121 for better context.
No comments were received regarding the proposed change to 1.123.
Section 1.124: Section 1.124 is removed and reserved and its subject
matter transferred to 1.121 for better context.
No comments were received regarding the proposed change to 1.124.
Section 1.125: Section 1.125 is amended by addition of paragraphs (a)
through (d). Section 1.125(a) retains the current practice that a
substitute specification may be required by the examiner and has been
clarified to note that if the legibility of the application papers shall
render it difficult to consider the application, the Office may require
a substitute specification.
Section 1.125 is amended in view of the continued prosecution
application under 1.53(d), to reflect the current liberalized
practice as set forth in MPEP 608.01(q), and to delete the verification
requirement for the no new matter statement. See comments to 1.4(d).
Section 1.125(b) specifically provides for the filing of a substitute
specification, excluding the claims, at any point up to payment of the
issue fee, if it is accompanied by: (1) a statement that the substitute
specification includes no new matter; and (2) a marked-up copy of the
substitute specification showing the matter being added to and the
matter being deleted from the specification of record (i.e., the
specification to be replaced by the substitute specification). While
1.125(b)(2) requires the marked-up copy show the additions and
deletions, it does not require that such additions and deletions be
shown by underlining and bracketing. Rather, it permits the use of other
indicia (e.g., redlining and strikeouts) to show additions and deletions
so that the document-compare feature of conventional word-processing
programs can be used to produce the marked-up substitute specification.
Section 1.125(b), as proposed, would have required that a substitute
specification contain only changes that were previously or concurrently
submitted by an amendment under 1.121. The Office, however, is not
adopting this proposal. Creating a copy of the substitute specification
showing the additions and deletions is relatively easy using the
document-compare feature of a conventional word-processing program, when
compared to the burden of preparing an amendment under 1.121(a)(1)
showing numerous changes to a specification. Thus, the Office is
adopting the requirement currently set forth in MPEP 608.01(q) for a
marked-up copy of the substitute specification showing the additions and
deletions.
Comment 57: One comment stated that it is not clear exactly what is to
be submitted with the substitute specification under paragraph (b)(2) of
this section even though paragraph (c) requires it to be in clean form
without markings.
Response: Section 1.125 requires an applicant filing a substitute
specification to submit:(1) the substitute specification in clean form
without markings ( 1.125(c)); (2) a marked-up copy showing the
additions and deletions relative to the specification it is replacing (
1.125(b)(2)); and (3) a statement that the substitute specification
includes no new matter ( 1.125(b)(1)).
Section 1.125(c) is amended to clarify that a substitute specification
is to be submitted without markings as to amended material.
Section 1.125(d) does not permit a substitute specification in reissue
or reexamination proceedings as markings for changes from the patent are
required therein.
Section 1.126: Section 1.126 is amended to delete the phrase ", except
when presented in accordance with 1.121(b)" for consistency with the
change to 1.121.
No comments were received regarding 1.126.
Section 1.133: Section 1.133(b) is amended by replacement of "response"
with "reply" in accordance with the change to 1.111.
No comments were received regarding the proposed change to 1.133.
Section 1.134: Section 1.134 is amended by replacement of "response"
with "reply" in accordance with the change to 1.111.
No comments were received regarding the proposed change to 1.134.
Section 1.135: Section 1.135 paragraphs (a) and (c) are amended by
replacement of "response" with "reply" in accordance with the change to
1.111. Section 1.135(b) is amended to clarify that the admission of or
refusal to admit any amendment after final rejection, and not just an
amendment not responsive to the last Office action, shall not operate to
save the application from abandonment.
Section 1.135(c) is amended to provide that a new "time period" under
1.134 may be given if a reply to a non-final Office action is
substantially complete but consideration of some matter or compliance
with some requirement has been inadvertently omitted. This replaces the
practice in which an applicant may be given an opportunity to supply the
omission through the setting of a "time limit" of one month that is not
extendable. Under 1.135(c) as adopted, a one-month shortened
statutory time period will generally be set enabling an applicant to
petition for extensions of time under 1.136(a). Where 35 U.S.C. 133
requires a period longer than one month (i.e., actions mailed in the
month of February), a shortened statutory period of 30 days will be set.
The setting of a time period for reply under 1.134 (rather than a
time limit) results in the date of abandonment (when no further reply is
filed) being the expiration of the new time period rather than the date
of expiration of the period of reply set in the original Office action
for which an incomplete reply was filed. Thus, the amendment to
1.135(c) permits the filing of a continuing application as an
alternative to completing the reply, whereas the previous practice
required an applicant to complete the reply that was held to be
incomplete orelse the application was held to be abandoned
(retroactively) as of the expiration of the original period for reply.
Thus, applicants had to file an unnecessary reply to preservependency
where their only intent was to file a continuing application. Section
1.135(c), as amended, sets forth a new period within which a continuing
application can be filed, without the applicant having to supply the
omission in the prior application to preserve pendency. In addition,
applicant may file any other reply as may be appropriate under 1.111,
regardless of whether a continuing application is filed.
Comment 58: Two comments objected to the change on the basis that it is
subject to intentional misuse. It is argued that it encourages an
applicant to send in piecemeal replies and permits use of the time
period as a subterfuge for extending prosecution as 1.135(c) does not
specify how many times an incomplete reply can be given.
Response: 35 U.S.C. 154 as amended by Pub. L. 103-465 should provide the
necessary incentive for applicants to prosecute an application without
undue delay. Additionally, the examiner can determine that the failure
to provide a complete reply was not "inadvertent" (especially where an
applicant was previously notified of the deficiencies in the reply), and
not set a period under 1.135(c).
Comment 59: One comment suggested amending 1.135(c) from "may" to
"shall" so that an examiner must provide an opportunity to an applicant
to complete a reply, and that 1.135(c) should not be limited to
replies to non-final Office actions so that if an application is in
condition for allowance except for an inadvertent omission it would be
beneficial for all parties to provide the same benefit as for non-final
actions.
Response: The term "may" is used rather than "shall" to encourage
applicants to provide a complete reply, in that an applicant providing
an incomplete reply cannot be certain of being provided with an
additional time period to prosecute the application.
Section 1.113(a) provides that the only reply to a final Office action
effective to avoid abandonment of an application is: (1) an amendment
under 1.116 that prima facie places the application in condition for
allowance; or (2) a notice of appeal (and appeal fee) under 1.191.
Thus, the only reply under 1.113(a) that will ensure that abandonment
of the application will be avoided is: (1) an amendment under 1.116
that cancels all of the rejected claims; or (2) a notice of appeal (and
appeal fee) under 1.191 ( 1.113(a)). That is, an applicant filing a
proposed amendment under 1.116 or arguments in reply to a final
Office action has no assurance that such reply will necessarily result
in allowance of the application. Given the limited nature of the replies
under 1.113 to a final Office action, it is not appropriate to
provide a time period under 1.135(c) to complete a reply to a final
Office action.
Section 1.135(c) is also amended to remove an unnecessary reference to
consideration of the question of abandonment and to clarify that the
reply for which applicant may be given a new time period to reply to
must be a "non-final" Office action.
Section 1.136: Section 1.136(a)(1) is amended to recite the availability
of a maximum of five rather than four months as an extension of time,
subject to any maximum period for reply set by statute. For example,
when a one-month or 30-day period is set for reply to a restriction
requirement or for completing a reply under 1.135(c), that period may
be extended up to the six-month statutory (35 U.S.C. 133) maximum. In
addition, as the two-month period set in 1.192(a) for filing an
appeal brief is not subject to the six-month maximum period specified in
35 U.S.C. 133, the period for filing an appeal brief may be extended up
to seven months.
Comment 60: At least one comment noted that there is no statutory
authority under 35 U.S.C. 41(a)(8)(C) for the $2,010 amount set for the
fifth month extension of time.
Response: See the response to comment 5.
Section 1.136(a)(1) is also amended by replacement of "respond" with
"reply" in accordance with the change to 1.111 and for clarification.
Section 1.136(a)(2) is amended by replacement of "respond" with "reply"
in accordance with the change to 1.111 and other clarification
changes.
Comment 61: One comment questioned whether the addition in paragraph
(a)(2) of 1.136 that requires a reply to be filed prior to the
expiration of the period of extension to avoid abandonment of the
application will affect the timely filing of a reply under 1.8 or
1.10 where the mail date rather than the receipt date is the end of the
period for reply.
Response: The referred to addition has been noted to be a clarification
and not a change in practice. The added language does not change current
practice under 1.8 and 1.10.
Section 1.136 is amended by addition of paragraph (a)(3) that provides
for the filing in an application a general authorization to treat any
reply requiring a petition for an extension of time for its timely
submission as containing a request therefor for the appropriate length
of time. The authorization may be filed at any time prior to or with the
submission of a reply that would require an extension of time for its
timely submission, including submission with the application papers.
Previously, the mere presence of a general authorization, submitted
prior to or with a reply requiring an extension of time, to charge all
required fees does not amount to a petition for an extension of time for
that reply (MPEP 201.06 and 714.17) and under the proposed amended rule
the submission of a reply requiring an extension of time for its timely
submission would not be treated as an inherent petition for an extension
of timeabsent an authorization for all necessary extensions of time. The
Office will continue to treat all petitions for an extension of time as
requesting the appropriate extension period notwithstanding an
inadvertent reference to a shorter period for extension and will
liberally interpret comparable papers as petitions for an extension of
time. Applicants are advised to file general authorizations for payment
of fees and petitions for extensions of time as separate papers rather
than as sentences buried in papers directed to other matters (such as an
application transmittal letter). The use of individual papers directed
only to an extension of time or to a general authorization for payment
of fees would permit the Office to more readily identify the presence of
such items and list them individually on the application file jacket,
thus facilitating future identification of these authorizations.
Comment 62: Two comments requested that it be clarified whether the
reference to submission of a paper with an authorization is to be
construed as allowing for submission of a standard sentence in a general
reply to an Office action that includes a check box on anapplication
transmittal form.
Response: The comments have been adopted and the proposed language of
paragraph (a)(3) of 1.136 modified to replace the reference to
"paper" with "written request."
Section 1.136(a)(3) is additionally amended to provide that general
authorizations to charge fees are effective to meet not only the
requirement for the extension of time fee for replies filed concurrent
or subsequent to the authorization but also represent a constructive
petition for an extension of time, which is a change from current
practice wherein a general authorization to charge additional fees does
not represent a petition for an extension of time, which petition must
be separately requested.
Section 1.136(a)(3) also includes the sentence "[s]ubmission of the fee
set forth in 1.17(a) will also be treated as a constructive petition
for an extension of time in any concurrent reply requiring a petition
for an extension of time under this paragraph for its timely
submission." This provides for those instances in which an applicant
files a reply with a check (or other means of payment under 1.23) for
the requisite fee under 1.17(a)(1) through (5) for the petition under
1.136(a) required to render such reply timely, but omits a request
(i.e., a petition) for an extension of time under 1.136(a). In such
instances, the mere submission of the appropriate fee will be treated as
a constructive petition for the extension of time to render the reply
timely.
Section 1.136(b) is amended for clarity and to replace the phrase
"response" with the phrase "reply" for consistency with 1.111.
Section 1.137: Section 1.137 is amended to, inter alia, incorporate
revival of abandoned applications and lapsed patents for the failure:
(1) to timely reply to an Office requirement in a provisional
application ( 1.139); (2) to timely pay the issue fee for a design
application ( 1.155); (3) to timely pay the issue fee for a utility or
plant application ( 1.316); or (4) to timely pay any outstanding
balance of the issue fee ( 1.317) (lapsed patents).
Section 1.137(a) is amended to provide: (1) that it is the paragraph
that applies to petitions under the "unavoidable" standard; (2) that
"where the delay in reply was unavoidable, a petition may be filed to
revive an abandoned application or a lapsed patent pursuant to [
1.137(a)]"; and (3) the requirements for a grantable petition pursuant
to 1.137(a) in paragraphs (a)(1) through (a)(4).
Section 1.137(a)(1) (and 1.137(b)(1)) are amended to provide that a
grantable petition pursuant to 1.137(a) must be accompanied by "[t]he
required reply, unless previously filed." Section 1.137(a)(1) (and
1.137(b)(1)) is amended to further provide that "[i]n a nonprovisional
application abandoned for failure to prosecute, the required reply may
be met by the filing of a continuing application" and that "[i]n an
application or patent, abandoned or lapsed for failure to pay the issue
fee or any portion thereof, the required reply must be the payment of
the issue fee or any outstanding balance thereof."
Under 1.137(a)(1) (and 1.137(b)(1)), a continuing application is a
permissive (i.e., "may be met") reply in a nonprovisional application
abandoned for failure to prosecute, in that an applicant in a
nonprovisional application abandoned for failure to prosecute may file a
reply under 1.111 to a non-final Office action or a reply under
1.113 (e.g., notice of appeal) to a final Office action, or may simply
file a continuing application as the required reply. The Office,
however, may require a continuing application (or request for further
examination pursuant to 1.129(a)) to meet the reply requirement of
1.137(a)(1) (or 1.137(b)(1)) where, under the circumstances of the
application, treating a reply under 1.111 or 1.113 would place an
inordinate burden on the Office. Exemplary circumstances of when
treating areply under 1.111 or 1.113 may place an inordinate burden
on the Office are: (1) an application abandoned for an inordinate period
of time; (2) the application file containing multiple or conflicting
replies to the last Office action; and (3) the submission of a reply or
replies under 1.137(a)(1) (or 1.137(b)(1)) that are questionable
as to compliance with 1.111 or 1.113.
While the revival of applications abandoned for failure to timely
prosecute and for failure to timely pay the issue fee are incorporated
together in 1.137, the statutory provisions for the revival of an
application abandoned for failure to timely prosecute and for failure to
timely submit the issue fee are mutually exclusive. See Brenner v.
Ebbert, 398 F.2d 762, 157USPQ 609 (D.C. Cir.), cert. denied 393 U.S.
926, 159 USPQ 799 (1968). 35 U.S.C. 151 authorizes the acceptance of a
delayed payment of the issue fee, if the issue fee "is submitted . . .
and the delay in payment is shown to have been unavoidable." 35 U.S.C.
41(a)(7) likewise authorizes the acceptance of an "unintentionally
delayed payment of the fee for issuing each patent." Thus, 35 U.S.C.
41(a)(7) and 151 each require payment of the issue feeas a condition of
reviving an application abandoned or patent lapsed for failure to pay
the issue fee. Therefore, the filing of a continuing application without
payment of the issue fee or any outstanding balance thereof is not an
acceptable proposed reply in an application abandoned or patent lapsed
for failure to pay the issue fee or any portion thereof.
The Notice of Allowance requires the timely payment of the issue fee in
effect on the date of its mailing to avoid abandonment of the
application. In instances in which there is an increase in the issue fee
by the time of payment of the issue fee required in the Notice of
Allowance, the Office will mail a notice requiring payment of the
balance of the issue fee then in effect. See In re Mills, 12 USPQ2d 1847
(Comm'r Pat. 1989). The phrase "for failure to pay the issue fee or any
portion thereof" applies to those instances in which the applicant fails
to pay either the issue fee required in the Notice of Allowance or the
balance of the issue feerequired in a subsequent notice. In such
instances, the proposed reply must be the issue feethen in effect, if no
portion of the issue fee was previously submitted, or any outstanding
balance of the issue fee then in effect, if a portion of the issue fee
was previously submitted.
These changes to 1.137(a)(1) (and 1.137(b)(1)) are necessary to
incorporate into 1.137 the revival of abandoned applications and
lapsed patents for the failure to: (1) timely reply to an Office
requirement in a provisional application ( 1.139), (2) timely pay the
issue fee ( 1.155 and 1.316), or (3) timely pay any outstanding
balance of the issue fee ( 1.317).
Section 1.137(a)(3) is amended to provide that a grantable petition
pursuant to 1.137(a) must be accompanied by "[a] showing to the
satisfaction of the Commissioner that the entire delay in filing the
required reply from the due date for the reply until the filing of a
grantable petition pursuant to this paragraph was unavoidable."
Section 1.137(a) deletes the requirement that a petition thereunder be
"promptly filed after the applicant is notified of, or otherwise becomes
aware of, the abandonment." The genesis of the "promptly filed"
requirement in 1.137(a) is the legislative history of Pub. L. 97-247,
3, 96 Stat. 317 (1982) (which provides for the revival of an
"unintentionally" abandoned application), which provides, inter alia,
that:
In order to prevent abuse and injury to the public the Commissioner
could require a terminal disclaimer equivalent to the period of
abandonment and could require applicants to act promptly after becoming
aware of the abandonment.
See H.R. Rep. No. 542, 97th Cong., 2d Sess. 7 (1982), reprinted in 1982
U.S.C.C.A.N. 771 (emphasis added).
Nevertheless, 35 U.S.C. 133 and 151 each require a showing that the
"delay" was "unavoidable," which requires not only a showing that the
delay which resulted in the abandonment of the application was
unavoidable, but also a showing of unavoidable delay until the filing of
a petition to revive. See In re Application of Takao, 17 USPQ2d 1155
(Comm'r Pat. 1990). The burden of continuing the process of presenting a
grantable petition in a timely manner likewise remains with the
applicant until the applicant is informed that the petition is granted.
Id. Thus, an applicant seeking to revive an "unavoidably" abandoned
application must cause a petition under 1.137(a) to be filed without
delay (i.e., promptly upon becoming notified, or otherwise becoming
aware, of the abandonment of the application).
An applicant who fails to file a petition under 1.137(a) "promptly"
upon becoming notified, or otherwise becoming aware, of the abandonment
of the application will not be able to show that "the entire delay in
filing the required reply from the due date for the reply until the
filing of a grantable petition pursuant to [ 1.137(a)] was
unavoidable." The removal of the language in 1.137(a) requiring that
any petition thereunder be "promptly filed after the applicant is
notified of, or otherwise becomes aware of, the abandonment" should not
be viewed as: (1) permitting an applicant, upon becoming notified, or
otherwise becoming aware, of the abandonment of the application, to
delay the filing of a petition under 1.137(a); or (2) changing (or
modifying) the result in In re Application of S, 8 USPQ2d 1630 (Comm'r
Pat. 1988), in which a petition under 1.137(a) was denied due to the
applicant's deliberate deferral in filing a petition under 1.137. An
applicant who deliberately chooses to delay the filing of a petition
under 1.137 (as in Application of S) will not be able to show that
"the entire delay in filing the required reply from the due date for the
reply until the filing of a grantable petition pursuant to [ 1.137(a)]
was unavoidable" or even make an appropriate statement that "the entire
delay in filing the required reply from the due date for the reply until
the filing of a grantable petition pursuant to [ 1.137(b)] was
unintentional."
Therefore, the requirement in 1.137(a) that a petition thereunder be
"promptly filed after the applicant is notified of, or otherwise becomes
aware of, the abandonment" is deleted solely because it is considered
redundant in light of the requirement for a showing that the entire
delay in filing the required reply from the due date for the reply until
the filing of a grantable petition pursuant to 1.137(a) was
unavoidable.
Section 1.137(a)(3) (and 1.137(b)(3)) is further amended to delete
the requirement that the showing (statement) must be a verified showing
or statement if made by a person not registered to practice before the
Patent and Trademark Office. Section 1.56 currently provides that each
individual associated with the filing and prosecution of a patent
application has a duty of candor and good faith. Sections 1.4(d) and
10.18 are amended to provide that a signature on a paper submitted to
the Office constitutes an acknowledgment that willful false statements
are punishable under 18 U.S.C. 1001, and may jeopardize the validity of
the application or any patent issuing thereon. Therefore, requiring
additional verification of a showing or statement under 1.137 would
be redundant. In addition, this requirement results in delays in the
treatment of the merits of petitions that include unverified statements.
Section 1.137(a)(4) (and 1.137(b)(4)) are added to provide that a
grantable petition under 1.137 must be accompanied by "[a]ny terminal
disclaimer (and fee as set forth in 1.20(d)) required pursuant to [
1.137(c)]."
Section 1.137(b) is amended to provide: (1) that it is the paragraph
that applies to petitions under the "unintentional" standard; (2) that
"where the delay in reply was unintentional, a petition may be filed to
revive an abandoned application or a lapsed patent pursuant to [
1.137(b)]"; and (3) the requirements for a grantable petition pursuant
to 1.137(b) in paragraphs (b)(1) through (b)(4).
Section 1.137(b)(1) is amended (as discussed supra) to provide that a
grantable petition under 1.137(b) must be accompanied by "[t]he
required reply, unless previously filed." Section 1.137(b)(1) is amended
to further provide that "[i]n a nonprovisional application abandoned for
failure to prosecute, the required reply may be met by the filing of a
continuing application" and that "[i]n an application or patent,
abandoned or lapsed for failure to pay the issue fee or any portion
thereof, the required reply must be the payment of the issue fee or any
outstanding balance thereof."
Section 1.137(b)(3) is amended to provide that a grantable petition
under 1.137(b) must be accompanied by "[a] statement that the entire
delay in providing the required reply from the due date for the reply
until the filing of a grantable petition pursuant to this paragraph was
unintentional" and that "[t]he Commissioner may require additional
information where there is a question whether the delay was
unintentional." While the Office will generally require only the
statement that the entire delay in providing the required reply from the
due date for the reply until the filing of a grantable petition pursuant
to 1.137(b) was unintentional, the Office may require an applicant to
carry the burden of proof to establish that the delay from the due date
for the reply until the filing of a grantable petition was unintentional
within the meaning of 35 U.S.C. 41(a)(7) and 1.137(b) where there is
a question whether the entire delay was unintentional. See In re
Application of G, 11 USPQ2d 1378, 1380 (Comm'r Pat. 1989).
Section 1.137(b)(4) is amended to delete the one-year filing period
requirement. Section 1.137(b)(4) is amended to provide that a grantable
petition under 1.137 must be accompanied by "[a]ny terminal
disclaimer (and fee as set forth in 1.20(d)) required pursuant to [
1.137(c)]."
Requirement that the entire delay until the filing of a grantable
petition was unavoidable ( 1.137(a)) or unintentional ( 1.137(b)):
There are three periods to be considered during the evaluation of a
petition under 1.137: (1) the delay in reply that originally resulted
in the abandonment; (2) the delay in filing an initial petition pursuant
to 1.137 to revive the application; and (3) the delay in filing a
grantable petition pursuant to 1.137 to revive the application.
Where the applicant deliberately permits an application to become
abandoned (e.g., due to aconclusion that the claims are unpatentable,
that a rejection in an Office action cannot be overcome, or that the
invention lacks sufficient commercial value to justify continued
prosecution), the abandonment of such application is considered to be a
deliberately chosen course of action, and the resulting delay cannot be
considered as "unintentional" within the meaning of 1.137(b). See
Application of G, 11 USPQ2d at 1380. Likewise, where the applicant
deliberately chooses not to seek or persist in seeking the revival of an
abandoned application, or where the applicant deliberately chooses to
delay seeking the revival of an abandoned application, the resulting
delay in seeking revival of the abandoned application cannot be
considered as "unintentional" within the meaning of 1.137(b). An
intentional delay resulting from a deliberate course of action chosen by
the applicant is not affected by: (1) the correctness of the applicant's
(or applicant's representative's) decision to abandon the application or
not to seek or persist in seeking revival of the application; (2) the
correctness or propriety of a rejection, or other objection,
requirement, or decision by the Office; or (3) the discovery of new
information or evidence, or other change in circumstances subsequent to
the abandonment or decision not to seek or persist in seeking revival.
Obviously, delaying the revival of an abandoned application, by a
deliberately chosen course of action, until the industry or a competitor
shows an interest in the invention (a submarine application) is the
antithesis of an "unavoidable" or "unintentional" delay. An intentional
abandonment of an application, or an intentional delay in seeking either
the withdrawal of a holding of abandonment in or the revival of an
abandoned application, precludes a finding of unavoidable or
unintentional delay pursuant to 1.137. See In re Maldague, 10 USPQ2d
1477, 1478 (Comm'r Pat. 1988).
The Office does not generally question whether there has been an
intentional or otherwise impermissible delay in filing an initial
petition pursuant to 1.137(a) or (b), when such petition is filed:
(1) within three months of the date the applicant is first notified that
the application is abandoned; and (2) within one year of the date of
abandonment of the application. Thus, an applicant seeking revival of an
abandoned application is advised to file a petition pursuant to 1.137
within three months of the first notification that the application is
abandoned to avoid the question of intentional delay being raised by the
Office (or by third parties seeking to challenge any patent issuing from
the application).
Where a petition pursuant to 1.137(a) or (b) is not filed within
three months of the date the applicant is first notified that the
application is abandoned, the Office may consider there to be a question
as to whether the delay was unavoidable or even unintentional. In such
instances, the Office may require: (1) a showing as to how the delay
between the date the applicant was first notified that the application
was abandoned and the date a 1.137(a) petition was filed was
"unavoidable"; or (2) further information as to the cause of the delay
between the date the applicant was first notified that the application
was abandoned and the date a 1.137(b) petition was filed, and how
such delay was "unintentional." To avoid delay in the consideration of a
petition under 1.137(a) or (b) in instances in which such petition
was not filed within three months of the date the applicant was first
notified that the application was abandoned, applicants should include a
showing as to how the delay between the date the applicant is first
notified by the Office that the application is abandoned and filing of a
petition under 1.137 was: (1) "unavoidable" in a petition under
1.137(a); or (2) "unintentional" in a petition under 1.137(b).
Where a petition pursuant to 1.137(a) or (b) is not filed within one
year of the date of abandonment of the application (note that
abandonment takes place by operation of law, rather than the mailing of
a Notice of Abandonment), the Office may require: (1) further
information as to when the applicant (or the applicant's representative)
first became aware of the abandonment of the application; and (2) a
showing as to how the delay in discovering the abandoned status of the
application occurred despite the exercise of due care or diligence on
the part of the applicant (or the applicant's representative) (see Ex
parte Pratt, 1887 Dec. Comm'r Pat. 31 (1887)). To avoid delay in the
consideration of a petition under 1.137(a)or (b) in instances in
which such petition was not filed within one year of the date of
abandonment of the application, applicants should include: (1) the date
that the applicant first became aware of the abandonment of the
application; and (2) a showing as to how the delay in discovering the
abandoned status of the application occurred despite the exercise of due
care or diligence on the part of the applicant.
In either instance, applicant's failure to carry the burden of proof to
establish that the "entire" delay was "unavoidable" or "unintentional"
may lead to the denial of a petition under 1.137(a) or 1.137(b),
regardless of the circumstances that originally resulted in the
abandonment of the application.
Section 1.137(d) specifies a time period within which a renewed petition
pursuant to 1.137 must be filed to be considered timely. So long as a
renewed petition is timely filed under 1.137(d) (including any
properly obtained extensions of time), the Office will consider the
delay in filing a renewed petition under 1.137(a) "unavoidable" under
1.137(a)(3), and will consider the delay in filing a renewed petition
under 1.137(b) "unintentional" under 1.137(b)(3). Where an
applicant files a renewed petition, request for reconsideration, or
other petition seeking review of a prior decision on a petition pursuant
to 1.137 outside the time period specified in 1.137(d), the Office
may require, inter alia, a specific showing as to how the entire delay
was "unavoidable" ( 1.137(a)) or "unintentional" ( 1.137(b)). As
discussed supra, a delay resulting from the applicant deliberately
choosing not to persist in seeking the revival of an abandoned
application cannot be considered "unavoidable" or "unintentional" within
the meaning of 1.137, and the correctness or propriety of the
decision on the prior petition pursuant to 1.137, the correctness of
the applicant's (or the applicant's representative's) decision not to
persist in seeking revival, the discovery of new information or
evidence, or other change in circumstances subsequent to the abandonment
or decision to not persist in seeking revival are immaterial to such
intentional delay caused by the deliberate course of action chosen by
the applicant.
Retroactive application of 1.137(b):
There was no prohibition in former 1.137(b) against requests for
waiver of its one-year filing period requirement; however, waiver of the
one-year filing period requirement of former 1.137(b) was subject to
strictly limited conditions ( 1.183). See Final Rule entitled "Changes
in Procedures for Revival of Patent Applications and Reinstatement of
Patents," published in the Federal Register at 58 FR 44277 (August 20,
1993), and in the Official Gazette at 1154 Off. Gaz. Pat. Office 35
(September 14, 1993). Thus, under the terms of former 1.137, an
applicant in an application abandoned for more than one year could file
either a petition under 1.137(a) to revive the application on the
basis of "unavoidable" delay, or a petition under 1.183 and
1.137(b) to revive the application on the basis of "unintentional"
delay. That is, where an application was abandoned for more than one
year, and the delay was "unintentional" but not "unavoidable," it was
incumbent upon an applicant desiring revival of the application to
promptly file a petition under 1.183 and 1.137(b) to revive the
application.
While 1.137(b), as amended, is, by its terms, applicable to
applications abandoned prior to its effective date, 1.137(b)
requires, by its terms, "[a] statement that the entire delay in
providing the required reply from the due date for the reply until the
filing of a grantable petition pursuant to this paragraph was
unintentional." Thus, where an applicant (or the applicant's
representative) previously chose not to seek revival of an application
(e.g., due to the opinion that the former provisions of 1.137(a) or
(b) did not permit revival thereunder), the resulting delay in seeking
revival of the application cannot be considered "unintentional" within
the meaning of 1.137(b). Likewise, where an applicant (or the
applicant's representative) previously requested revival of an
application, received an adverse decision (e.g., a dismissal or denial),
and chose not to persist in seeking revival of the application (e.g., by
request for reconsideration or review), the resulting delay in seeking
revival of the application likewise cannot be considered "unintentional"
within the meaning of 1.137(b). The elimination of the one-year
filing period requirement in 1.137(b) does not create a newright to
overcome any prior intentional delay caused by a deliberate course of
action (or inaction) chosen by the applicant. Thus, any applicant filing
a petition under 1.137 after the effective date of this Final Rule,
but outside the period set in 1.137(d) for seeking reconsideration of
a prior adverse decision on a request to revive an application will be
considered to have acquiesced in the abandonment of the application or
lapse of the patent.
Section 1.137(c) is amended to change the introductory phrase "[i]n all
applications filed before June 8, 1995, and in all design applications
filed on or after June 8, 1995" to "[i]n a design application, a utility
application filed before June 8, 1995, or a plant application filed
before June 8, 1995" for clarity. Section 1.137(c) is further amended to
change the phrase "any petition to revive pursuant to paragraph (a) of
this section" to "any petition to revive pursuant to this section," and
the phrase "not filed within six months of the date of abandonment of
the applications" is deleted. Section 1.137(c) is further amended to
change the phrase "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" to "must
also apply to any patent granted on any continuing application that
contains a specific reference under 35 U.S.C. 120, 121, or 365(c) to the
application for which revival is sought," since it is the claim for, and
not the entitlement to, the benefit of the filing date of the
application for which revival is sought that triggers the requirement
for the filing of a terminal disclaimer in the continuing application.
Section 1.137(d) is amended to change "application" to "abandoned
application or lapsed patent" to incorporate into 1.137 the revival
of lapsed patents. In view of the elimination of a time period from
1.137(b), the provisions of former 1.137(e) are incorporated into
1.137(d) as "[u]nless a decision indicates otherwise, this time period
may be extended under the provisions of 1.136."
Section 1.137(e) is amended to expressly provide that a provisional
application, abandoned for failure to timely reply to an Office
requirement, may be revived pursuant to 1.137(a) or (b) so as to be
pending for a period of no longer than twelve months from its filing
date. In accordance with 35 U.S.C. 111(b)(5), 1.137(e) clearly
indicates that "[u]nder no circumstances will a provisional application
be regarded as pending after twelve months from its filing date." Prior
1.139(a) and (b) each provided that a provisional application may be
revived so as to be pending for a period of no longer than twelve months
from its filing date, and that under no circumstances will a provisional
application be regarded as pending after twelve months from its filing
date.
Comment 63: The majority of comments opposed amending 1.137(a) and
(b) to include time limits based upon the mail date of a notification of
abandonment, as well as the retroactive application of such a change to
the rules of practice. While these comments recognized that any filing
period requirement 1.137 is better based upon the date of
notification, rather than the date of abandonment, they argued that
there will inevitably be instances in which a blameless applicant will
not be able to meet the filing period requirement due to extenuating
circumstances. The majority of comments supported amending 1.137(a)
and (b) to remove the filing period requirement, as well as the
retroactive application of such a change to the rules of practice.
Response: The Office will adopt a 1.137 that does not include filing
period requirements, and will not limit the retroactive application of
1.137(b) as adopted, other than by the terms of the rule (as discussed
supra).
Comment 64: One comment generally supported the change to 1.137(b) to
remove the filing period requirement, but expressed concerns as to the
routine revival of abandoned applications. The comment specifically
suggested that the Office continue to require a high showing to justify
the revival of an abandoned application, especially where the petition
was filed substantially after abandonment or applicant's receipt of the
notice of abandonment.
Response: The Office does not consider the revival of an abandoned
application to be a "routine" matter. The Office will require, inter
alia, a "showing to the satisfaction of the Commissioner that the entire
delay in filing the required reply from the due date for the reply until
the filing of a grantable petition pursuant to [ 1.137(a)] was
unavoidable" as a prerequisite to the grant of any petition based upon
unavoidable delay ( 1.137(a)). The Office will require, inter alia, a
"statement that the entire delay in filing the required reply from the
due date for the reply until the filing of a grantable petition pursuant
to [ 1.137(b)] was unintentional" by a registered practitioner or
other party in interest having firsthandknowledge of the circumstances
surrounding the delay as a prerequisite to the grant of any petition
based upon unintentional delay ( 1.137(b)). The Office expects that
such statement made by a registered practitioner not having first hand
knowledge of the circumstances surrounding the delay be based upon a
reasonable investigation of the circumstances surrounding the
abandonment of the application ( 10.18), and that such statement by
any person be consistent with the duty of candor and good faith and the
duty to disclose material information to the Office ( 1.56).
Regardless of the length of the delay, 1.137(a) requires that the
entire delay in filing the required reply from the due date for the
reply until the filing of a grantable petition pursuant to 1.137(a)
was unavoidable. Likewise, regardless of the length of the delay,
1.137(b) requires that the entire delay in filing the required reply
from the due date for the reply until the filing of a grantable petition
pursuant to 1.137(b) was unintentional. As "unintentional" delay does
not require that the delay have occurred despite the exercise of due
care and diligence (as does "unavoidable" delay), the Office does not
routinely require a "showing" of unintentional delay for a petition
under 1.137(b). However, where there may be a question whether the
delay was unintentional, the Office may require a showing of
unintentional delay for a petition under 1.137(b). Such question may
arise from papers submitted to the Office prior to the petition under
1.137(b) (e.g., a letter of express abandonment, or other communication
evidencing a desire to discontinue prosecution) or from facts set forth
in the petition itself. Such question may also arise simply from the
length of the delay between the date the applicant was notified of the
abandoned status of the application and the date action was taken to
revive the abandoned application, or the length of the period of
abandonment. Specifically, where there is a delay of three months
between the date the applicant was notified of the abandoned status of
the application (i.e., the mail date of the notice of abandonment) and
the date a petition under 1.137(b) was filed, or where the
application was abandoned for more than one year prior to the date a
petition under 1.137(b) was filed, the Office may require further
information and a showing that the delay was unintentional.
Finally, it should be stressed that the mere fact that a petition under
1.137(b) was filed within three months of the date the applicant was
notified of the abandoned status of the application (i.e., the mail date
of the notice of abandonment) or within one year of the date of
abandonment does not imply that the delay was "unintentional." That is,
an applicant who deliberately delays the filing of a petition under
1.137 until three months from the mail dateof the notice of abandonment
(or based upon the one-year anniversary of the date of abandonment)
cannot appropriately make the statement that "the delay was
unintentional." This time frame is provided simply as an indication as
to when an applicant should expect the Office to inquire further into
the circumstances of the abandonment of an application for which a
petition under 1.137(b) is filed, and in which case the applicant may
expedite consideration of such petition by providing information as to
when applicant was notified of the abandoned status of the application,
and the cause of the delay between the date of notification and the date
a petition under 1.137 was filed.
Comment 65: One comment suggested that the Office include in 1.137
all of the basic interpretations and guidelines by which the Office
applies 1.137. The comment specifically suggested that 1.137
include the time periods (e.g., three months) by which the Office
measures the applicant's diligence in taking action to revive the
application and the differences between post-abandonment delay in taking
action to revive the application and any pre-abandonment delay which may
have resulted in the abandonment.
Response: The Office will adopt a 1.137 that does not include filing
period requirements, but requires that the "entire" delay was
"unavoidable" ( 1.137(a)) or "unintentional" ( 1.137(b)). The
requirements for a petition to revive an abandoned application or lapsed
patent are set forth in 1.137; additionally, the Office will set
forth its basic interpretations and guidelines for application of
1.137 (instructional information) in the MPEP.
Section 1.181 provides the basis for generic requests for relief by
petition, and sets forth a two-month time period therein for the timely
filing of a petition ( 1.181(f)). While the three-month time frame
employed by the Office during the consideration petitions under 1.137
exceeds the two-month period in 1.181(f) for the timely filing of a
petition, this three-month period is the most frequently set period for
reply by an applicant (see MPEP 710.02(b)). While the Office considers
the two-month period in 1.181(f) to be the appropriate period by
which the timeliness of a petition should be determined, it is certainly
reasonable to expect that any applicant desiring to restore an abandoned
application to pending status will file a petition under 1.137 to
revive such abandoned application no later than three months after
notification of abandonment of the application. See In re Kokaji, 1
USPQ2d 2005, 2006 (Comm'r Pat. 1986).
The "three-month" time frame set forth in this Final Rule is a guideline
as to when an applicant can expect further inquiry by the Office (and,
as such, should attempt to provide the relevant information in the
initial petition to avoid delay), in that: (1) it is possible that an
applicant is incapable of filing a petition under 1.137 within three
months of the date of notification of abandonment (e.g., pro se
applicant incapacitated from date of notification of abandonment until
action taken to revive the application) rendering the entire delay in
filing the required reply from the due date for the reply until the
filing of a grantable petition unavoidable; and (2) it is also possible
that an applicant, by a deliberately chosen course of action, delays the
filing of a petition under 1.137 until exactly three months after the
date of notification of abandonment to use this period as an extension
of time, in which case a statement that "the entire delay in filing the
required reply from the due date for the reply until the filing of a
grantable petition pursuant to this paragraph was unintentional" is not
appropriate. To avoid substitution of the three-month time frame for
review by the Office forthe requirement for unavoidable or unintentional
delay, the Office will not amend 1.137 to include this time frame.
Comment 66: One comment indicated that the phrase "the delay was
unintentional" is unclear. The comment recited a specific example in
which an applicant, under final rejection,submits an amendment or other
correspondence which is believed by the applicant to place the
application in condition for allowance (and thus constitute a reply
within the meaning of 1.113), and, as such, the applicant, in a
deliberate course of action/inaction, takes no further steps to ensure
the filing a reply within the meaning of 1.113 (e.g., a notice of
appeal) to the final rejection. The comment suggested that 1.137 is
unclear as to whether the delay in this situation, which may be
deliberate or intentional in the literal sense, would constitute an
"unintentional" delay within the meaning of 1.137(b).
Response: The Office has amended 1.137 to require that "the entire
delay in filing the required reply from the due date for the reply until
the filing of a grantable petition" was "unavoidable" ( 1.137(a)) or
"unintentional" ( 1.137(b)). Thus, intentional delays occurring prior
to the due date for reply to avoid abandonment do not preclude relief
pursuant to 1.137. Should the delay in the example given extend past
the extendable due date for reply (under 1.113) to the final
rejection, an appropriate statement of unintentional delay could be made
as the applicant did not intend to have the deadline for reply under
1.113 to the final rejection expire.
In addition, there is a distinction between: (1) a delay resulting from
an error in judgment as to whether to permit an application to become
abandoned (whether to prosecute the application) or whether to seek or
persist in seeking the revival of the abandoned application; and (2) a
delay resulting from an error in judgment as to the steps necessary to
continue the prosecution delay in seeking revival of the application.
Where the abandonment and ensuing delay results from an error in
judgment as to whether to permit an application to become abandoned
(whether to prosecute the application) or whether to seek or persist in
seeking the revival of the abandoned application, the abandonment of
such application is considered a deliberately chosen course of action,
and the resulting delay cannot be considered "unintentional" within the
meaning of 1.137(b). Where, however, an error in judgment asto the
steps necessary to continue prosecution results in abandonment of the
application, the abandonment of such application is not necessarily
considered a deliberately chosen course of action, and the resulting
delay may be considered "unintentional" within the meaning of
1.137(b).
However, 1.116 and 1.135(b) are manifest that proceedings
concerning an amendment after final rejection will not operate to avoid
abandonment of the application in the absence ofa timely and proper
appeal. Unless the applicant is informed in writing that the application
is allowed prior to the expiration of the period for reply to the final
Office action, it is the applicant's responsibility to timely file a
notice of appeal (and fee) to avoid the abandonment of the application.
The abandonment of an application subject to a final Office action is
not "unavoidable" within the meaning of 35 U.S.C. 133 and 1.137(a) in
the situation in which the applicant simply permits the maximum
extendable statutory period for reply to a final Office action to expire
while awaiting a notice of allowance or other action.
Comment 67: One comment opposed the changes to 1.137 on the bases
that: (1) it permits submarine patents, in that an applicant may permit
an application to become abandoned and wait to see whether the invention
was developed by other entities; and (2) the revival of along-abandoned
application will have an adverse impact on the examiner, in that the
examiner who originally examined that application may no longer be at
the Office, or will have to reacquaint himself or herself with the
application.
Response: The change to 1.137(b) does not permit an applicant to
obtain revival where either: (1) the applicant deliberately permitted
the application to become abandoned; or (2) the applicant deliberately
delayed seeking revival to see whether the invention was developed by
other entities. It is well established that where applicant deliberately
permits an application to become abandoned, the abandonment of such
application is considered a deliberately chosen course of action, and
the resulting delay cannot be considered "unintentional" within the
meaning of 1.137(b). See Application of G, 11 USPQ2d at 1380.
Likewise, where the applicant deliberately chooses not to either seek or
persist in seeking the revival of an abandoned application, the
resulting delay in seeking revival of the application cannot be
considered "unintentional" within the meaning of 1.137(b). The
intentional abandonment of an application, or an intentional delay in
seeking either the withdrawal of a holding of abandonment in or the
revival of an abandoned application, precludes a finding of unavoidable
or unintentional delay pursuant to 1.137. See Maldague, 10 USPQ2d at
1478.
While it is possible for an applicant to make a misleading statement
that the delay was unintentional to obtain revival of an abandoned
application, the Office simply must rely upon the candor and good faith
of those prosecuting patent applications (e.g., it is equally possible
for a party to fabricate evidence and obtain the revival of a
long-abandoned application on the basis of unavoidable delay). Any
applicant obtaining revival based upon a misleading statement that the
delay was unintentional may find the achievement short-lived as a result
of the question of intentional delay being raised by third parties
challenging any patent issuing from the application.
The revival of any long-abandoned application will have an adverse
impact on the examiner; however, long-abandoned applications have been
previously revived pursuant to 1.137(a) on the basis of unavoidable
delay. See In re Lonardo, 17 USPQ2d 1455 (Comm'r Pat.1990) (application
revived after being abandoned for more than sixteen years). Thus, this
change to 1.137(b) will not create a burden on examiners that did not
exist before, and could in fact reduce the burden as a result of the
requirement that in applications abandoned for excessive periods of time
would have to show that the entire delay was "unavoidable" or
"unintentional."
Comment 68: One comment suggested that the two-year limitation in 35
U.S.C. 41(c) is a "good compromise" in regard to a filing period for
filing petitions to revive based upon unintentional delay.
Response: The suggestion is not adopted. Changing the one-year filing
period requirement in 1.137(b) to a two-year filing period
requirement would not substantially change the problem caused by a
filing period requirement, namely, that it causes inequitable results in
certain instances. In addition, the inclusion of any filing period
requirement in 1.137(a) or (b) will likely induce applicants, or
their representatives, to delay the filing of a petition under 1.137
until the end of such filing period. See Application of S, 8 USPQ2d at
1632. The Office has no discretion in regard to the twenty-four month
filing period requirement in 35 U.S.C. 41(c), but the presence of a
twenty-four month filing period requirement in 35 U.S.C. 41(c) does not
imply that the Office must place a twenty-four month filing period
requirement into the rules implementing 35 U.S.C. 41(a)(7), which
contains no filing period requirement.
Comment 69: One comment opposed the changes to 1.137 on the basis
that the right to revive an abandoned application should be limited due
to the public's right to practice a technology "that an applicant has
abandoned."
Response: 35 U.S.C. 41(a)(7) authorizes the Office to revive an
abandoned application wherethe abandonment was unintentional (or
unavoidable, the epitome of unintentional), but not where the
abandonment was intentional. Section 1.137 does not authorize the
revival of an abandoned application where the applicant, by deliberate
course of action, has abandoned an application or delayed seeking its
revival. Additionally, in many instances the disclosure in a patent
maturing from a revived application would not have been disclosed and
the technology therein would not be public knowledge, but for the
revival of the application.
Comment 70: One comment suggested the need for an intervening rights
provision to protect innocent infringers.
Response: The issue of intervening rights relates to the enforcement of
patent rights, which does not directly concern the conduct of
proceedings in the Office. Thus, it is unclear whether the Office is
authorized under 35 U.S.C. 6 to promulgate regulations including an
intervening rights provision.
Comment 71: Several comments suggested that 1.137(b) be amended to
include the "promptly filed" requirement of 1.137(a).
Response: The suggestion is effectively adopted, although via a
different mechanism as explained below. While there is considerable
merit to the suggestion for the inclusion of a"promptly filed"
requirement in both 1.137(a) and (b), the Office has eliminated the
"promptly filed" requirement from 1.137(a) to avoid confusion between
"promptly filed" and "unavoidable delay." The phrase "promptly filed"
has been associated with 1.137(a)and its requirement for
"unavoidable" delay, and, as such, the inclusion of a "promptly filed"
requirement in 1.137(b) might cause confusion in regard to the
distinction between the circumstances that constitute unavoidable delay
and the circumstances that constitute unintentional delay.
Section 1.137(a)(3) and (b)(3) as adopted requires that "the entire
delay in filing the required reply from the due date for the reply until
the filing of a grantable petition" has been "unavoidable" ( 1.137(a))
or "unintentional" ( 1.137(b)) to clarify the requirements for a
petition under 1.137(a) and (b). As discussed supra, an applicant who
fails to file a petition under 1.137(a) or (b) "promptly" upon
becoming notified, or otherwise becoming aware, of the abandonment of
the application will not be able to show that "the entire delay in
filing the required reply from the due date for the reply until the
filing of a grantable petition pursuant to [ 1.137(a)] was
unavoidable," and will probably not even be able to make an appropriate
statement that "the entire delay in filing the required reply from the
due date for the reply until the filing of a grantable petition pursuant
to [ 1.137(b)] was unintentional." Obviously, any petition under
1.137(a) or (b) should be "promptly filed" upon discovery of abandonment
to avoid a question as to whether the filing of such a petition was
intentionally delayed.
Comment 72: One comment questioned how a patent could lapse for failure
to pay the issue fee, as a patent does not issue unless the issue fee is
paid.
Response: 35 U.S.C. 151 provides that where an applicant timely submits
the sum specified in the Notice of Allowance as the issue fee, but a
balance of the issue fee remains outstanding (due to a fee increase),
the patent will lapse unless the balance of the issue fee is timely
paid. See Mills, 12 USPQ2d at 1848; see also Ex parte Crissy, 201 USPQ
689 (Bd. Pat. App.1976).
Comment 73: One comment suggested that 1.137(a)(1) and (b)(1) not
require a continuing application if the application became abandoned for
failure to reply to a non-final Office action.
Response: Section 1.137(a)(1) and (b)(1) each provide that a petition
thereunder include:
The required reply, unless previously filed. In a nonprovisional
application abandoned for failure to prosecute, the required reply may
be met by the filing of a continuing application. In an application or
patent, abandoned or lapsed for failure to pay the issue fee or any
portion thereof, the required reply must be the payment of the issue fee
or any outstanding balance thereof.
As discussed supra, there may be circumstances under which the Office
may require a continuing application to meet this reply requirement.
Nevertheless, in a nonprovisional application abandoned for failure to
prosecute, a continuing application is generally apermissive (i.e., "may
be met") reply, in that an applicant in a nonprovisional application
abandoned for failure to prosecute may file a reply under 1.111 to a
non-final Office action or a reply under 1.113 (e.g., notice of
appeal) to a final Office action, or may simply file a continuing
application as the required reply. In an application or patent,
abandoned or lapsed for failure to pay any portion of the required issue
fee, the issue fee or any outstanding balance thereof is the mandatory
(i.e., "must be") reply. As the "continuing application"option is
limited to an abandoned nonprovisional application, the reply in an
abandoned provisional application must be any outstanding reply to an
Office requirement.
Comment 74: One comment suggested that 1.137(c) be amended to take
into account the provision in 35 U.S.C. 154(c) that an application
(other than a design application) is entitled to a patent term of not
less than twenty years from its filing date, or if the application
contains a specific reference to an earlier filed application(s) under
35 U.S.C. 120, 121, or 365(c), the date twenty years from the filing
date of the earliest such application(s).
Response: The suggestion is not adopted. The Office considers this
situation to be applicableto a relatively small class of applications,
and, as such, does not deem it prudent to introduce into 1.137(c) the
complexity necessary to account for this situation. Applicants in this
situation (e.g., instances in which an application filed prior to June
8, 1995, is to be revived solely for purposes of copendency with an
application filed on or after June 8, 1995) may file a petition pursuant
to 1.183 requesting that the Office waive the provisions of
1.137(c) to the extent that 1.137(c) requires a disclaimer of the
period in excess of the date twenty years from the filing date of the
application, or if the application contains a specific reference to an
earlier filed application(s) under 35 U.S.C. 120, 121, or 365(c), the
date twenty years from the filing date of the earliest such
application(s). The Office will refund the 1.17(h) petition fee if
the 1.183 petition is granted.
Comment 75: One comment suggested that the last paragraph of 1.137
read:
Under no circumstance may a petition to revive a provisional
application be filed more than twelve months after the filing date of
the provisional application. No application filed more than twelve
months after the filing date of a provisional application is entitled to
a claim of priority from the provisional [application], notwithstanding
the copendency of any petition to revive the provisional application.
Response: The suggestion is not adopted. 35 U.S.C. 111(b)(3)(C)
authorizes the revival of an abandoned application on the basis of
unavoidable or unintentional delay. 35 U.S.C.111(b)(5) provides that a
"provisional application shall be regarded as abandoned 12 months after
the filing date of such application and shall not be subject to revival
thereafter." 35 U.S.C. 111(b) does not contain any limitation on the
filing date of a petition to revive an abandoned provisional application
(or the date by which such a petition must be granted), but only a
limitation as to the period of pendency of the provisional application.
Thus, 1.137(e) as adopted provides that "[a] provisional application
. . . may be revived . . . so as to be pending for a period of no longer
than twelve months from its filing date. Under no circumstances will a
provisional application be regarded as pending after twelve months from
its filing date."
Section 1.139: Section 1.139 is removed and reserved and its subject
matter added to 1.137.
No comments were received regarding the proposed change to 1.139.
Section 1.142: Section 1.142 is amended by replacement of "response"
with "reply" in accordance with the change to 1.111.
No comments were received regarding the proposed change to 1.142.
Section 1.144: Section 1.144 is amended for clarification purposes.
No comments were received regarding the proposed change to 1.144.
Section 1.146: Section 1.146 is amended for clarification purposes.
No comments were received regarding the proposed change to 1.146.
Section 1.152: Section 1.152 is amended to place its former provisions
into paragraphs (a),(a)(1), and (a)(2) for clarification.
Section 1.152 is also amended to remove the prohibition against color
drawings and color photographs in design applications. Section 1.152 is
amended to permit the use of color photographs and color drawings in
design applications subject to the petition requirements of
1.84(a)(2) inasmuch as color may be an integral element of the
ornamental design. While pen and ink drawings may be lined for color, a
clear showing of the configuration of the design may be obscured by this
drafting method. New technologies, such as holographic designs,
fireworks and laser light displays may not be accurately disclosed
without the use of color.
The term "article" of 1.152(a) is replaced by the term "design" as 35
U.S.C. 171 requires that the claim be directed to the "design for an
article" not the article, per se. Therefore, to comply with the
requirements of 35 U.S.C. 112, 1, it is only necessary that the design
as embodied in the article be fully disclosed and not the article
itself. The term "must" has been replaced by the term "should" to allow
for latitude in the illustration of articles whose configuration may be
understood without surface shading. Clarification language has been
added to note that the use of solid black surfaces is permitted for
representation of the color black as well as color contrast and that
photographs and ink drawings must not be combined as formal drawings in
one application.
A new 1.152(b) is added to clarify Office practice concerning details
disclosed in the ink drawings, color drawings, or photographs deposited
with the original application papers. Specifically, 1.152(b) provides
that any details disclosed in the ink or color drawings, or photographs
deposited with the original application papers constitutes an integral
part of the disclosed and claimed design, except as otherwise provided
in 1.152(b). Section 1.152(b) further specifies that this detail may
include color or contrast, graphic or written indicia, including
identifying indicia of a proprietary nature (e.g., a company logo),
surface ornamentation on an article, or any combination thereof. The
"but not limited to" phrase in 1.152(b) clarifies that this list is
exemplary, not exhaustive.
Section 1.152(b)(1) provides that when any detail shown in informal
drawings or photographs does not constitute an integral part of the
disclosed and claimed design, a specific disclaimer must appear in the
original application papers either in the specification or directly on
the drawings or photographs. This specific disclaimer in the original
application papers will provide antecedent basis for the omission of the
disclaimed detail(s) in later-filed drawings orphotographs. That is, in
the absence of such a disclaimer, later-filed formal or informal
drawings not including any detail disclosed in the original drawings
will be considered tocontain new matter, and will be treated
accordingly. See 35 U.S.C. 112, 1; 1.121(a)(6).
Comment 76: One comment stated that applicant may misunderstand the
implications of submitting a design drawing in color and suggested that
1.152 should explain and give notice of the consequences of submitting
an initial color drawing in design applications.
Response: The comment has been adopted.
Section 1.152(b)(2) provides that when informal color drawings or
photographs are deposited with the original application papers without a
disclaimer pursuant to 1.152(b)(1), formal color drawings or
photographs, or a black and white drawing lined to represent color, will
be required.
Section 1.154: The heading of 1.154 is amended to read "[a]rrangement
of application elements" for consistency with 1.77 and 1.163.
Section 1.154 paragraph (a) is amended to clarify that a voluntary
submission (see comments under 1.152 relating to substitution of
"design" for "article") may and should be made of "a brief description
of the nature and intended use of the article in which the design is
embodied." It is current practice for design examiners, in appropriate
cases, to inquire as to the nature and intended use of the article in
which a claimed design is embodied. The submission of such description
will allow for a more accurate initial classification, and aid in
providing a proper and complete search at the time of the first action
on the merits. In those instances where this feature description is
necessary to establish a clear understanding of the article in which the
design is embodied, provision of the feature description would help in
reducing pendency by eliminating the necessity for time-consuming
correspondence. Specifically, requests for information prior to first
action would be avoided. Absent an amendment requesting deletion of the
description it would be printed on any patent that would issue.
No comments were received regarding the proposed change to 1.154.
Section 1.155: Section 1.155 is amended to include only the language of
former 1.155(a). The subject matter of former paragraphs (b) through
(f) of 1.155 were added to 1.137.
No comments were received regarding the proposed change to 1.155.
Section 1.163: The heading of 1.163 is amended to read
"[s]pecification and arrangement of application elements" for
consistency with 1.77 and 1.154. Section 1.163(b) is amended to
remove an unnecessary and outmoded reference to a "legible carbon copy
of the original" specification for plant applications.
No comments were received regarding the proposed change to 1.163.
Section 1.165: The proposed amendment to 1.165 to remove the
reference to the artistic and competent execution of plant patent
drawings is withdrawn.
Comment 77: One comment argued that the language proposed to be deleted
was actually relied upon by examiners to obtain new and better
illustrations.
Response: The comment was adopted to the extent that the proposed change
is withdrawn to allow for further study of what language related to the
type of plant drawings should appear in 1.165.
Section 1.167: Section 1.167 is amended to include only the language of
former 1.167(a), in that paragraph (b) is removed as unnecessary in
view of 1.132.
Comment 78: One comment questioned whether 1.132 covers paragraph (b)
of 1.167, which paragraph has been deleted.
Response: Paragraph (b) of 1.167 provided for the submission of
affidavits by qualified agricultural or horticultural experts regarding
the novelty and distinctiveness of the variety of plant. Section 1.132
relates to affidavits traversing grounds of rejection, and is recognized
as the appropriate rule under which an affidavit may be submitted which
does not fall within or under other specific rules. See MPEP 716.
Section 1.171: Section 1.171 is amended to no longer require an order
for a title report in reissue applications as the requirement for a
certification on behalf of all the assignees under concomitantly amended
1.172(a) obviates the need for a title report and fee therefor.
Section 1.171 is also amended by deletion of the requirement for an
offer to surrender the patent, which offer is seen to be redundant in
view of 1.178.
No adverse comments were received regarding the proposed change to
1.171.
Section 1.172: Section 1.172 is amended to require that all assignees
establish their ownership interest in compliance with 3.73(b). The
amendment as originally proposed repeated requirements found in
3.73(b) rather than incorporating 3.73(b), as assignees of a part
interest are frequently involved in reissue applications.
Comment 79: One comment noted that the proposed amendment repeated
requirements already found in 3.73(b) and was unnecessary.
Response: The comment was adopted, in that 1.172 is amended to simply
reference 3.73(b). Section 3.73(b) is amended to replace a reference
to an assignee of the entire right, title and interest with a reference
to an assignee, so as to include assignees of a part interest.
Section 1.175: Section 1.175 relating to the content of the reissue oath
or declaration (MPEP1414), as well as 1.48 and 1.324 relating to
correction of inventorship in an application and in a patent,
respectively, are amended to remove the requirement for a factual
showing relating to a matter in which a lack of deceptive intent must be
established. A statement as to a lack of deceptive intent is sufficient
to meet the statutory requirement under 35 U.S.C. 251 of a lack of
deceptive intent relating to the error(s) to be corrected by reissue,
and a factual showing of how the error(s) to be corrected by reissue
arose or occurred is not required. As the Office no longer investigates
fraud and inequitable conduct issues and a reissue applicant's statement
of a lack of deceptive intent is normally accepted on its face (See MPEP
1448), the requirement in former 1.175(a)(5) that it be shown how the
error(s) being relied upon arose or occurred without deceptive intent on
the part of the applicant appears to be unduly burdensome upon
applicants and the Office, and is deleted. This applies to the initially
identified error(s), under paragraph (a), and any subsequently
identified error(s) under paragraph (b).
Comment 80: Although the elimination of the requirement for a factual
showing relating to how the errors arose or occurred enjoyed
overwhelming support, three comments cited the need for continued
investigation by the Office. One comment, while agreeing that some
relaxation of reissue oath or declaration requirements are in order,
stated that the Office should not decline to investigate entirely or
adopt a pro forma requirement that can merely be incanted. Two comments
stated that it is hard to get the courts to review this issue and that
the courts and the public are at a disadvantage absent an explanation of
how the error occurred.
Response: Current Office practice is to reject reissue applications only
where there is "smoking gun" evidence of deceptive intent, which will
not be demonstrated by the type of inquiry limited to a showing of how
the error arose or occurred without the ability to subpoena witnesses or
evidence. Accordingly, the burden presented on all reissue applicants
based on the mere collection of such information for every error is not
seen to be warranted.
Comment 81: One comment suggested that a final declaration is not
needed, and that, as an alternative, counsel should be allowed to submit
a statement based on information and belief counsel is not aware of
deceptive intent.
Response: 35 U.S.C. 251 requires that an error have been made without
deceptive intention to be corrected via reissue. Accordingly, all errors
being corrected by reissue must have been made without deceptive
intention, in that an error made with deceptive intention cannot be
bootstrapped onto an error made without deceptive intention and
corrected via reissue. The parties with the best knowledge of the lack
of deceptive intention are the patentees and owners of the patent, not
counsel for the reissue application.
An initial reissue oath or declaration filed pursuant to 1.175(a) is
limited to identification ofthe cause(s) of the reissue, and stating
generally that all errors being corrected in the reissue application at
the time of filing of the oath or declaration arose without deceptive
intent. Paragraph (a)(1) requires the identification of at least one
error and only one error may be identified as the basis for reissue. The
current practice under 1.175(a)(3) and (a)(5) of specifically
identifying all errors being corrected at the time of filing the initial
oath or declaration is not retained. Although only one error need be
identified to provide a basis for reissue, where only one error among
more than one is so identified, applicant should carefully monitor that
the error is retained or submit a supplemental oath or declaration
identifying another error or errors.
Comment 82: One comment suggested that since a reissued patent and a
reexamined patent may also be reissued, paragraph (a)(1) of 1.175 may
be clarified to substitute for "original patent" "reissued," or
"existing patent" as what is wholly or partly inoperative or invalid.
Response: The effect of a reissue or reexamination proceedings is to
cause a substitution for the original patent so that the reissued or
reexamined patent becomes the original patent.
Paragraph (b)(1) of 1.175 requires a supplemental reissue oath or
declaration for errors corrected that were not covered by an earlier
presented reissue oath or declaration, such as the initial oath or
declaration pursuant to paragraph (a) of this section or one submitted
subsequent thereto (a supplemental oath or declaration under this
paragraph), stating generally that all errors being corrected, which are
not covered by an earlier presented oath or declaration pursuant to
1.175(a) and (b), arose without any deceptive intention on the part of
the applicant. A supplemental oath or declaration that refers to all
errors that are being corrected, including errors covered by a reissue
oath or declaration submitted pursuant to paragraph (a) of this section,
would be acceptable. The specific requirement for a supplemental reissue
oath or declaration to cover errors sought to be corrected subsequent to
the filing of an initial reissue oath or declaration is not a new
practice, but merely recognition of a current requirement for a
supplemental reissue oath or declaration when additional errors are to
be corrected. However, the current practice of specifically identifying
all supplemental errors being corrected in a supplemental reissue oath
or declaration is not retained.
A supplemental oath or declaration under paragraph (b)(1) must be
submitted prior to allowance. The supplemental oath or declaration may
be submitted with any amendment prior to allowance, paragraph (b)(1)(i),
or in order to overcome a rejection under 35 U.S.C. 251 made by the
examiner where there are errors sought to be corrected that are not
covered by a previously filed reissue oath or declaration, paragraph
(b)(1)(ii). Any such rejection by theexaminer will include a statement
that the rejection may be overcome by submission of a supplemental oath
or declaration, which oath or declaration states that the errors in
issue arose without any deceptive intent on the part of the applicant.
An examiner ordinarily will be introducing a rejection under 35 U.S.C.
251 based on the lack of a supplemental declaration for the first time
in the prosecution once the claims are determined to be otherwise
allowable. The introduction of a new ground of rejection under 35 U.S.C.
251 will not prevent an action from being made final, except first
actions pursuant to 1.113(c), because of the combination of the
following factors: (1) the finding of the case in condition for
allowance is the first opportunity that the examiner has to make the
rejection; (2) the rejection is being made in response to an amendment
of the application (to deal with the errors in the patent); (3) all
applicants are on notice that this rejection will be made upon finding
of the case otherwise in condition for allowance where errors have been
corrected subsequent to the last oath or declaration filed in the case,
therefore, the rejection should have been expected by applicant; and (4)
the rejection will not prevent applicant from exercising any rights as
to curing the rejection, since applicant need only submit the
supplemental oath or declaration with the above-described language, and
it will be entered to cure the rejection provided it raises no
additional issue, such as an informality or substantive reissue question
(e.g., a previously omitted claim for priority under 35 U.S.C. 119).
A supplemental oath or declaration under paragraph (b) of this section
would only be required for errors sought to be corrected during
prosecution of the reissue application. Where an Office action contains
only a rejection under 35 U.S.C. 251 and indicates that a supplemental
oath or declaration under this paragraph would overcome the rejection,
applicants are encouraged to authorize the payment of the issue fee at
the time the supplemental reissue oath or declaration is submitted in
view of the clear likelihood that the reissue application will be
allowed on the next Office action. Such authorization will reduce the
delays in the Office awaiting receipt of the issue fee. Where there are
no errors to be corrected over those already covered by an oath or
declaration submitted under paragraphs (a) and (b)(1) of this section
(e.g., the application is allowed on first action), or where a
supplemental oath or declaration has been submitted prior to allowance
and no further errors have been corrected, a supplemental oath or
declaration under this paragraph, or additional supplemental oath or
declaration under paragraph (b)(1), would not be required.
Paragraph (b)(2) provides that for any error sought to be corrected
after allowance (e.g.,under 1.312), a supplemental oath or
declaration must accompany the requested correction stating that the
error(s) to be corrected arose without any deceptive intent on the part
of the applicant.
The quotes around lack of deceptive intent, currently found in
1.175(a)(6), are removed as the exact language is not required. The
reference to 1.56, currently found in 1.175(a)(7), is removed as
unnecessary in view of the reference to 1.56 in 1.63 that is also
referred to by 1.175(a). The stated ability of applicant to file
affidavits or declarations of others and the ability of the examiner to
require additional information, currently found in 1.175(b), is
deleted as unnecessary in view of 35 U.S.C. 131 and 35 U.S.C 132.
New paragraph (c) of 1.175 has been rewritten to clarify its intent
that a subsequently submitted oath or declaration under this section
need not identify any errors other than what was identified in the
original oath or declaration provided at least one of the originally
identified errors to be corrected is retained to provide a basis for the
reissue.
In new paragraph (d) of 1.175 a reference to 1.53(f) is inserted
to clarify that the initial oath or declaration under 1.175(a)
including those requirements under 1.63 need not be submitted (with
the specification, drawing and claims) in order to obtain a filing date.
Section 1.176: The adoption of a final change to 1.176 is held in
abeyance pending further consideration by the Office of the decision by
the Federal Circuit in In re Graff, 111 F.3d874, 42 USPQ2d 1471 (Fed.
Cir. 1997). Graff involved two issues: (1) whether it is permissible to
have a continuation of a reissue application when the reissue
application has issued as a reissue patent; and (2) whether broadened
claims can be presented more than two years after the original patent
date in a reissue application which was filed within two years but did
not include any broadened claims. While Graff is more directly related
to 1.177 than 1.176, 1.176 and 1.177 are sufficiently
interrelated that the Office considers it appropriate to hold the final
changes to both 1.176 and 1.177 in abeyance pending further
consideration by the Office of the decision in Graff.
Comment 83: A comment requested clarification regarding how restriction,
between claims added in a reissue application and the original patent
claims, by the examiner would be permitted in 1.176 while 1.177
would prohibit multiple reissue patents except among the distinct and
separate parts of the thing patented.
Response: The comment will receive further consideration when a final
change to 1.176 is adopted.
Section 1.177: Section 1.177 was proposed to be amended to discontinue
the current practice that copending reissue applications must be issued
simultaneously unless ordered otherwise by the Commissioner pursuant to
petition. As discussed supra, the adoption of a final change to 1.177
is held in abeyance pending further consideration by the Office of the
decision in Graff.
Comment 84: One comment would limit the granting of multiple reissue
patents on different dates to where a petition for the grant of multiple
reissue patents has been approved prior to the issuance of any reissue
patent. Another comment thought that only one petition fee should be
charged notwithstanding whether a petition in more than one reissue
application is required.
Response: The comments will receive further consideration when a final
change to 1.177 is adopted.
Section 1.181: The proposed change to 1.181 will not be made, see
comments relating to 1.101.
Comment 85: One comment requested that the material to be deleted from
1.181, paragraphs (d), (e), and (g) should be retained as they give
fair warning to all and the consequences of failure to pay a petition
fee.
Response: The comment has been adopted.
Section 1.182: Section 1.182 is amended by providing that a petition
under the section may be granted "subject to such other requirements as
may be imposed" by the Commissioner, language similar to that appearing
for petitions under 1.183. The proposal to remove the statement that
a decision on a petition thereunder will be communicated to interested
parties in writing is withdrawn.
Comment 86: One comment opposed the proposal to remove the statement
that a decision on a petition under 1.182 will be communicated to
interested parties in writing, arguing that it would not be appropriate
for the Office to decide a petition under 1.182 without communicating
the decision to the interested parties in writing.
Response: The suggestion is adopted. The Office did not propose to
remove the statement that a decision on a petition under 1.182 will
be communicated to interested parties in writing because the Office
intended to discontinue providing written decisions on petitionsunder
1.182 (or any other petition), but because it was considered unnecessary
to state as much in the rule itself. While the Office will communicate
the decision on any petition under 1.182 to the interested parties in
writing, such decision may not always take the form of a traditional
decision on petition. For example, the grant of a petition under
1.182 to accept the omitted page(s) or drawing(s) in a nonprovisional
application and accord the date of such submission as the application
filing date will be indicated by the issuance of a new filing receipt
stating the filing date accorded the application. See Notice entitled
"Change in Procedure Relating to an Application Filing Date" published
in the Federal Register at 61 FR30041, 30043 (June 13, 1996), and in the
Official Gazette at 1188 Off. Gaz. Pat. Office 48, 50-51 (July 9, 1996).
Section 1.184: Section 1.184 is removed and reserved as representing
internal instructions.
Comment 87: Comments suggested that 1.184 not be deleted
notwithstanding its internal directions. See response to comment
relating to 1.101.
Section 1.184 relates to the refusal of a subsequent Commissioner to
reconsider a case once decided by a previous Commissioner, except in
accordance with principles which govern the granting of new trials. As
the Commissioner is free to waive any requirement of the rules not
required by statute, the prohibition against reconsideration is
ineffective. Additionally, the deletion of the material does not
necessarily represent an intent to engage in reconsideration of matters
previously decided.
Section 1.191: Section 1.191(a) is amended to permit every applicant,
and every owner of a patent under reexamination, any of whose claims
have been twice or finally ( 1.113) rejected (rather than "any of the
claims of which have been twice rejected or given a final rejection (
1.113)"), to file an appeal to the Board of Patent Appeals and
Interferences (Board) to better track the language of 35 U.S.C. 134.
Section 1.191(a) is also amended to: (1) explicitly refer to a "notice
of appeal" to provide antecedent for such term in 1.192; (2) replace
"response" with "reply" in accordance with the change to 1.111; and
(3) refer to 1.17(b) for consistency with the change to 1.17.
Comment 88: One comment argued that the proposed change to 1.191,
limiting the "twice rejected" requirement for appeal to a particular
application, was inconsistent with 35 U.S.C.134, as indicated by the
Board in the unpublished decision Ex parte Lemoine, Appeal No. 94-0216
(Bd. Pat. App. & Inter., December 27, 1994). A second comment argued
that 1.191 should permit an appeal based on one rejection in a prior
application and one rejection in a continuing application to avoid
requiring an applicant to file a pro form a reply to meet the
requirement that the particular application be twice rejected.
Response: The comments have been adopted by elimination of the
limitation to twice rejected being related to a particular application.
To avoid inconsistency between 1.191 and 35 U.S.C. 134, 1.191 as
adopted tracks the language of 35 U.S.C. 134, except that 1.191
states "twice or finally ( 1.113) rejected" rather than "twice
rejected." The patent statute and rules of practice do not permit an
application to be finally rejected (even under first actionfinal
practice) under 35 U.S.C. 132, unless the applicant is one "whose claims
have been twice rejected" within the meaning of 35 U.S.C. 134. Thus, the
phrase "or finally ( 1.113)" may be viewed as redundant. Nevertheless,
as applicants generally delay appeal until final action (although Pub.
L. 103-465 may change this practice), and there has been some confusion
as to when 35 U.S.C. 134 and 1.191 permit an applicant to appeal a
rejection, 1.191(a) as adopted states "twice or finally ( 1.113)
rejected."
Section 1.191(b) is amended to eliminate the requirement for a notice of
appeal to: (1) besigned; or (2) identify the appealed claims. These two
requirements have been deleted as being redundant of the requirements of
1.192 for an appeal brief, which is necessary to avoid dismissal of
the appeal. Section 1.33 requires that an appeal brief filed in either
an application ( 1.33(b)) or a reexamination proceeding ( 1.33(c))
be signed. Thus, a signed appeal brief under 1.192 (which must be
filed to avoid dismissal of the appeal) will serve to, in effect, ratify
any unsigned notice of appeal under 1.191. Likewise, the former
requirement of 1.191(b) for an identification of the appealed claims
is unnecessary as 1.192(c)(3) requires that the appeal brief, inter
alia, identify the "claims appealed." While it is no longer specifically
required by 1.191(b), an applicant or patent owner should continue to
sign notice of appeals under 1.191(b) (like other papers) and to also
identify the claims appealed. The change to 1.191(b), in effect,
permits an appeal brief to constitute an automatic "correction" of a
notice of appeal that is not signed or does not identify the appealed
claims.
The failure to timely file an appeal brief will result in dismissal of
an appeal ( 1.192(b)). Thus, the failure to timely file an appeal
brief (signed in compliance with 1.33(b) or (c)) after the filing of
an unsigned notice of appeal will result in dismissal of the appeal as
of the expiration date (including any extensions of time actually
obtained) for filing such appeal brief. It will not result in treatment
of the application or patent under reexamination as if the notice of
appeal had never been filed. This distinction is significant in an
application containing allowed claims, in that dismissal of an appeal
results in cancellation of the rejected claims and allowance of the
application, not abandonment of the application (which would have
occurred if the notice of appeal had never been filed).
The Office has eliminated the requirements for a notice of appeal to be
signed and to identify the appealed claims to avoid the delay and
expense to the applicant and the Office that is involved in treating a
defective notice of appeal. These changes were not made to encourage the
filing of unsigned notices of appeal or notices of appeal that do not
identify the claims being appealed; rather, a notice of appeal should be
signed and identify the claims appealed. As the change to 1.191(b)
does not affect other papers submitted with a notice of appeal (e.g., an
amendment under 1.116) or other actions contained within the notice
of appeal (e.g., an authorization to charge fees to a deposit account),
the failure to sign a notice of appeal (or accompanying papers) may have
adverse effects notwithstanding the change to 1.191(b). For example,
an unsigned notice of appeal filed with an authorization (unsigned) to
charge the appeal fee to a deposit account as payment of the notice of
appeal fee ( 1.17(b)) will be unacceptable as lacking the appeal fee,
as 1.191(b) applies to the notice of appeal, but not to an
authorization to charge a deposit account that happens to be included in
the notice of appeal.
Section 1.192: Section 1.192(a) is amended by replacement of "response"
with "reply" in accordance with the change to 1.111, and to refer to
1.17(c) for consistency with the change to 1.17.
Comment 89: One comment suggested that the appeal process could be
improved by the imposition of a reasonable page limit on briefs.
Response: The suggestion will be reviewed for further consideration.
Section 1.193: Section 1.193, as well as 1.194, 1.196, and 1.197,
are amended to change "the appellant" to "appellant" for consistency.
Section 1.193 is also amended by revision of paragraph (a) into
paragraphs (a)(1) and (a)(2) and revision of paragraph (b) into
paragraphs (b)(1) and (b)(2). Paragraph (a)(1) retains the subject
matter of current paragraph (a), except that the phrase "and a petition
from such decision may be taken to the Commissioner as provided in
1.181" is deleted as superfluous. Section 1.181(a), by its terms,
authorizes a petition from any action or requirement of an examiner in
the ex parte prosecution of an application which is not subject to
appeal.
Section 1.193(a)(2) specifically prohibits the inclusion of a new ground
of rejection in an examiner's answer, but also expressly provides that
when (1) an amendment under 1.116 proposes to add or amend one or
more claims, (2) appellant was advised (in an advisory action) that the
amendment under 1.116 would be entered for purposes of appeal, and
(3) the advisory action indicates which individual rejection(s) set
forth in the action from which the appeal was taken (e.g., the final
rejection) would be used to reject the added or amended claim(s), then
(1) the appeal brief must address the rejection(s) of the claim(s) added
or amended by the amendment under 1.116 as indicated in the advisory
action, and (2) the examiner's answer may include the rejection(s) of
the claim(s) added or amended by the amendment under 1.116 as
indicated in the advisory action. This provision of 1.193(a)(2) is
intended for those situations in which a rejection is stated (i.e.,
applied to some claim) in the final Office action, but due to an
amendment under 1.116 (after final) such rejection is now applicable
to a claim that was added or amended under 1.116. For example, when
an amendment under 1.116 cancels a claim (the "canceled claim") and
incorporates its limitations into the claim upon which it depends or
rewrites the claim as a new independent claim (the "appealed claim"),
the appealed claim has become the canceled claim since it now contains
the limitations of the canceled claim (i.e., the only difference between
the appealed claim and the canceled claim is the claim number). In such
situations, the appellant has been given a fair opportunity to react to
the ground of rejection (albeit to a claim having a different claim
number). Thus, the Office does not consider such a rejection to
constitute a "new ground of rejection" within the meaning of
1.193(b). Nevertheless, 1.193(b)(2) expressly permits such a
rejection on appeal and further provides that "[t]he filing of an
amendment under 1.116 which is entered for purposes of appeal
represents appellant's consent that when so advised any appeal proceed
on those claim(s) added or amended by the amendmen tunder 1.116
subject to any rejection set forth in the action from which the appeal
was taken" to eliminate controversy as to the rejection(s) to which
claim(s) added or amended under 1.116 may be subject on appeal.
The phrase "individual rejections" in 1.193(a)(2) addresses the
situation in which claim 2 (which depends upon claim 1) was rejected
under 35 U.S.C. 103 on the basis of A in view of B and claim 3 (which
depends upon claim 1) was rejected under 35 U.S.C. 103 on the basis of A
in view of C, but no claim was rejected under 35 U.S.C. 103 on the basis
of A in view of B and C, and an amendment under 1.116 proposes to
combine the limitations of claims 2 and 3 together into new claim 4. In
this situation, the action from which the appeal is taken sets forth no
rejection on the basis of A in view of B and C, and, as such,
1.193(a)(2) does not authorize the inclusion of rejection of newly
proposed claim 4 under 35 U.S.C. 103 on the basis of A in view of B and
C in the examiner's answer. Of course, as a claim including the
limitations of both claim 2 and claim 3 is a newly proposed claim in the
application, such an amendment under 1.116 may properly be refused
entry as raising new issues. Conversely, that 1.193(a)(2) would
authorize the rejection in an examiner's answer of aclaim sought to be
added or amended in an amendment under 1.116 has no effect on whether
the amendment under 1.116 is entitled to entry. The provisions of
1.116 control whether an amendment under 1.116 is entitled to entry;
the provisions of 1.193(a)(2) control the rejections to which a claim
added or amended in an amendment under 1.116 may be subject in an
examiner's answer.
While 1.193(a) generally prohibits a new ground of rejection in an
examiner's answer, it does not prohibit the examiner from expanding upon
or varying the rationale for a ground of rejection set forth in the
action being appealed. That is, the parenthetical definition of "new
ground of rejection" in MPEP 1208.01 as including an "other reason for
rejection" of the appealed claims means another basis for rejection of
the appealed claims, and not simply another argument, rationale, or
reason submitted in support of a rejection previously of record.
There is no new ground of rejection when the basic thrust of the
rejection remains the same such that an appellant has been given a fair
opportunity to react to the rejection. See In re Kronig, 539 F.2d 1300,
1302-03, 190 USPQ 425, 426-27 (CCPA 1976). Where the statutory basis for
the rejection remains the same, and the evidence relied upon in support
of the rejection remains the same, a change in the discussion of or
rationale for supporting the rejection does not constitute a new ground
of rejection. Id. at 1303, 190 USPQ at 427 (reliance upon fewer
references in affirming a rejection under 35 U.S.C. 103 does not
constitute a new ground of rejection). Where the examiner simply changes
(or adds) a rationale for supporting a rejection, but relies upon the
same statutory basis and evidence in support of the rejection, there is
no new ground of rejection.
In any event, an allegation that an examiner's answer contains an
impermissible new ground of rejection is waived if not timely (
1.181(f)) raised by way of a petition under 1.181(a).
Section 1.193(b)(1) provides appellant with a right to file a reply
brief in reply to an examiner's answer which is not dependent upon a new
point of argument being present in the examiner's answer. The former
practice of permitting reply briefs based solely on a finding of a new
point of argument, as set forth in former paragraph (b), is eliminated
thereby preventing present controversies as to whether a new point of
argument has been made by the primary examiner. Appellant would be
assured of having the last submission prior to review by the Board. Upon
receipt of a reply brief, the examiner would either acknowledge its
receipt and entry or reopen prosecution to respond to any new issues
raised in the reply brief. Should the Board desire to remand the appeal
to the primary examiner for comment on the latest submission by
appellant or to clarify an examiner's answer (MPEP 1211, 1211.01,
and 1212), appellant would be entitled to submit a reply brief in reply
to the answer by the examiner to the Board's inquiry, which answer would
be by way of a supplemental examiner's answer.
Thus, 1.193(a)(2) does not permit a new ground of rejection in an
examiner's answer, and 1.193(b)(1) does not, in the absence of a
remand by the Board, permit an answer (other than a mere acknowledgment)
to a timely filed reply brief. Section 1.193 requires the examiner to
reopen prosecution to either: (1) enter a new ground of rejection; or
(2) provide a substantive answer to a reply brief.
Section 1.193(b)(2) provides that if appellant desires that the appeal
process be reinstated in reply to the examiner's reopening of
prosecution under 1.193(b)(1), appellant would be able to file a
request to reinstate the appeal and a supplemental appeal brief as an
alternative to filing a reply (under 1.111 or 1.113, as
appropriate) to the Office action. Amendments, affidavits or other new
evidence, however, would not be entered if submitted with a request to
reinstate the appeal. Like a reply brief, a supplemental appeal brief
submitted pursuant to 1.193(b)(2)(ii) need not reiterate the
contentions set forth in a previously filed appeal brief(or reply
brief), but need only set forth appellant's contention with regard to
the new ground of rejection(s) raised in the Office action that reopened
prosecution. The supplemental appeal brief will automatically
incorporate all issues and arguments raised in the previously filed
appeal brief (or reply brief), unless appellant indicates otherwise.
The intent of the change to 1.193(b) is to give appellant (rather
than the examiner) the option to continue the appeal if desired
(particularly under Pub. L. 103-465), or to continue prosecution before
the examiner in the face of a new ground of rejection. Should a
supplemental appeal brief be elected as the reply to the examiner
reopening prosecution based on a new ground of rejection under
1.193(b)(1), the examiner may under 1.193(a)(1) issue an examiner's
answer. Where an appeal is reinstated pursuant to 1.193(b)(2)(ii), no
additional appeal fee is currently required.
Comment 90: A number of comments favored permitting appellants to file a
reply brief as amatter of right. One comment argued that the Board,
rather than the examiner, should determine whether the appellant should
be permitted to file a reply brief.
Response: Section 1.193 as adopted permits an appellant to file a reply
brief as a matter of right. This change eliminates the authority of an
examiner to refuse entry of a timely filed reply brief.
Comment 91: One comment suggested that a reasonable page limit could be
placed on reply briefs.
Response: The comment will be studied.
Comment 92: A number of comments opposed the proposed change to require
a substitute appeal brief, rather than a reply brief. These comments
argued that requiring an entirely new brief reiterating previously
submitted arguments, rather than a mere reply to the examiner's answer,
would result in a less readable and coherent record.
Response: Section 1.193 as adopted permits a reply brief (rather than a
substitute appeal brief) where the appellant desires to reply to an
examiner's answer or and a supplemental appeal brief where the appellant
requests reinstatement of an appeal. Contentions (orinformation) set
forth in a previously filed appeal (or reply brief) need not be
reiterated in a reply brief or supplemental appeal brief.
Comment 93: A number of comments favored prohibiting a new ground of
rejection in an examiner's answer.
Response: Section 1.193 as adopted prohibits a new ground of rejection
in an examiner's answer, except under the limited circumstance
specifically provided for in 1.193(a)(2).
Comment 94: Two comments suggested that if the examiner reopens
prosecution after an appeal brief has been filed, 1.193 or 1.113
should be amended to state that the action issued by the examiner cannot
be made final.
Response: The finality of an Office action is determined under MPEP
706.07(a), which states that "any second or subsequent actions on the
merits shall be final, except where the examiner introduces a new
ground of rejection not necessitated by amendment of the application by
applicant." Whether the action subsequent to the reopening of
prosecution may be made final will be determined solely by whether such
action includes a new ground of rejection not necessitated by amendment
of the application by the applicant. Thus, where an amendment under
1.116 entered as a result of reopening of prosecution necessitates a new
ground of rejection, the action immediately subsequent to the reopening
of prosecution may be made final. See MPEP 706.07(a) and 1208.01.
Comment 95: One comment would go further in permitting applicant to
reinstate an appeal as a reply to the examiner reopening prosecution by
permitting amendments, affidavits and other evidence to address the new
ground of rejection. Another comment desired the ability to reply
directly to the Board for any new ground of rejection raised by the
Board.
Response: The comments amount to having the Board conduct the
prosecution of the application and not act as an appellate review.
Amended claims, affidavits and other evidence should be seen by the
examiner first for a determination as to whether a new search is
required, to conduct any newly required search, and also to evaluate the
newly submitted and any newly discovered material at the examination
level. See comments to 1.196(d).
Comment 96: One comment would further amend 1.193 to waive any
subsequent appeal notice fee and appeal brief fee, and start the time
period for extension of patent from the time of first appeal in that if
the examiner did his or her duty properly there would be no need to
reopen prosecution.
Response: Under current practice, a new fee is due for each notice of
appeal, each brief, and each request for an oral hearing, so long as a
decision on the merits by the Board resulted from the prior notice of
appeal, brief, and request for an oral hearing. Thus, when an examiner
reopens prosecution after appeal but prior to a decision by the Board on
the appeal, the fee for the notice of appeal, brief, and request for an
oral hearing will apply to a later appeal. The change to 1.193 in
this Final Rule is not germane to patent term extension under 35 U.S.C.
154(b) and 1.701.
In any event, that prosecution is reopened subsequent to the filing of
an appeal brief is not necessarily a concession that the rejection of
the appealed claims was in error. It is often the case that prosecution
is reopened subsequent to the filing of an appeal brief in the situation
in which the examiner considers the rejection of the appealed claims to
be appropriate (and thus the appeal to be without merit), but discovers
a better basis for rejecting the claims at issue (e.g., even better
prior art references). To characterize an examiner, who decides to
reopen prosecution to avoid wasting the Board's resources (and the
appellant's time) with a rejection that is not the best possible
rejection of the appealed claims, as an examiner who is not properly
performing his or her duties, would be non-sensical.
Comment 97: One comment opposed prohibiting a new ground of rejection in
an examiner's answer. The comment argued that this change will result in
unnecessary delays inprosecution.
Response: The proposal to prohibit a new ground of rejection in an
examiner's answer otherwise received overwhelming support. Under Pub. L.
103-465, any delay in prosecution resulting from the reopening of
prosecution is to the detriment of the applicant. Thus, it is considered
appropriate to give the applicant the choice of whether to prosecute the
application before the examiner or reinstate the appeal.
Section 1.194: Section 1.194(b) is amended to provide that a request for
an oral hearing must be filed in a separate paper, and to refer to
1.17(d) for consistency with the change to 1.17.
Section 1.194(c) is amended to provide that appellant will be notified
when a requested oral hearing is unnecessary (e.g., a remand is
required).
Comment 98: One comment argued that 1.194 leaves an open statement as
to when the Board may decide that an oral hearing is not necessary, in
that this section does not limit considering an oral hearing not
necessary to when the application has been remanded to the examiner.
Response: The situation in which an application has been remanded to the
examiner was simply an exemplary situation of special circumstances in
which the Board may determine that an oral hearing is not necessary.
Section 1.194 was not meant to limit the discretion of the Board to
determine that an oral hearing is not necessary to those situations when
the application has been remanded to the examiner.
Section 1.196: Section 1.196 paragraphs (b) and (d) are combined by
amending paragraph 1.196(b) to specifically provide therein for a new
ground of rejection for both appealed claims and for allowed claims
present in an application containing claims that have been appealed
rather than the current practice under 1.196(d) of recommending a
rejection of allowed claims that is binding on the examiner. The effect
of an explicit rejection of an allowed claim by the Board is not seen to
differ from a recommendation of a rejection and would serve to advance
the prosecution of the application by having the rejection made at an
earlier date by the Board rather than waiting for the application to be
forwarded and acted upon by the examiner. The former practice that the
examiner is not bound by the rejection should appellant elect to proceed
under 1.196(b)(1) and an amendment or showing of facts not previously
of record in the opinion of the examiner overcomes the new ground of
rejection, is not changed. A period of two months is now explicitly set
forth for a reply to a decision by the Board containing a new ground of
rejection pursuant to 1.196(b), which would alter the one month
previously set forth for replies to recommended rejections of previously
allowed claims. See MPEP 1214.01. Extensions of time continue to be
governed by 1.196(f) and 1.136(b) (and not by 1.136(a)).
The last sentence of 1.196(b)(2) is amended to clarify that
appellants do not have to both appeal and file a request for rehearing
where only a rehearing of a portion of the decision is sought. A
decision on a request for rehearing will incorporate the earlier
decision for purposes of appeal of the earlier decision in situations in
which only a partial request for rehearing has been filed. Additionally,
it is clarified that decisions on rehearing are final unless noted
otherwise in the decision in that under some circumstances it may not be
appropriate to make a decision on rehearing final as is currently
automatically provided for. Section 1.196(b) is also amended to clarify
that the appellant must exercise one of the two options with respect to
the new ground of rejection under 1.196(b) to avoid termination of
proceedings ( 1.197(c)) as to the rejected claims.
Section 1.196(b)(2) (and 1.197(b) and 1.304(a)(1)) are amended to
change the phrase "request for reconsideration" to "request for
rehearing" for consistency with 35 U.S.C. 7(b). See In re Alappat, 33
F.3d 1526, 1533, 31 USPQ2d 1545, 1548 (Fed. Cir. 1994) (enbanc) (noting
"imprecise regulation drafting" in regard to the phrase "request for
reconsideration" in 1.197).
Section 1.196(d) is amended to provide the Board with explicit authority
to have an appellant clarify the record in addition to what is already
provided by way of remand to the examiner (MPEP 1211), and appellant's
compliance with the requirements of an appeal brief ( 1.192(d)).
Section 1.196(d) specifically provides that an appellant may be required
to address any matter that is deemed appropriate for a reasoned decision
on the pending appeal, which may include: (1) the applicability of
particular case law that has not been previously identified as relevant
to an issue in the appeal; (2) the applicability of prior art that has
not been made of record; or (3) the availability of particular test data
that would be persuasive in rebutting a ground of rejection. Section
1.196(d) also provides that appellant would be given a non-extendable
time period (not a time limit) within which to reply to any
requirementunder 1.196(d).
Comment 99: One comment suggested that 1.196(b) would appear to
authorize the Board to reverse a restriction requirement, as 1.196(b)
authorizes the Board to reject any pending claim. The comment suggested
that 1.196(b) authorize the Board to reject any examined (rather than
pending) claim.
Response: Section 1.196(b) authorizes, but does not require, the Board
to reject claims not involved in the appeal. The Board has held that a
restriction requirement is not an adverse decision within the meaning of
35 U.S.C. 7 and 134 subject to appeal, and the CCPA and Federal Circuit
have supported this position. See In re Hengehold, 440 F.2d 1395,
169USPQ 473 (CCPA 1971); see also In re Watkinson, 900 F.2d 230, 14
USPQ2d 1407 (Fed.Cir. 1990). Thus, concerns that the Board will use the
provisions of 1.196(b) to review restriction requirements are
misguided.
Comment 100: Several comments opposed the change to 1.196(d) on the
basis that it places the Board in the position of acting as an examiner
in the first instance.
Response: Section 1.196(d) authorizes, but does not require, the Board
to require an appellant to clarify the record without remanding the
application to the examiner. This change will authorize the Board to
obtain clarification directly from the appellant in those situations in
which the Board considers a remand to or further action by the examiner
unnecessary. Where the Board considers action by an examiner in the
first instance to be necessary or desirable, the Board retains the
authority to remand the application to the examiner for such action.
Additionally, after reply to an inquiry under 1.196(d) (e.g., does
there exist test data that would be persuasive in rebutting a particular
ground of rejection), a remand to the examiner may be deemed to be
appropriate (e.g., to evaluate test data received in reply to an
inquiry).
Section 1.197: Section 1.197(b) is amended to eliminate its use of the
passive voice. Section 1.197(b) is also amended to change
"reconsideration or modification" to "rehearing" for consistency with 35
U.S.C. 7(b). For consistency with the two-month period set forth in
1.196(b), 1.197(b) is also amended to provide a two-month period
(rather than a one-month period) within which an appellant may file the
single request for rehearing permitted by 1.197(b).
No comments were received regarding the proposed change to 1.197.
Section 1.291: Section 1.291(c) is amended by removing the blanket
limitation of one protest per protestor and would provide for a second
or subsequent submission in the form of additional prior art. Mere
argument that is later submitted by an initial protestor would continue
not to be entered and would be returned unless it is shown that the
argument relates to a new issue that could not have been earlier raised.
See MPEP 1901.07(b). Although later submitted prior art would be made of
record by a previous protestor without a showing that it relates to a
new issue, it should be noted that entry of later submitted prior art in
the file record does not assure its consideration by the examiner if
submitted late in the examination process. Accordingly, initial protests
should be as complete as possible when first filed.
In view of the amendment to 1.291(a) in the "Miscellaneous Changes in
Patent Practice" Final Rule (discussed supra) to require that a protest
be filed prior to the mailing of a notice of allowance under 1.311 to
be considered timely ( 1.291(a)(1)), the restriction of protests by
number is deemed unnecessary and is recognized as ineffective, in that a
party may effectively file multiple protests by submitting each protest
through a third party agent acting on behalf of such party.
Comment 101: One comment suggested that permitting more than one
submission by a particular party relating to prior art poses a risk that
a third party may sequentially submit individual pieces of prior art as
a delaying factor.
Response: Any delay in submission of a piece of prior art by a third
party poses the risk that the later submitted prior art will not be
considered, particularly if it is seen as part of a pattern. The review
of any piece of prior art, assuming it is not part of a large package,
to determine its value is not seen to result in any delay in issuing an
Office action. It isrecognized that some delay may result where a piece
of prior art in a second submission by a third party is utilized in a
rejection that could have been made sooner if that art had been
submitted earlier; however, on balance the Office would prefer to delay
prosecution of an application and consider and apply a newly submitted
reference not found by the examiner rather than issue an invalid claim.
Section 1.291(c) is also amended to: (1) delete the sentence "[t]he
Office may communicate with the applicant regarding any protest and may
require the applicant to reply to specific questions raised by the
protest" as superfluous as the Office may communicate with an applicant
regarding any matter, and require the applicant to reply to specific
questions, concerning the application; (2) replace "respond" with
"reply" in accordance with the change to 1.111.
Section 1.293: Section 1.293 paragraph (c) is amended to replace the
reference to 1.106(e) with a reference to 1.104(c)(5), to reflect
a transfer of material.
Section 1.294: Section 1.294 paragraph (b) is amended by replacement of
"response" with "reply" in accordance with the change to 1.111.
No comments were received regarding the proposed change to 1.294.
Section 1.304: Section 1.304(a)(1) is amended to replace "consideration"
by "reconsideration" to correct a typographical error.
No comments were received regarding the proposed change to 1.304.
Section 1.312: Section 1.312(b) is amended to have a reference to
1.175(b) added in view of the change in 1.175(b) referencing
1.312(b).
No comments were received regarding the proposed change to 1.312.
Section 1.313: Section 1.313 will not be amended with the addition of
paragraph (c) informing applicants that unless written notification is
received that the application has been withdrawn from issue at least two
weeks prior to the projected date of issue, applicants should expect
that the application will issue as a patent. The matter will be further
studied. It should be noted, however, that once an application has
issued, the Office is without authority to grant a request under
1.313 notwithstanding submission of the request prior to issuance of the
patent.
Section 1.316: Section 1.316 is amended to include only the language of
former 1.316(a). The subject matter of former paragraphs (b) through
(f) of 1.316 were added to 1.137.
No comments were received regarding the proposed change to 1.316.
Section 1.317: Section 1.317 is amended to include only the language of
former 1.317(a). The subject matter of former paragraphs (b), (c),
(e) and (f) of 1.317 were added to 1.137.
No comments were received regarding the proposed change to 1.317.
Section 1.318: Section 1.318 is removed and reserved as being an
internal Office instruction.
See comments relating to 1.101.
Section 1.324: Section 1.324 is amended by creating paragraphs (a) and
(b). The requirement for factual showings to establish a lack of
deceptive intent is deleted, with a statement to that effect being
sufficient, paragraph (a).
Office practice is to require the same type and character of proof of
facts as in petitions under 1.48(a). See MPEP 1481. Unlike former
1.48, former 1.324 contained no diligence requirement. See Stark v.
Advanced Magnetics, Inc., 29 F.3d 1570, 1574, 31 USPQ2d 1290, 1293 (Fed.
Cir. 1994). Section 1.324 (and 1.48) as adopted contain no diligence
requirement, for the reasons set forth in the discussion of 1.48.
Section 1.324(b)(1) is amended to explicitly require a statement
relating to the lack of deceptive intent only from each person who is
being added or deleted as an inventor, as opposed to the current
practice of requiring a statement from each original named inventor and
any inventor to be added.
The current requirements for an oath or declaration under 1.63 by
each actual inventor is replaced, paragraph (b)(2) of 1.324, by a
statement from the current named inventors who have not submitted a
statement under paragraph (b)(1) of 1.324 either agreeing to the
change of inventorship or stating that they have no disagreement in
regard to the requested change. Not every original named inventor would
necessarily have knowledge of each of the contributions of the other
inventors and/or how the inventorship error occurred, in which case
their lack of disagreement to the requested change would be sufficient.
Paragraph (b)(3) of 1.324 requires the written consent of the
assignees of all parties who submitted a statement under paragraph
(b)(1) and (b)(2) of this section similar to the current practice of
consents by the assignees of all the existing patentees. A clarification
reference to 3.73(b) is added.
Paragraph (b)(4) of 1.324 states the requirement for a petition fee
as set forth in 1.20(b).
No adverse comments were received regarding the proposed change to
1.324.
Section 1.325: The proposed removal of 1.325 is withdrawn. See
comments relating to 1.101.
Section 1.351: The proposed removal of 1.351 is withdrawn. See
comments relating to 1.101.
Section 1.352: Section 1.352 is removed and reserved as unnecessary as
an internal instruction.
See comments relating to 1.101.
Section 1.366: Section 1.366(b) is amended to remove the term
"certificate" as unnecessary. Section 1.366(c) is amended for clarity by
changing "serial number" to "application number," which consists of the
serial number and the series code (e.g., "08/").
Paragraph (d) removes the request for the information concerning the
issue date of the original patent and filing date of the application for
the original patent as unnecessary. The term "serial" is also removed
from paragraph (d).
No comments were received regarding the proposed change to 1.366.
Section 1.377: Section 1.377(c) is amended to remove the requirement
that the petition be verified in accordance with the change to
1.4(d)(2) and 10.18.
No comments were received regarding the proposed change to 1.377.
Section 1.378: Section 1.378(d) is amended to remove the requirement
that the statement be verified in accordance with the change to
1.4(d)(2) and 10.18.
No comments were received regarding the proposed change to 1.378.
Section 1.425: Section 1.425 is amended by removing paragraph (a) and
its requirement for proof of the pertinent facts relating to the lack of
cooperation or unavailability of the inventor for which status is
sought. In addition, 1.425 is further amended by deleting paragraph
(b) and its requirements for proof of the pertinent facts, presence of a
sufficient proprietary interest, and a showing that such action is
necessary to preserve the rights of the parties or to prevent
irreparable damage. Additionally, the requirement that the last known
address of the non-signing inventor be stated has been removed. The
current requirements are thought to be unnecessary in view of the need
for submission of the same information in a petition under 1.47
during the national stage. The paragraph added parallels the requirement
in PCT Rule 4.15 for a statement explaining to the satisfaction of the
Commissioner the lack of the signature concerned for submission of the
international application.
No comments were received regarding the proposed change to 1.425.
Section 1.484: Section 1.484 paragraphs (d) through (f) are amended by
replacement of "response" and "respond" with "reply" in accordance with
the change to 1.111.
No comments were received regarding the proposed change to 1.484.
Section 1.485: Section 1.485(a) is amended by replacement of "response"
with "reply" in accordance with the change to 1.111.
No comments were received regarding the proposed change to 1.485.
Section 1.488: Section 1.488(b)(3) is amended by replacement of
"response" with "reply" in accordance with the change to 1.111.
No comments were received regarding the proposed change to 1.488.
Section 1.492: Section 1.492 is amended to add new paragraph (g). See
the amendment to 1.16 adding a new paragraph (m).
No comments were received regarding the proposed change to 1.492.
Section 1.494: Section 1.494(c) is amended by replacement of "response"
with "reply" in accordance with the change to 1.111.
No comments were received regarding the proposed change to 1.494.
Section 1.495: Section 1.495(c) is amended by replacement of "response"
with "reply" in accordance with the change to 1.111.
No comments were received regarding the proposed change to 1.495.
Section 1.510: Section 1.510(e) is amended to replace a reference to
1.121(f) with a reference to 1.530(d), which sets forth the
requirements for an amendment in a reexamination proceeding.
No comments were received regarding the proposed change to 1.510.
Section 1.530: The title has been changed by the addition of a semicolon
to clarify that the section is intended to cover not only amendments
submitted with the statement, but also amendments submitted at any other
stage of the reexamination proceedings.
Section 1.530(d) is replaced by paragraphs (d)(1) through (d)(7)
removing the reference to 1.121(f) in accordance with the deletion of
1.121(f). The manner of proposing amendments in reexamination
proceedings is governed by 1.530(d)(1) through (d)(6). Paragraph
(d)(1) is directed to the manner of proposing amendments in the
specification, other than in the claims. Paragraph (d)(1)(i) requires
that amendments including deletions be made by submission of a copy of
one or more newly added or rewritten paragraphs with markings, except
that an entire paragraph may be deleted by a statement deleting the
paragraph without presentation of the text of the paragraph. Paragraph
(d)(1)(ii) requires indication of the precise point in the specification
where the paragraph which is being amended is located. When a change in
one sentence, paragraph, or page results in only format changes to other
pages (e.g., shifting of non-amended text to subsequent pages) not
otherwise being amended, such format changes are not to be submitted.
Paragraph (d)(1)(iii) defines the markings set forth in paragraph
(d)(1)(ii). Proposed paragraph (d)(1)(iii), relating to a requirement
for submission of all amendments be presented when any amendment to the
specification is made, was not implemented.
Paragraph (d)(2) of 1.530 relates to the manner of proposing
amendments to the claims in reexamination proceedings. Paragraph
(d)(2)(i)(A) of 1.530 requires that a proposed amendment include the
entire text of each patent claim which is proposed to be amended by the
current amendment and each proposed new claim being added by the current
amendment. Additionally, provision has been made for the cancellation of
a patent claim or of a previously proposed new claim by a direction to
cancel without the need for marking by brackets. Paragraph (d)(2)(i)(B)
prohibits the renumbering of the patent claims and requires that any
proposed new claims follow the number of the highest numbered patent
claim. Paragraph(d)(2)(i)(C) identifies the type of markings required by
paragraph (d)(2)(i)(A), single underlining for added material and single
brackets for material deleted.
Paragraph (d)(2)(ii) requires the patent owner to set forth the status
(i.e., pending or cancelled) of all patent claims, and of all currently
proposed new claims, as of the date of the submission of each proposed
amendment. The absence of claim status would result in a notice of
informal response.
Paragraph (d)(2)(iii) of 1.530 requires an explanation of the support
in the disclosure for any amendments to the claims presented for the
first time on pages separate from the amendments along with any
additional comments. The absence of an explanation would result in a
notice of informal response.
Proposed paragraphs (d)(2)(iv) and (v), relating to a requirement for
presentation of all amendments as of the date any amendment to the
claims is made, and to the treatment of the failure to submit a copy of
any added claim as a direction to cancel that claim, were not
implemented.
Paragraph (d)(3) of 1.530 provides that: (1) an amendment may not
enlarge the scope of the claims of the patent, (2) no amendment may be
proposed for entry in an expired patent, and (3) no amendment will be
incorporated into the patent by certificate issued after the expiration
of the patent.
Paragraph (d)(4) of 1.530 provides that amendments proposed to a
patent during reexamination proceedings will not be effective until a
reexamination certificate is issued. This replaces paragraph (e) of
1.530, which has been removed and reserved.
Paragraph (d)(5) of 1.530 provides the criteria for the form of
amendments in reexamination proceedings (i.e., paper size must be either
letter size or A4 size, and not legal size).
Paragraph (d)(6) of 1.530 clarifies that proposed amendments to the
patent drawing sheets are not permitted and that any change must be by
way of a new sheet of drawings with the proposed amended figures being
identified as "amended" and with proposed added figures identified as
"new" for each sheet that has changed. Material in paragraph (d)(6) has
been transferred from cancelled 1.115.
Paragraph (d)(7) of 1.530, has been added in view of the deletion of
1.115 paragraph (d), requires amendment of the disclosure in certain
situations (i.e., to correct inaccuracies of description and definition)
and to secure substantial correspondence between the claims, the
remainder of the specification, and the drawings. The previous
requirement for "correspondence" has been modified by use of
"substantial correspondence." See comments to 1.115.
Paragraph (d)(8) of 1.530 has been added to clarify that all
amendments to the patent being reexamined must be made relative to
(i.e., vis-ašsm©-vis) the patent specification in effect as of the date
of the filing of the request for reexamination (the patent specification
includes the claims). If there was a prior change to the patent (made
via a prior reexamination certificate, reissue of the patent,
certificate of correction, etc.), the first amendment must be made
relative to the patent specification as changed by the prior proceeding
or other mechanism for changing the patent. In addition, all amendments
subsequent to the first amendment must be made relative to the patent
specification in effect as of the date of the filing of the request for
reexamination, and not relative to the prior amendment.
Paragraph (e) of 1.530 has been removed with the material formerly
contained therein transferred to new paragraph (d)(4) of 1.530.
The proposed change in 1.530, 1.550, and 1.560 to replace
"response," "responses" and "respond" with "reply" in accordance with
the change to 1.111 is not being adopted at this time. As the term
"reply" in a reexamination proceeding refers to the "reply" of a third
party requester ( 1.535), the Office is withdrawing for further
consideration what term should consistently be used for the "reply" or
"response" by the patent owner and what term should consistently be used
for the "reply" by a third party requester.
Section 1.550: Paragraph (a) of 1.550 is amended to conform the
citation to 1.104 through 1.119 to the changes to 1.104
through 1.119. Paragraphs (b) and (e) of 1.550 are amended for
clarification purposes. Paragraph (e) of 1.550 clarifies present
Office practice of requiring, after filing of a request for
reexamination by a third party requester, the service of any document
filed by either the patent owner or the third party on the other party
in the reexamination proceeding in the manner provided in 1.248.
No comments were received regarding the proposed change to 1.550.
Section 1.770: Section 1.770 is amended by replacement of "response"
with "reply" in accordance with the change to 1.111.
No comments were received regarding the proposed change to 1.770.
Section 1.785: Section 1.785 is amended by replacement of "response"
with "reply" in accordance with the change to 1.111.
No comments were received regarding the proposed change to 1.785.
Section 1.804: Section 1.804(b) is clarified grammatically by changing
"shall state" to "stating" and is amended to delete the requirement that
the statement be verified in accordance with the change to
1.4(d)(2) and 10.18.
No comments were received regarding the proposed change to 1.804.
Section 1.805: Section 1.805(c) is amended by deleting "verified" in
accordance with the change to 1.4(d) and 10.18 and removing
unnecessary language noting that an attorney or agent registered to
practice need not verify their statements.
No comments were received regarding the proposed change to 1.805.
Part 3: Portions of Part 3 are amended to incorporate Part 7, which part
is removed and reserved.
No comments were received regarding the proposed change to Part 3.
Section 3.11: Section 3.11(a) is created for the current subject matter
and a new paragraph(b) is added citing Executive Order 9424 of February
18, 1944 (9 FR 1959, 3 CFR 1943-1949 Comp., p. 303) and its requirements
that several departments and other executive agencies of the Government
forward items for recording.
Section 3.21: Section 3.21 is amended to replace the reference to "
1.53(b)(1)" with a reference to " 1.53(b)" and to delete the reference
to " 1.62" for consistency with the amendment to 1.53 and the
deletion of 1.62.
Section 3.26: Section 3.26 is amended to remove the requirement that an
English language translation be verified in accordance with the change
to 1.4(d)(2) and 10.18.
Section 3.27: The current subject matter of 3.27 is designated as
paragraph (a), and a paragraph (b) is added to cite Executive Order 9424
and a mailing address therefor.
Section 3.31: Section 3.31(c) is added to require that: (1) the cover
sheet must indicate that the document is to be recorded on the
Governmental Register; (2) the document is to be recorded on the Secret
Register (if applicable); and (3) the document does not affect title (if
applicable).
Section 3.41: The current subject matter of 3.41 is designated as
paragraph (a), and a paragraph (b) is added to specify when no recording
fee is required for documents required to be filed pursuant to Executive
Order 9424.
Section 3.51: Section 3.51 is amended by removing the term
"certification" as unnecessary in accordance with the change to
1.4(d)(2) and 10.18.
Section 3.58: Section 3.58 is added to provide for the maintaining of a
Department Register to record Government interests required by Executive
Order 9424 in 3.58(a). New 3.58(b) provides that the Office
maintain a Secret Register to record Government interests also required
by the Executive Order.
Section 3.73: Section 3.73(b) is amended to remove the sentence
requiring an assignee to specifically state that the evidentiary
documents have been reviewed and to certify that title is in the
assignee seeking to take action. The sentence is deemed to be
unnecessary in view of the amendment to 1.4(d) and 10.18.
Section 3.73 paragraph (b) has also been amended to replace the language
"assignee of the entire right, title and interest" with "assignee." This
change provides for the applicability of the paragraph to assignees with
a partial interest, such as is often encountered in reissue applications.
Section 3.73(b) is clarified by addition of a reference to an example of
documentary evidence that can be submitted.
Part 5:
No comments were received regarding the proposed change to Part 5.
Section 5.1: Section 5.1 is amended by removing the current subject
matter as being duplicative of material in the other sections of this
part and is replaced by subject matter deleted from 5.33.
Section 5.2: Section 5.2(b) is amended by removing the subject matter as
being duplicative of material in the other sections of this part and is
replaced with subject matter of the first sentence from 5.7. Section
5.2 paragraphs (c) and (d) are removed as repetitive of material in the
other sections of this part.
Section 5.3: Section 5.3 is amended by replacement of "response" with
"reply" in accordance with the change to 1.111.
Section 5.4: Section 5.4 is amended by removing unnecessary subject
matter from paragraph (a), eliminating, in paragraph (d), the
requirement that the petition be verified in accordance with the
amendment to 1.4(d)(2) and 10.18, and by adding the first and
second sentences of 5.8 to 5.4(d).
Section 5.5: Section 5.5 is amended by removing unnecessary subject
matter from paragraph (b) and by replacing current 5.5(e) with
subject matter removed from 5.6(a).
Section 5.6: Section 5.6 is removed and reserved with the subject matter
of 5.6(a) being placed in 5.5(e).
Section 5.7: Section 5.7 is removed and reserved with the first sentence
thereof being placed in 5.2(b).
Section 5.8: Section 5.8 is removed and reserved with the subject matter
from the first and second sentences thereof being placed in 5.4(d).
Sections 5.11: Section 5.11, paragraphs (b), (c) and (e), are amended to
update the references to other parts of the Code of Federal Regulations.
Section 5.12: Section 5.12(b) is amended to clarify that the petition
fee ( 1.17(h)) is required only when expedited handling is sought for
the petition.
Section 5.13: Section 5.13 is amended by removing the last two sentences
which are considered to be unnecessary. Section 5.13 is also amended to
remove the language concerning the requirement for the petition fee (
1.17(h)) for expedited handling of a petition under 5.12(b), which is
duplicative of the provisions of 5.12(b). This amendment does not
change current practice.
Section 5.14: Section 5.14(a) is amended by removing unnecessary subject
matter and replacing "serial number" with the more appropriate
designation "application number." Section 5.14(a) is also amended to
remove the language concerning the requirement for the petition fee (
1.17(h)) for expedited handling of a petition under 5.12(b), which is
duplicative of the provisions of 5.12(b). This amendment does not
change current practice.
Section 5.15: Section 5.15, paragraphs (a), (b), (c), and (e), are
amended by removing unnecessary subject matter and to update the
references to other parts of the Code of Federal Regulations.
Section 5.16: Section 5.16 is removed and reserved as unnecessary.
Section 5.17: Section 5.17 is removed and reserved as unnecessary.
Section 5.18: Section 5.18 is amended to update the references to other
parts of the Code of Federal Regulations.
Sections 5.19: Sections 5.19(a) and (b) are amended to update the
references to other parts of the Code of Federal Regulations. Section
5.19(c) is removed as unnecessary.
Section 5.20: Section 5.20 is amended to include only the language of
former 5.20(a).
Section 5.25: Section 5.25(c) is removed as unnecessary.
Section 5.31: Section 5.31 is removed and reserved as unnecessary.
Section 5.32: Section 5.32 is removed and reserved as unnecessary.
Section 5.33: Section 5.33 is removed and reserved and its subject
matter added to 5.1.
Part 7: Part 7 is removed and reserved as the substance thereof is
incorporated into part 3.
No comments were received regarding the proposed change to Part 7.
Part 10:
Section 10.18: The heading of 10.18 is amended to read "[s]ignature
and certificate for correspondence filed in the Patent and Trademark
Office" to reflect that it, as amended, applies to correspondence filed
by non-practitioners as well as practitioners.
Section 10.18(a) is amended to provide that for all documents filed in
the Office in patent, trademark, and other non-patent matters, except
for correspondence that is required to be signed by the applicant or
party, each piece of correspondence filed by a practitioner in the
Patent and Trademark Office must bear a signature, personally signed by
such practitioner, in compliance with 1.4(d)(1). This amendment is
simply a clarification of the requirements of former 10.18(a).
Section 10.18 is further amended (in 10.18 paragraphs (b) and (c)) to
include the changes proposed to 1.4 paragraphs (d)(2) and (d)(3).
These changes to 37 CFR Part 10 are to avoid a dual standard between 37
CFR Parts 1 and 10 as to practitioners. In addition, by operation of
1.4(d)(2), the provisions of 10.18 paragraphs (b) and (c) are
applicable to any party (whether a practitioner or non-practitioner)
presenting any paper to the Office. As any party (whether a practitioner
or non-practitioner) presenting any paper to the Office is subject to
the provisions of 10.18 paragraphs (b) and (c), this change also
avoids a dual standard between practitioners and non-practitioners as to
the certification provisions of 10.18(b) and the sanctions provisions
of 10.18(c). The only difference between a practitioner and a
non-practitioner as to 10.18 paragraphs (b) and (c) is that a
practitioner may also be subject to disciplinary action for violations
of 10.18(b) in addition to or in lieu of sanctions under 10.18(c).
Section 10.18(b)(1) is specifically amended to provide that, by
presenting to the Office (whether by signing, filing, submitting, or
later advocating) any paper, the party presenting such paper (whether a
practitioner or non-practitioner) is certifying that all statements made
therein of the party's own knowledge are true, all statements made
therein on information and belief are believed to be true, and all
statements made therein are made with the knowledge that whoever, in any
matter within the jurisdiction of the Patent and Trademark Office,
knowingly and willfully falsifies, conceals, or covers up by any trick,
scheme, or device a material fact, or makes any false, fictitious or
fraudulent statements or representations, or makes or uses any false
writing or document knowing the same to contain any false, fictitious or
fraudulent statement or entry, shall be subject to the penalties set
forth under 18 U.S.C. 1001, and that violations of this paragraph may
jeopardize the validity of the application or document, or the validity
or enforceability of any patent, trademark registration, or certificate
resulting therefrom.
Section 10.18(b)(2) is specifically amended to provide that, by
presenting to the Office any paper, the party presenting such paper
(whether a practitioner or non-practitioner) is certifying that to the
best of the party's knowledge, information and belief, formed after an
inquiry reasonable under the circumstances, that: (1) the paper is not
being presented for any improper purpose, such as to harass someone or
to cause unnecessary delay or needless increase in the cost of
prosecution before the Office; (2) the claims and other legal
contentions therein are warranted by existing law or by a nonfrivolous
argument for the extension, modification, or reversal of existing law or
the establishment of new law; (3) the allegations and other factual
contentions have evidentiary support or, if specifically so identified,
are likely to have evidentiary support after a reasonable opportunity
for further investigation or discovery; and (4) the denials of factual
contentions are warranted on the evidence, or if specifically so
identified, are reasonably based on a lack of information or belief.
As discussed supra, the amendments to 10.18, in combination with the
amendment to 1.4(d), will permit the Office to eliminate the
verification requirement for a number of the rules of practice.
Section 10.18(c) specifically provides that violations of 10.18(b)(1)
may jeopardize the validity of the application or document, or the
validity or enforceability of any patent, trademark registration, or
certificate resulting therefrom, and that violations of any of 10.18
paragraphs (b)(2)(i) through (iv) are, after notice and reasonable
opportunity to respond, subject to such sanctions as deemed appropriate
by the Commissioner, or the Commissioner's designee, which may include,
but are not limited to, any combination of: (1) holding certain facts to
have been established; (2) returning papers; (3) precluding a party from
filing a paper, or presenting or contesting an issue; (4) imposing a
monetary sanction; (5) requiring a terminal disclaimer for the period of
the delay; or (6) terminating the proceedings in the Patent and
Trademark Office.
With regard to the sanctions enumerated in 10.18(c), 35 U.S.C. 6(a)
provides that "The Commissioner . . . may, subject to the approval of
the Secretary of Commerce, establish regulations, not inconsistent with
law, for the conduct of proceedings in the Patent and Trademark Office."
The issue of whether the Office is authorized to impose monetary
sanctions was addressed in the rulemaking entitled "Patent Appeal and
Interference Practice," published in the Federal Register at 60 FR 14488
(March 17, 1995), and in the Official Gazette at 1173 Off. Gaz. Pat.
Office 36 (April 11, 1995).
The Commissioner's authority under 35 U.S.C. 6(a) to impose monetary
sanctions is limited to sanctions which are remedial, and does not
extend to sanctions that are punitive. Id. at 14494-96, 1173 Off. Gaz.
Pat. Office at 41-43. An enabling statute (35 U.S.C. 6(a)) alone is not
the express statutory authorization required for an agency to impose
penal monetary sanctions. See, e.g., Commissioner v. Acker, 361 U.S. 87,
91 (1959); Gold Kist, Inc. v. Department of Agriculture, 741 F.2d 344,
348 (11th Cir. 1984). Thus, the line of demarcation between permissible
and impermissible monetary sanctions under 35 U.S.C. 6(a) is that: (1)
the imposition of a monetary sanction to cover the costs incurred by the
Office due to the violation of 10.18(b)(2) is a remedial (and thus
permissible) sanction; and (2) the imposition of a monetary sanction
that has no relationship to the costs incurred by the Office due to the
violation of 10.18(b)(2) (e.g., a pre-established or arbitrary fine
or penalty) is a punitive (and thus impermissible) sanction. See United
States v. Frame, 885 F.2d 1119, 1142-43 (3rd Cir. 1989) (late payment
charge no higher than reasonable to cover lost interest and
administrative costs incurred in the collection effort is a remedial
sanction, and not a penalty, and, as such, is authorized by rulemaking
enabling statute), cert. denied, 493 U.S.1094 (1990); see also Griffin &
Dickson v. United States, 16 Cl. Ct. 347, 356-57 (1989) (agency has the
inherent authority to manage its caseload by imposing sanctions
including precluding party from presenting further evidence,
disciplining of representative, or imposing costs against the
representative or the party in interest). As the Office is an entirely
fee-funded entity, it is reasonable to impose a monetary sanction on a
party causing an unnecessary and inordinate expenditure of Office
resources to cover the costs incurred by the Office due to such action,
rather than impose these costs on the Office's customers in general.
Nevertheless, the Office has amended 1.4(d)(2) and 10.18 with the
objective of discouraging the filing of frivolous or patently
unwarranted correspondence in the Office, not to routinely review
correspondence for compliance with 10.18(b)(2) and impose sanctions
under 10.18(c). Thus, the amendment to 1.4(d)(2) and 10.18
should cause no concern to practitioners and pro se applicants engaging
in the ordinary course of business before the Office. The Office
anticipates that sanctions under 10.18(c) will be imposed only in
rare situations in which such action is necessary for the Office to halt
a clear abuse that is resulting in a needless and inordinate expenditure
of Office resources.
Where the circumstances of an application or other proceeding warrant a
determination of whether there has been a violation of 10.18(b), the
file or the application or other proceeding will be forwarded to the
Office of Enrollment and Discipline (OED) for a determination of whether
there has been a violation of 10.18(b). In the event that OED
determines that a provision of 10.18(b) has been violated, the
Commissioner, or the Commissioner's designee, will determine what (if
any) sanction(s) under 10.18(c) is to be imposed in the application
or other proceeding. In addition, if OED determines that a provision of
10.18(b) has been violated by a practitioner, OED will determine
whether such practitioner is to be subject to disciplinary action (see
1.4(d)(2) and 10.18(d)). That is, OED will provide a determination of
whether there has been a violation of 10.18(b), and if such violation
is by a practitioner, whether such practitioner is to be subject to
disciplinary action; however, OED will not be responsible for imposing
sanctions under 10.18(c) in an application or other proceeding.
Section 10.18(d) provides that any practitioner violating the provisions
of this section may also be subject to disciplinary action. This
paragraph (and the corresponding provision of 1.4(d)(2)) clarifies
that a practitioner may be subject to disciplinary action in lieu of, or
in addition to, the sanctions set forth in 10.18(c) for violations of
10.18.
Comment 102: A number of comments supported the changes to 1.4(d) to
make its certification applicable to all papers signed and submitted to
the Office.
Response: The Office will adopt the changes to make such a certification
applicable to all papers filed in the Office, but will do so by placing
the certification requirement in 10.18, and providing in 1.4(d)
that the presentation of any paper to the Office, whether by a
practitioner or non-practitioner, constitutes a certification under
10.18. Thus, the presentation of a paper to the Office by any person
(even a non-practitioner) constitutes a certification under 10.18.
Comment 103: A number of comments opposed the change to 1.4(d) as
increasing the burden on persons presenting papers to the Office, and,
as such, inconsistent with the stated goal of reducing the burden on the
public. One comment indicated that new burdens in 1.4(d) on signers
of papers submitted to the Office include: (1) conducting a reasonable
inquiry concerning the document to be submitted to the Office; (2) not
submitting the document to harass or seek a needless increase in the
cost of prosecution; and (3) submitting only documents likely to have
evidentiary support after a reasonable opportunity for further
investigation or discovery.
Response: The change to 1.4(d) and 10.18 should discourage the
filing of frivolous papers in the Office, and thus reduce the cost to
the Office of treating such papers, which cost is ultimately borne by
the Office's customers. Thus, this change to 1.4(d) and 10.18 will
reduce the burden on the public and to the Office's customers in
general. There is no reasonable argument as to why a person filing a
document in the Office should be permitted to avoid the "burden" of
conducting a reasonable inquiry concerning the document to be submitted
to the Office, not submitting the document to harass or seek a needless
increase in the cost of prosecution, or submitting only documents likely
to have evidentiary support after a reasonable opportunity for further
investigation or discovery.
Comment 104: Several comments opposed the addition of 1.4(d)(2) (now
10.18(b)(2)) on the basis that the phrase "formed after an inquiry
reasonable under the circumstances" was too vague or was unclear as to
how much of an inquiry must be made to meet the "reasonable inquiry"
requirement.
Response: The phrase "formed after an inquiry reasonable under the
circumstances" is taken from Rule 11(b) of the Federal Rules of Civil
Procedure (Fed. R. Civ. P. 11(b)), which provides that:
Representations to Court. By presenting to the court (whether by
signing, filing, submitting, or later advocating) a pleading, written
motion, or other paper, an attorney or unrepresented party is certifying
that to the best of the person's knowledge, information and belief,
formed after an inquiry reasonable under the circumstances, --
(1) it is not being presented for any improper purpose, such as to
harass or to cause unnecessary delay or needless increase in the cost of
litigation;
(2) the claims, defenses, and other legal contentions therein are
warranted by existing law or by a nonfrivolous argument for the
extension, modification, or reversal of existing law or the
establishment of new law;
(3) the allegations and other factual contentions have evidentiary
support or, if specifically so identified, are likely to have
evidentiary support after a reasonable opportunity for further
investigation or discovery; and
(4) the denials of factual contentions are warranted on the evidence
or, if specifically so identified, are reasonably based on a lack of
information or belief.
See Fed. R. Civ. P. 11(b)(1993).
Section 10.18(b)(2) tracks the language of Fed. R. Civ. P. 11(b)(1993)
to avoid confusion as to what certifications a signature entails. The
advisory committee notes to Fed. R. Civ. P.11(b) provide further
information on the "inquiry reasonable under the circumstances"
requirement. See Amendments to the Federal Rules of Civil Procedure at
50-53 (1993), reprinted in 146 F.R.D. 401, 584-87. The "inquiry
reasonable under the circumstances" requirement of 10.18(b)(2) is
identical to that in Fed. R. Civ. P. 11(b). The Federal courts have
stated in regard to the "reasonable inquiry" requirement of Fed. R. Civ.
P. 11:
In requiring reasonable inquiry before the filing of any pleading in a
civil case in federal district court, Rule 11 demands "an objective
determination of whether a sanctioned party's conduct was reasonable
under the circumstances." In effect it imposes a negligence standard,
for negligence is a failure to use reasonable care. The equation between
negligence and the failure to conduct a reasonable precomplaint inquiry
is . . . that "the amount of investigation required by Rule 11 depends
on both the time available to investigate and on the probability that
more investigation will turn up important evidence; the Rule does not
require steps that are not cost-justified."
Hays v. Sony Electronics, 847 F.2d 412, 418, 7 USPQ2d 1043, 1048 (7th.
Cir.1988) (citations omitted) (decided prior to the 1993 amendment to
Fed. R. Civ. P. 11, but discussing a "reasonable under the
circumstances" standard).
Comment 105: One comment opposed the change in 1.4(d) to import the
verification requirement into any papers signed and submitted to the
Office, on the basis that the presence of a verification actually on the
paper signed and submitted to the Office would cause the signer to
carefully consider what is being signed and submitted to the Office.
Response: A separate verification requirement for certain papers results
in delays during the examination of an application when such
verification is omitted. The Office is convinced that people are
inclined to either not make false, misleading or inaccurate statements
in documents they sign, or are not deterred from making such statements
by the presence of a verification clause in the document. The benefit
obtained in the rare instance in which a person otherwise inclined to
make a false, misleading or inaccurate statement is persuaded not to do
so by averification clause simply does not outweigh the benefit obtained
by the elimination of the delay that results from the requirement for
such a verification clause.
Comment 106: One comment opposed the change to 1.4(d) (now
10.18(b)(2)) on the basis that "reasonable inquiry" requirement therein
will expose a practitioner to malpractice liability.
Response: Legal malpractice is not an issue of Federal patent (or
trademark) law, but of common law sounding in tort. See Voight v. Kraft,
342 F. Supp 821, 822, 174 USPQ 294,295 (D. Idaho 1972). Section
10.18(b)(2) does not affect the duty (or create a new duty) on the part
of a practitioner to his or her client vis-ašsm©-vis the submission of
papers to the Office.
The party's duties under 10.18 are not to one's own clients; it is to
the public in general, other parties before the Office (the examination
of whose applications are delayed while the Office is, and whose fees
must be applied to the cost of, responding to frivolous papers), and to
the Office. Cf. Mars Steel Corp. v. Continental Bank, 880 F.2d 928, 932
(7th. Cir.1989) (just as tort law creates duties to one's client, Fed.
R. Civ. P. 11 creates a duty to one's adversary, other litigants in the
courts's queue, and the court itself); Hays, 847 F.2d at 418, 7USPQ2d at
1049 (same).
Comment 107: One comment indicated that the requirements in 1.4(d)(2)
(now 10.18(b)(2)) may be onerous as to persons not registered to
practice before the Office. Another comment opposed this change on the
basis that it would create new issues during litigation, in that few
non-lawyers have enough legal knowledge to accurately verify that the
documents they sign are consistent with the law. The comment suggested
that 1.4(d)(2) simply be amended to include the verification
statement from 1.68.
Response: There is no reasonable argument as to why the certification
for papers submitted to the Office should be any less than the
certification required under Fed. R. Civ. P. 11(b) for papers filed in
the Federal courts. The Federal Rules of Civil Procedure do not permit a
pro se litigant to avoid the requirements of Fed. R. Civ. P. 11(b) ("By
presenting . . . an attorney or unrepresented party is certifying . . .
." (emphasis added)). It is, however, appropriate to take account of the
special circumstances of pro se applicants in determining whether
sanctions under 10.18(c) are appropriate. See advisory committee
notes to Fed. R. Civ. P. 11 (1983), reprinted in 97 F.R.D. 165, 198-99
(1983) ("Although the standard is the same for unrepresented parties,
who are obligated themselves to sign the [papers], the court has
sufficient discretion to take account of the special circumstances that
often arise in pro se situations").
The Office expects that pro se applicants will often submit arguments
that evidence little, if any, appreciation of the applicable law or
procedure. The Office is not adopting 1.4(d)(2) and 10.18(b) and
(c) for the purpose of imposing, and does not intend to impose,
sanctions on pro se applicants in situations in which they simply submit
arguments lacking an appreciation of the applicable law or procedure.
See Finch v. Hughes Aircraft Co., 926 F.2d 1574, 1582,17 USPQ2d 1914,
1921 (Fed. Cir. 1991)("courts are particularly cautious about imposing
sanctions on a pro se litigant, whose improper conduct may be attributed
to ignorance of the law and proper procedures"); see also Hornback v.
U.S., 40 USPQ2d 1694, 1697 (Cl. Ct. 1996) (pro se without legal training
is not held to the same standard as trained counsel).
Where, however, a pro se applicant engages in a course of conduct that
any reasonable person should have known was improper, and which causes a
needless and inordinate expenditure of Office resources, such conduct
may result in the imposition of sanctions on the pro se applicant. The
Federal courts have subjected pro se litigants to sanctions for: (1)
taking or persisting in actions that even a non-lawyer should have known
were frivolous; (2) taking or persisting in actions that, after engaging
in a sufficient course of litigation, the pro se litigant should have
known were frivolous; or (3) taking or persisting in actions after
having been warned by the court that such actions were frivolous. See
Constant v. U.S., 929 F.2d 654,658, 18 USPQ2d 1298, 1301 (Fed. Cir.),
cert. denied, 501 U.S. 1206 (1991); Finch, 926F.2d at 1582-83, 17 USPQ2d
at 1921; U.S. ex rel. Taylor v. Times Herald Record, 22 USPQ2d 1716,
1718 (S.D.N.Y. 1992), aff'd, 990 F.3d 623 (2d Cir. 1993)(table).
Comment 108: One comment argued that the change to 1.4(d) would be
particularly difficult to apply in the context of provisional
applications.
Response: The patent statute and rules of practice do not require any
papers other than a disclosure (with or without claims) and a cover
sheet for a provisional application (e.g., an applicant need and should
not submit legal arguments or other contentions with a provisional
application). Thus, it is highly unlikely that the filing of a
provisional application will result in a violation of 10.18(b).
Comment 109: One comment opposed the change to 1.4(d) on the basis
that it was not clear whether a practitioner has an obligation in the
case of a submission of a statement off acts to inform the party making
the statement (or the client) of this certification effect, and the
sanctions applicable to noncompliance. Another comment indicated that
practitioners will now be placed under the obligation of questioning
their clients each time they are given information or instructions.
Response: The submission by an applicant of misleading or inaccurate
statements of facts during the prosecution of applications for patent
has resulted in the patents issuing on such applications being held
unenforceable. See, e.g., Refac International Ltd. v. Lotus Development
Corp., 81 F.3d 1576, 38 USPQ2d 1665 (Fed. Cir. 1996); Paragon Podiatry
Laboratory, Inc. v. KLM Laboratories, Inc., 984 F.2d 1182, 25 USPQ2d
1561 (Fed. Cir 1993); Rohm and Haas Corp. v. Crystal Chemical Co., 722
F.2d 1556, 200 USPQ 289 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984); Ott v. Goodpasture, 40 USPQ2d 1831 (D.N. Tex. 1996); Herman v.
William Brooks Shoe Co., 39 USPQ2d 1773 (S.D. N.Y. 1996); Golden Valley
Microwave Food Inc. v. Weaver Popcorn Co., 837 F. Supp. 1444, 24USPQ2d
1801 (N.D. Ind. 1992), aff'd, 11 F.3d 1072 (Fed. Cir. 1993) (table),
cert. denied, 511 U.S. 1128 (1994). Likewise, false statements by a
practitioner in a paper submitted to the Office during the prosecution
of an application for patent has resulted in the patent issuing on such
application also being held unenforceable. See General Electro Music
Corp. v. Samick Music Corp., 19 F.3d 1405, 30 USPQ2d 1149 (Fed. Cir.
1994) (false statement in a petition to make an application special
constitutes inequitable conduct, and renders the patent issuing on such
application unenforceable). In addition, the failure to exercise due
care in ascertaining the accuracy of the statements in a certification
submitted to the Office has also resulted in a patent being held
invalid. See DH Technology, 937 F. Supp. at 910; 40USPQ2d at 1761.
For the above-stated reasons, it is highly advisable for a practitioner
to advise a client or third party that any information so provided must
be reliable and not misleading, regardless of this amendment to
1.4(d)(2) and 10.18. Nevertheless, 1.4(d)(2) and 10.18 as adopted
do not require a practitioner to advise the client (or third party)
providing information of this certification effect (or the sanctions
applicable to noncompliance), or question the client (or third party)
when such information or instructions are provided. When a practitioner
is submitting information (e.g., a statement of fact) from the applicant
or a third party, or relying in arguments upon information from the
applicant or a third party, the Office will consider a practitioner's
"inquiry reasonable under the circumstances" duty under 10.18 met so
long as the practitioner has no knowledge of information that is
contrary to the information provided by the applicant or third party or
would otherwise indicate that the information provided by the applicant
or third party was so provided for the purpose of a violation of
10.18 (e.g., was submitted to cause unnecessary delay).
An applicant has no duty to conduct a prior art search as a prerequisite
to filing an application for patent. See Nordberg, Inc. v. Telsmith,
Inc., 82 F.3d 394, 397, 38 USPQ2d 1593, 1595-96 (Fed. Cir. 1996); FMC
Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 n.6, 5 USPQ2d 1272,
1275-76 n.6 (Fed. Cir. 1987); FMC Corp. v. Manitowoc Co., Inc., 835 F.2d
1411, 1415, 5 USPQ2d 1112, 1115 (Fed. Cir. 1987); American Hoist &
Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362, 220 USPQ 763, 772
(Fed. Cir.), cert. denied, 469 U.S. 821, 224 USPQ 520 (1984). The
"inquiry reasonable under the circumstances"requirement of 10.18 does
not create any new duty on the part of an applicant for patent to
conduct a prior art search. See MPEP 609; cf. Judin v. United States,
110 F.3d 780, 42 USPQ2d 1300 (Fed. Cir 1997) (the failure to obtain and
examine the accused infringing device prior to bringing a civil action
for infringement violates the 1983 version of Fed. R. Civ. P.11). The
"inquiry reasonable under the circumstances" requirement of 10.18,
however, will require an inquiry into the underlying facts and
circumstances when a practitioner provides conclusive statements to the
Office (e.g., a statement that the entire delay in filing the required
reply from the due date for the reply until the filing of a grantable
petition pursuant to 1.137(b) was unintentional).
Section 10.23: Section 10.23 is amended to change the phrase "knowingly
signing" to "signing." This amendment to 10.23 is for consistency
with 10.18, which contains no "knowingly" provision or requirement.
Review Under the Paperwork Reduction Act of 1995.
This Final Rule contains information collection requirements which are
subject to review by the Office of Management and Budget (OMB) under the
Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The principal
impact of this Final Rule is: (1) elimination of unnecessary rules of
practice; (2) simplification or elimination of certain requirements of
the rules of practice; (3) rearrangement of certain rules to improve
their context; and (4) clarification of the requirements of the rules of
practice.
The title, description and respondent description of each of the
information collections are shown below with an estimate of each of the
annual reporting burdens. The collections of information in this Final
Rule have been reviewed and approved by OMB under the following control
numbers: 0651-0016, 0651-0021, 0651-0022, 0651-0027, 0651-0031,
0651-0032, 0651-0033, 0651-0034, 0651-0035, and 0651-0037. Included in
each estimate is the time for reviewing instructions, gathering and
maintaining the data needed, and completing and reviewing the collection
of information.
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.
OMB Number: 0651-0016.
Title: Rules for Patent Maintenance Fees.
Form Numbers: PTO/SB/45/46/47/65/66.
Type of Review: Approved through July of 1999.
Affected Public: Individuals or Households, Business or Other
For-Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 273,800.
Estimated Time Per Response: 0.08 hour.
Estimated Total Annual Burden Hours: 22,640 hours.
Needs and Uses: Maintenance fees are required to maintain a patent,
except for design or plant patents, in force under 35 U.S.C. 41(b).
Payment of maintenance fees are required at 3 1/2, 7 1/2 and 11 1/2
years after the grant of the patent. A patent number and application
number of the patent on which maintenance fees are paid are required in
order to ensure proper crediting of such payments.
OMB Number: 0651-0021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101, ANNEX/134/144, PTO-1382, PCT/IPEA/401,
PCT/IB/328.
Type of Review: Approved through May of 2000.
Affected Public: Individuals or Households, Business or Other
For-Profit, Federal Agencies or Employees, Not-for-Profit Institutions,
Small Businesses or Organizations.
Estimated Number of Respondents: 102,950.
Estimated Time Per Response: 0.9538 hour.
Estimated Total Annual Burden Hours: 98,195 hours.
Needs and Uses: The information collected is required by the Patent
CooperationTreaty (PCT). The general purpose of the PCT is to simplify
the filing of patent applications on the same invention in different
countries. It provides for a centralized filing procedure anda
standardized application format.
OMB Number: 0651-0022.
Title: Deposit of Biological Materials for Patent Purposes.
Form Numbers: None.
Type of Review: Approved through December of 1997.
Affected Public: Individuals or Households, State or Local
Governments, Farms, Business or Other For-Profit, Federal Agencies or
Employees, Not-for-Profit Institutions, Small Businesses or
Organizations.
Estimated Number of Respondents: 3,325.
Estimated Time Per Response: 1.0 hour.
Estimated Total Annual Burden Hours: 3,325 hours.
Needs and Uses: Information on depositing of biological materials in
depositories is required for (1) Office determination of compliance with
the patent statute where the invention sought to be patented relies on
biological material subject to deposit requirement, which includes
notifying interested members of the public where to obtain samples of
deposits, and (2) depositories desiring to be recognized as suitable by
the Office.
OMB Number: 0651-0027.
Title: Changes in Patent and Trademark Assignment Practices.
Form Numbers: PTO-1618 and PTO-1619, PTO/SB/15/41.
Type of Review: Approved through September of 1998.
Affected Public: Individuals or Households and Businesses or Other
For-Profit.
Estimated Number of Respondents: 170,000.
Estimated Time Per Response: 0.57 hour.
Estimated Total Annual Burden Hours: 97,000 hours.
Needs and Uses: The Office records about 170,000 assignments or
documents related to ownership of patent and trademark cases each year.
The Office requires a cover sheet to expedite the processing of these
documents and to ensure that they are properly recorded.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08-12/21-26/31/32/42/43/61-64/67-69/91-93/96/97.
Type of Review: Approved through October of 1999.
Affected Public: Individuals or Households, Business or Other
For-Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 1,690,690.
Estimated Time Per Response: 0.361 hours.
Estimated Total Annual Burden Hours: 644,844 hours.
Needs and Uses: During the processing for an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the Office concerning the examination of a
specific application. The specific information required or which may be
submitted includes: Information Disclosure Statements; Terminal
Disclaimers; Petitions to Revive; Express Abandonments; Appeal Notices;
Small Entity; Petitions for Access; Powers to Inspect; Certificates of
Mailing; Certificates under 3.73(b); Amendments, Petitions and their
Transmittal Letters; and Deposit Account Order Forms.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07/17-20/101-109.
Type of Review: Approved through September of 1998.
Affected Public: Individuals or Households, Business or Other
For-Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 243,100.
Estimated Time Per Response: 7.88 hours.
Estimated Total Annual Burden Hours: 1,915,500 hours.
Needs and Uses: The purpose of this information collection is to
permit the Office to determine whether an application meets the criteria
set forth in the patent statute and regulations. The standard Fee
Transmittal form, New Utility Patent Application Transmittalform, New
Design Patent Application Transmittal form, New Plant Patent Application
Transmittal form, Plant Color Coding Sheet, Declaration, and Plant
Patent Application Declaration will assist applicants in complying with
the requirements of the patent statute and regulations, and will further
assist the Office in processing and examination of the application.
OMB Number: 0651-0033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
Type of Review: Approved through June of 1999.
Affected Public: Individuals or Households, Business or Other
For-Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 135,190.
Estimated Time Per Response: 0.325 hour.
Estimated Total Annual Burden Hours: 43,893 hours.
Needs and Uses: This collection of information is required to
administer the patent laws pursuant to title 35, U.S.C., concerning the
issuance of patents and related actions including correcting errors in
printed patents, refiling of patent applications, requesting
reexamination of a patent, and requesting a reissue patent to correct an
error in a patent. The affected public includes any individual or
institution whose application for a patent has been allowed or who takes
action as covered by the applicable rules.
OMB Number: 0651-0034.
Title: Secrecy/License to Export.
Form Numbers: None.
Type of Review: Approved through January of 1998.
Affected Public: Individuals or Households, Business or Other
For-Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 2,156.
Estimated Time Per Response: 0.5 hour.
Estimated Total Annual Burden Hours: 1,129 hours.
Needs and Uses: In the interest of national security, patent laws
and regulations place certain limitations on the disclosure of
information contained in patents and patent applications and on the
filing of applications for patent in foreign countries.
OMB Number: 0651-0035.
Title: Address-Affecting Provisions.
Form Numbers: PTO/SB/82/83.
Type of Review: Approved through June of 1999.
Affected Public: Individuals or Households, Business or Other
For-Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 44,850.
Estimated Time Per Response: 0.2 hour.
Estimated Total Annual Burden Hours: 8,970 hours.
Needs and Uses: Under existing law, a patent applicant or assignee
may appoint, revoke or change a representative to act in a
representative capacity. Also, an appointed representative may withdraw
from acting in a representative capacity. This collection includes the
information needed to ensure that Office correspondence reaches the
appropriate individual.
OMB Number: 0651-0037.
Title: Provisional Applications.
Form Numbers: PTO/SB/16.
Type of Review: Approved through January of 1998.
Affected Public: Individuals or Households, Business or Other
For-Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 6,000.
Estimated Time Per Response: 0.2 hour.
Estimated Total Annual Burden Hours: 1,200 hours.
Needs and Uses: The information included on the provisional
application cover sheet is needed by the Office to identify the
submission as a provisional application and not some other kind of
submission, to promptly and properly process the provisional
application, to prepare the provisional application filing receipt which
is sent to the applicant, and to identify those provisional applications
which must be reviewed by the Office for foreign filing licenses.
As required by the Paperwork Reduction Act of 1995 (44 U.S.C. 3507(d)),
the Office has submitted a copy of this Final Rule to OMB for its review
of these information collections. Interested persons are requested to
send comments regarding these information collections, including
suggestions for reducing this burden, to the Office of Information and
Regulatory Affairs of OMB, New Executive Office Bldg., 725 17th St. NW,
rm. 10235, Washington, DC 20503, Attn: Desk Officer for the Patent and
Trademark Office.
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).
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 this Final Rule would not have a
significant impact on a substantial number of small entities (Regulatory
Flexibility Act, 5 U.S.C. 605(b)). The principal impact of this Final
Rule is: (1) elimination of unnecessary rules of practice; (2)
simplification or elimination of certain requirements of the rules of
practice; (3) rearrangement of certain rules to improve their context;
and (4) clarification of the requirements of the rules of practice.
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.
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.
37 CFR Part 5
Classified information, foreign relations, inventions and patents.
37 CFR Part 7
Administrative practice and procedure, Inventions and patents, Reporting
and record keeping requirements.
37 CFR Part 10
Administrative practice and procedure, Inventions and patents, Lawyers,
Reporting and record keeping requirements.
For the reasons set forth in the preamble, 37 CFR Parts 1, 3, 5, 7 and
10 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 1.4 is amended by revising paragraph (d) and by adding
paragraph (g) to read as follows:
1.4 Nature of correspondence and signature requirements.
* * * * *
(d)(1) Each piece of correspondence, except as provided in paragraphs
(e) and (f) of this section, filed in a patent or trademark application,
reexamination proceeding, patent or trademark interference proceeding,
patent file or trademark registration file, trademark opposition
proceeding, trademark cancellation proceeding, or trademark concurrent
use proceeding, which requires a person's signature, must either:
(i) Be an original, that is, have an original signature personally
signed in permanent ink by that person; or
(ii) Be a direct or indirect copy, such as a photocopy or facsimile
transmission( 1.6(d)), of an original. In the event that a copy of the
original is filed, the original should be retained as evidence of
authenticity. If a question of authenticity arises, the Patent and
Trademark Office may require submission of the original.
(2) The presentation to the Office (whether by signing, filing,
submitting, or later advocating) of any paper by a party, whether a
practitioner or non-practitioner, constitutes a certification under
10.18(b) of this chapter. Violations of 10.18(b)(2) of this chapter
by a party, whether a practitioner or non-practitioner, may result in
the imposition of sanctions under 10.18(c) of this chapter. Any
practitioner violating 10.18(b) may also be subject to disciplinary
action. See 10.18(d) and 10.23(c)(15).
* * * * *
(g) An applicant who has not made of record a registered attorney or
agent may be required to state whether assistance was received in the
preparation or prosecution of the patent application, for which any
compensation or consideration was given or charged, and if so, to
disclose the name or names of the person or persons providing such
assistance. Assistance includes the preparation for the applicant of the
specification and amendments or other papers to be filed in the Patent
and Trademark Office, as well as other assistance in such matters, but
does not include merely making drawings by draftsmen or stenographic
services in typing papers.
3. Section 1.6 is amended by revising paragraphs (d)(3), (d)(6), and (e)
and adding paragraph (f) to read as follows:
1.6 Receipt of correspondence.
* * * * *
(d) * * *
(3) Correspondence which cannot receive the benefit of the
certificate of mailing or transmission as specified in
1.8(a)(2)(i)(A) through (D) and (F), 1.8(a)(2)(ii)(A), and
1.8(a)(2)(iii)(A), except that a continued prosecution application under
1.53(d) may be transmitted to the Office by facsimile;
* * *
(6) Correspondence to be filed in a patent application subject to a
secrecy order under 5.1 through 5.5 of this chapter and directly
related to the secrecy order content of the application;
* * * * *
(e) Interruptions in U.S. Postal Service. If interruptions or
emergencies in the United States Postal Service which have been so
designated by the Commissioner occur, the Patent and Trademark Office
will consider as filed on a particular date in the Office any
correspondence which is:
(1) Promptly filed after the ending of the designated interruption or
emergency; and
(2) Accompanied by a statement indicating that such correspondence
would have been filed on that particular date if it were not for the
designated interruption or emergency in the United States Postal Service.
(f) Facsimile transmission of a patent application under 1.53(d).
In the event that the Office has no evidence of receipt of an
application under 1.53(d) (a continued prosecution application)
transmitted to the Office by facsimile transmission, the party who
transmitted the application under 1.53(d) may petition the
Commissioner to accord the application under 1.53(d) a filing date as
of the date the application under 1.53(d) is shown to have been
transmitted to and received in the Office,
(1) Provided that the party who transmitted such application under
1.53(d):
(i) Informs the Office of the previous transmission of the
application under 1.53(d) promptly after becoming aware that the
Office has no evidence of receipt of the application under 1.53(d);
(ii) Supplies an additional copy of the previously transmitted
application under 1.53(d); and
(iii) Includes a statement which attests on a personal knowledge
basis or to the satisfaction of the Commissioner to the previous
transmission of the application under 1.53(d) and is accompanied by a
copy of the sending unit's report confirming transmission of the
application under 1.53(d) or evidence that came into being after the
complete transmission and within one business day of the complete
transmission of the application under 1.53(d).
(2) The Office may require additional evidence to determine if the
application under 1.53(d) was transmitted to and received in the
Office on the date in question.
4. Section 1.8 is amended by revising paragraphs (a)(2)(i)(A) and (b) to
read as follows:
1.8 Certificate of mailing or transmission.
(a) * * *
(2) * * *
(i) * * *
(A) The filing of a national patent application specification and
drawing or other correspondence for the purpose of obtaining an
application filing date, including a request for a continued
prosecution application under 1.53(d);
* * * * *
(b) In the event that correspondence is considered timely filed by
being mailed or transmitted in accordance with paragraph (a) of this
section, but not received in the Patent and Trademark Office, and the
application is held to be abandoned or the proceeding is dismissed,
terminated, or decided with prejudice, the correspondence will be
considered timely if the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of the
correspondence promptly after becoming aware that the Office has no
evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously mailed or
transmitted correspondence and certificate; and
(3) Includes a statement which attests on a personal knowledge basis
or to the satisfaction of the Commissioner to the previous timely
mailing or transmission. If the correspondence was sent by facsimile
transmission, a copy of the sending unit's report confirming
transmission may be used to support this statement.
* * * * *
5. Section 1.9 is amended by revising paragraphs (d) and (f) to read as
follows:
1.9 Definitions.
* * * * *
(d) A small business concern as used in this chapter means any
business concern meeting the size standards set forth in 13 CFR Part 121
to be eligible for reduced patent fees. Questions related to size
standards for a small business concern may be directed to: Small
Business Administration, Size Standards Staff, 409 Third Street, SW,
Washington, DC 20416.
* * * * *
(f) A small entity as used in this chapter means an independent
inventor, a small business concern, or a non-profit organization
eligible for reduced patent fees.
* * * * *
6. Section 1.10 is amended by revising paragraphs (d) and (e) to read as
follows:
1.10 Filing of correspondence by "Express Mail."
* * * * *
(d) Any person filing correspondence under this section that was
received by the Office and delivered by the "Express Mail Post Office to
Addressee" service of the USPS, who can show that the "date-in" on the
"Express Mail" mailing label or other official notation entered by the
USPS was incorrectly entered or omitted by the USPS, may petition the
Commissioner to accord the correspondence a filing date as of the date
the correspondence is shown to have been deposited with the USPS,
provided that:
(1) The petition is filed promptly after the person becomes aware
that the Office has accorded, or will accord, a filing date based upon
an incorrect entry by the USPS;
(2) The number of the "Express Mail" mailing label was placed on the
paper(s) orfee(s) that constitute the correspondence prior to the
original mailing by "Express Mail"; and
(3) The petition includes a showing which establishes, to the
satisfaction of the Commissioner, that the requested filing date was the
date the correspondence was deposited in the "Express Mail Post Office
to Addressee" service prior to the last scheduled pickup for that day.
Any showing pursuant to this paragraph must be corroborated by evidence
from the USPS or that came into being after deposit and within one
business day of the deposit of the correspondence in the "Express Mail
Post Office to Addressee" service of the USPS.
(e) Any person mailing correspondence addressed as set out in
1.1(a) to the Office with sufficient postage utilizing the "Express Mail
Post Office to Addressee" service of the USPS but not received by the
Office, may petition the Commissioner to consider such correspondence
filed in the Office on the USPS deposit date, provided that:
(1) The petition is filed promptly after the person becomes aware
that the Office has no evidence of receipt of the correspondence;
(2) The number of the "Express Mail" mailing label was placed on the
paper(s) or fee(s) that constitute the correspondence prior to the
original mailing by "Express Mail";
(3) The petition includes a copy of the originally deposited paper(s)
or fee(s) that constitute the correspondence showing the number of the
"Express Mail" mailing label thereon, a copy of any returned postcard
receipt, a copy of the "Express Mail" mailing label showing the
"date-in," a copy of any other official notation by the USPS relied upon
to show the date of deposit, and, if the requested filing date is a date
other than the "date-in" on the "Express Mail" mailing label or other
official notation entered by the USPS, a showing pursuant to paragraph
(d)(3) of this section that the requested filing date was the date the
correspondence was deposited in the "Express Mail Post Office to
Addressee" service prior to the last scheduled pickup for that day; and
(4) The petition includes a statement which establishes, to the
satisfaction of the Commissioner, the original deposit of the
correspondence and that the copies of the correspondence, the copy of
the "Express Mail" mailing label, the copy of any returned postcard
receipt, and any official notation entered by the USPS are true copies
of the originally mailed correspondence, original "Express Mail" mailing
label, returned postcard receipt, and official notation entered by the
USPS.
* * * * *
7. Section 1.11 is amended by revising paragraph (b) to read as follows:
1.11 Files open to the public.
* * * * *
(b) All reissue applications, all applications in which the Office
has accepted a request to open the complete application to inspection by
the public, and related papers in the application file, are open to
inspection by the public, and copies may be furnished upon paying the
fee therefor. The filing of reissue applications, other than continued
prosecution applications under 1.53(d) of reissue applications, will
be announced in the Official Gazette. The announcement shall include at
least the filing date, reissue application and original patent numbers,
title, class and subclass, name of the inventor, name of the owner of
record, name of the attorney or agent of record, and examining group to
which the reissue application is assigned.
* * * * *
8. Section 1.14 is amended by revising paragraph (a) and adding a new
paragraph (f) to read as follows:
1.14 Patent applications preserved in confidence.
(a) Patent applications are generally preserved in confidence
pursuant to 35 U.S.C. 122. No information will be given concerning the
filing, pendency, or subject matter of any application for patent, and
no access will be given to, or copies furnished of, any applicationor
papers relating thereto, except as set forth in this section.
(1) Status information includes information such as whether the
application is pending, abandoned, or patented, as well as the
application number and filing date (or international filing date or date
of entry into the national stage).
(i) Status information concerning an application may be supplied:
(A) When copies of, or access to, the application may be provided
pursuant to paragraph (a)(3) of this section;
(B) When the application is identified by application number or
serial number and filing date in a published patent document or in a
U.S. application open to public inspection; or
(C) When the application is the national stage of an international
application in which the United States of America has been indicated as
a Designated State.
(ii) Status information concerning an application may also be
supplied when the application claims the benefit of the filing date of
an application for which status information may be provided pursuant to
paragraph (a)(1)(i) of this section.
(2) Copies of an application-as-filed may be provided to any person,
upon written request accompanied by the fee set forth in 1.19(b)(1),
without notice to the applicant, if the application is incorporated by
reference in a U.S. patent.
(3) Copies of (upon payment of the fee set forth in 1.19(b)(2)),
and access to, an application file wrapper and contents may be provided
to any person, upon written request, without notice to the applicant,
when the application file is available and:
(i) It has been determined by the Commissioner to be necessary for
the proper conduct of business before the Office or warranted by other
special circumstances;
(ii) The application is open to the public as provided in 1.11(b);
(iii) Written authority in that application from the applicant, the
assignee of the application, or the attorney or agent of record has been
granted; or
(iv) The application is abandoned, but not if the application is in
the file jacket of a pending application under 1.53(d), and is:
(A) Referred to in a U.S. patent;
(B) Referred to in a U.S. application open to public inspection;
(C) An application which claims the benefit of the filing date of a
U.S. application open to public inspection; or
(D) An application in which the applicant has filed an authorization
to lay open the complete application to the public.
* * * * *
(f) Information as to the filing of an application will be published
in the Official Gazette in accordance with 1.47(a) and (b).
9. Section 1.16 is amended by revising paragraphs (d) and (l) and adding
new paragraphs (m) and (n) to read as follows:
1.16 National application filing fees.
* * * * *
(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)) 135.00
By other than a small entity 270.00
* * * * *
(l) Surcharge for filing the basic filing fee or cover sheet (
1.51(c)(1)) 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
(m) If the additional fees required by paragraphs (b), (c), (d), (i)
and (j) 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 must be cancelled by amendment, prior to the expiration of
the time period set for reply by the Office in any notice of fee
deficiency.
(n) See 1.445, 1.482, and 1.495 for international application
filing and processing fees.
10. Section 1.17 is amended by removing and reserving paragraphs (e)
through (g) and revising paragraphs (a) through (d), (h), (i) and (q) to
read as follows:
1.17 Patent application processing fees.
(a) Extension fees pursuant to 1.136(a):
(1) For reply within first month:
By a small entity ( 1.9(f)) $55.00
By other than a small entity 110.00
(2) For reply within second month:
By a small entity ( 1.9(f)) 200.00
By other than a small entity 400.00
(3) For reply within third month:
By a small entity ( 1.9(f)) 475.00
By other than a small entity 950.00
(4) For reply within fourth month:
By a small entity ( 1.9(f)) 755.00
By other than a small entity 1,510.00
(5) For reply within fifth month:
By a small entity ( 1.9(f)) 1,030.00
By other than a small entity 2,060.00
(b) For filing a notice of appeal from the examiner to the Board of
Patent Appeals and Interferences:
By a small entity ( 1.9(f)) 155.00
By other than a small entity 310.00
(c) In addition to the fee for filing a notice of appeal, for filing
a brief in support of an appeal:
By a small entity ( 1.9(f)) 155.00
By other than a small entity 310.00
(d) For filing a request for an oral hearing before the Board of
Patent Appeals and Interferences in an appeal under 35 U.S.C. 134:
By a small entity ( 1.9(f)) 135.00
By other than a small entity 270.00
(e) [Reserved]
(f) [Reserved]
(g) [Reserved]
(h) For filing a petition to the Commissioner under a section listed
below which refers to this paragraph 130.00
1.182 - for decision on a question not specifically provided for.
1.183 - to suspend the rules.
1.295 - for review of refusal to publish a statutory invention
registration.
1.377 - for review of decision refusing to accept and record payment
of a maintenance fee filed prior to expiration of a patent.
1.378(e) - for reconsideration of decision on petition refusing to
accept delayed payment of maintenance fee in an expired patent.
1.644(e) - for petition in an interference.
1.644(f) - for request for reconsideration of a decision on petition
in an interference.
1.666(c) - for late filing of interference settlement agreement.
5.12 - for expedited handling of a foreign filing license.
5.15 - for changing the scope of a license.
5.25 - for retroactive license.
(i) 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.
1.41 - to supply the name or names of the inventor or inventors
after the filing date without an oath or declaration as prescribed by
1.63, except in provisional applications.
1.47 - for filing by other than all the inventors or a person not
the inventor.
1.48 - for correction of inventorship, except in provisional
applications.
1.53 - to accord a filing date, except in provisional applications.
1.55 - for entry of late priority papers.
1.59 - for expungement and return of information.
1.84 - for accepting color drawings or photographs.
1.91 - for entry of a model or exhibit.
1.97(d) - to consider an information disclosure statement.
1.102 - to make an 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 an interference settlement agreement.
3.81 - for a 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
1.41 - to supply the names or names of the inventor or inventors
after the filing date without a cover sheet as prescribed by
1.51(c)(1) in a provisional application.
1.48 - for correction of inventorship in a provisional application.
1.53 - to accord a provisional application a filing date or to
convert a nonprovisional application filed under 1.53(b) to a
provisional application under 1.53(c).
* * * * *
11. Section 1.21 is amended by revising paragraphs (l) and (n) to read
as follows:
1.21 Miscellaneous fees and charges.
* * * * *
(l) For processing and retaining any application abandoned pursuant
to 1.53(f), unless the required basic filing fee ( 1.16) has been
paid 130.00
* * * * *
(n) For handling an application in which proceedings are terminated
pursuant to 1.53(e) 130.00
* * * * *
12. Section 1.26 is amended by revising paragraph (a) to read as follows:
1.26 Refunds.
(a) Any fee paid by actual mistake or in excess of that required will
be refunded, but a mere change of purpose after the payment of money, as
when a party desires to withdraw an application, an appeal, or a request
for oral hearing, will not entitle a party to demand such a return.
Amounts of twenty-five dollars or less will not be returned unless
specifically requested within a reasonable time, nor will the payer be
notified of such amounts; amounts over twenty-five dollars may be
returned by check or, if requested, by credit to a deposit account.
* * * * *
13. Section 1.27 is revised to read as follows:
1.27 Statement of status as small entity.
(a) Any person seeking to establish status as a small entity (
1.9(f) of this part) for purposes of paying fees in an application or a
patent must file a statement in the application or patent prior to or
with the first fee paid as a small entity. Such a statement need only be
filed once in an application or patent and remains in effect until
changed.
(b) When establishing status as a small entity pursuant to paragraph
(a) of this section, any statement filed on behalf of an independent
inventor must be signed by the independent inventor except as provided
in 1.42, 1.43, or 1.47 of this part and must state that the
inventor qualifies as an independent inventor in accordance with
1.9(c) of this part. Where there are joint inventors in an application,
each inventor must file a statement establishing status as an
independent inventor in order to qualify as a small entity. Where any
rights have been assigned, granted, conveyed, or licensed, or there is
an obligation to assign, grant, convey, or license, any rights to a
small business concern, a nonprofit organization, or any other
individual, a statement must be filed by the individual, the owner of
the small business concern, or an official of the small business concern
or nonprofit organization empowered to act on behalf of the small
business concern or nonprofit organization identifying their status. For
purposes of a statement under this paragraph, a license to a Federal
agency resulting from a funding agreement with that agency pursuant to
35 U.S.C. 202(c)(4) does not constitute a license as set forth in 1.9
of this part.
(c)(1) Any statement filed pursuant to paragraph (a) of this section
on behalf of a small business concern must:
(i)Be signed by the owner or an official of the small business
concern empowered to act on behalf of the concern;
(ii) State that the concern qualifies as a small business concern as
defined in 1.9(d); and
(iii) State that the exclusive rights to the invention have been
conveyed to and remain with the small business concern or, if the rights
are not exclusive, that all other rights belong to small entities as
defined in 1.9.
(2) Where the rights of the small business concern as a small entity
are not exclusive, a statement must also be filed by the other small
entities having rights stating their status as such. For purposes of a
statement under this paragraph, a license to a Federal agency resulting
from a funding agreement with that agency pursuant to 35 U.S.C.
202(c)(4) does not constitute a license as set forth in 1.9 of this
part.
(d)(1) Any statement filed pursuant to paragraph (a) of this section
on behalf of a nonprofit organization must:
(i) Be signed by an official of the nonprofit organization empowered
to act on behalf of the organization;
(ii) State that the organization qualifies as a nonprofit
organization as defined in 1.9(e) of this part specifying under which
one of 1.9(e)(1), (2), (3), or (4) of this part the organization
qualifies; and
(iii) State that exclusive rights to the invention have been conveyed
to and remain with the organization or if the rights are not exclusive
that all other rights belong to small entities as defined in 1.9 of
this part.
(2) Where the rights of the nonprofit organization as a small entity
are not exclusive, a statement must also be filed by the other small
entities having rights stating their status as such. For purposes of a
statement under this paragraph, a license to a Federal agency pursuant
to 35 U.S.C. 202(c)(4) does not constitute a conveyance of rights as set
forth in this paragraph.
14. Section 1.28 is amended by revising paragraphs (a) and (c) to read
as follows:
1.28 Effect on fees of failure to establish status, or change status,
as a small entity.
(a)(1) 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 infull prior to establishing status as a small
entity may only be obtained if a 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.
(2) 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. The refiling of an application
under 1.53 as a continuation, division, or continuation-in-part
(including a continued prosecution application under 1.53(d)), or the
filing of a reissue application requires a new determination as to
continued entitlement to small entity status for the continuing or
reissue application. A nonprovisional application claiming benefit under
35 U.S.C. 119(e), 120, 121, or 365(c) of a prior application, or a
reissue application may rely on a statement filed in the prior
application or in the patent if the nonprovisional application or the
reissue application includes a reference to the statement in the prior
application or in the patent or includes a copy of the statement in the
prior application or in the patent and status as a small entity is still
proper and desired. The payment of the small entity basic statutory
filing fee will be treated as such a reference for purposes of this
section.
(3) 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 statement pursuant to 1.27 of this
part unless the Office is notified of a change in status.
* * * * *
(c) If status as a small entity is established in good faith, and
fees as a small entity are paid in good faith, in any application or
patent, and it is later discovered that such status as a small entity
was established in error or that through error the Office was not
notified of a change in status as required by paragraph (b) of this
section, the error will be excused upon payment of the deficiency
between the amount paid and the amount due. The deficiency is based on
the amount of the fee, for other than a small entity, in effect at the
time the deficiency is paid in full.
* * * * *
15. Section 1.33 is amended by revising paragraphs (a) and (b) to read
as follows:
1.33 Correspondence address respecting patent applications,
reexamination proceedings, and other proceedings.
(a) The applicant, the assignee(s) of the entire interest (see
3.71 and 3.73) or an attorney or agent of record (see 1.34(b)) may
specify a correspondence address to which communications about the
application are to be directed. All notices, official letters, and other
communications in the application will be directed to the correspondence
address or, if no such correspondence address is specified, to an
attorney or agent of record (see 1.34(b)), or, if no attorney or
agent is of record, to the applicant, so long as a post office address
has been furnished in the application. Double correspondence with an
applicant and an attorney or agent, or with more than one attorney or
agent, will not be undertaken. If more than one attorney or agent is
made of record and a correspondence address has not been specified,
correspondence will be held with the one last made of record.
(b) Amendments and other papers filed in the application must be
signed by:
(1) An attorney or agent of record appointed in compliance with
1.34(b);
(2) A registered attorney or agent not of record who acts in a
representative capacity under the provisions of 1.34(a);
(3) The assignee of record of the entire interest, if there is an
assignee of record of the entire interest;
(4) An assignee of record of an undivided part interest, and any
assignee(s) of the remaining interest and any applicant retaining an
interest, if there is an assignee of record of an undivided part
interest; or
(5) All of the applicants ( 1.42, 1.43 and 1.47) for patent,
unless there is an assignee of record of the entire interest and such
assignee has taken action in the application in accordance with
3.71 and 3.73.
* * * * *
16. Section 1.41 is amended by revising paragraph (a) to read as follows:
1.41 Applicant for patent.
(a) A patent is applied for in the name or names of the actual
inventor or inventors.
(1) The inventorship of a nonprovisional application is that
inventorship set forth in the oath or declaration as prescribed by
1.63, except as provided for in 1.53(d)(4) and 1.63(d). If an oath
or declaration as prescribed by 1.63 is not filed during the pendency
of a nonprovisional application, the inventorship is that inventorship
set forth in the application papers filed pursuant to 1.53(b), unless
a petition under this paragraph accompanied by the fee set forth in
1.17(i) is filed supplying or changing the name or names of the inventor
or inventors.
(2) The inventorship of a provisional application is that
inventorship set forth in the cover sheet as prescribed by
1.51(c)(1). If a cover sheet as prescribed by 1.51(c)(1) is not filed
during the pendency of a provisional application, the inventorship is
that inventorship set forth in the application papers filed pursuant to
1.53(c), unless a petition under this paragraph accompanied by the fee
set forth in 1.17(q) is filed supplying or changing the name or names
of the inventor or inventors.
(3) In a nonprovisional application filed without an oath or
declaration as prescribed by 1.63 or a provisional application filed
without a cover sheet as prescribed by 1.51(c)(1), the name or names
of person or persons believed to be the actual inventor or inventors
should be provided for identification purposes when the application
papers pursuant to 1.53(b) or (c) are filed. If no name of a person
believed to be an actual inventor is so provided, the application should
include an applicant identifier consisting of alphanumeric characters.
* * * * *
17. Section 1.47 is revised to read as follows:
1.47 Filing when an inventor refuses to sign or cannot be reached.
(a) If a joint inventor refuses to join in an application for patent
or cannot be found or reached after diligent effort, the application may
be made by the other inventor on behalf of himself or herself and the
nonsigning inventor. The oath or declaration in such an application must
be accompanied by a petition including proof of the pertinent facts, the
fee set forth in 1.17(i) and the last known address of the nonsigning
inventor. The Patent and Trademark Office shall, except in a continued
prosecution application under 1.53(d), forward notice of the filing
of the application to the nonsigning inventor at said address and
publish notice of the filing of the application in the Official Gazette.
The nonsigning inventor may subsequently join in the application on
filing an oath or declaration complying with 1.63.
(b) Whenever all of the inventors refuse to execute an application
for patent, or cannot be found or reached after diligent effort, a
person to whom an inventor has assigned or agreed in writing to assign
the invention or who otherwise shows sufficient proprietary interest in
the matter justifying such action may make application for patent on
behalf of and as agent for all the inventors. The oath or declaration in
such an application must be accompanied by a petition including proof of
the pertinent facts, a showing that such action is necessary to preserve
the rights of the parties or to prevent irreparable damage, the fee set
forth in 1.17(i), and the last known address of all of the inventors.
The Office shall, excepting a continued prosecution application under
1.53(d), forward notice of the filing of the application to all of the
inventors at the addresses stated in the application and publish notice
of the filing of the application in the Official Gazette. An inventor
may subsequently join in the application on filing an oath or
declaration complying with 1.63.
18. Section 1.48 and its heading are revised to read as follows:
1.48 Correction of inventorship in a patent application, other than a
reissue application.
(a) If the inventive entity is set forth in error in an executed
1.63 oath or declaration in an application, other than a reissue
application, and such error arose without any deceptive intention on the
part of the person named as an inventor in error or on the part of the
person who through error was not named as an inventor, the application
may be amended to name only the actual inventor or inventors. When the
application is involved in an interference, the amendment must comply
with the requirements of this section and must be accompanied by a
motion under 1.634. Such amendment must be accompanied by:
(1) A petition including a statement from each person being added as
an inventor and from each person being deleted as an inventor that the
error in inventorship occurred without deceptive intention on his or her
part;
(2) An oath or declaration by the actual inventor or inventors as
required by 1.63 or as permitted by 1.42, 1.43 or 1.47;
(3) The fee set forth in 1.17(i); and
(4) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see 3.73(b)).
(b) If the correct inventors are named in a nonprovisional
application, other than are issue application, and the prosecution of
the application results in the amendment or cancellation of claims so
that fewer than all of the currently named inventors are the actual
inventors of the invention being claimed in the application, an
amendment must be filed deleting the name or names of the person or
persons who are not inventors of the invention being claimed. When the
application is involved in an interference, the amendment must comply
with the requirements of this section and must be accompanied by a
motion under 1.634. Such amendment must 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(i).
(c) If a nonprovisional application, other than a reissue
application, discloses unclaimed subject matter by an inventor or
inventors not named in the application, the application may be amended
to add claims to the subject matter and name the correct inventors for
the application. When the application is involved in an interference,
the amendment must comply with the requirements of this section and must
be accompanied by a motion under 1.634. Such amendment must be
accompanied by:
(1) A petition including a statement from each person being added as
an inventor that the amendment is necessitated by amendment of the
claims and that the inventorship error occurred without deceptive
intention on his or her part;
(2) An oath or declaration by the actual inventor or inventors as
required by 1.63 or as permitted by 1.42, 1.43 or 1.47;
(3) The fee set forth in 1.17(i); and
(4) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see 3.73(b)).
(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 omitted inventor or inventors, the provisional
application may be amended to add the name or names of the omitted
inventor or inventors. Such amendment must be accompanied by:
(1) A petition including a statement that the inventorship error
occurred without deceptive intention on the part of the omitted inventor
or inventors; 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
on the part of such person or persons, 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 by the person or persons whose
name or names are being deleted that the inventorship error occurred
without deceptive intention on the part of such person or persons;
(2) The fee set forth in 1.17(q); and
(3) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see 3.73(b)).
(f)(1) If the correct inventor or inventors are not named on filing a
nonprovisional application under 1.53(b) without an executed oath or
declaration under 1.63, the later submission of an executed oath or
declaration under 1.63 during the pendency of the application will
act to correct the earlier identification of inventorship.
(2) If the correct inventor or inventors are not named on filing a
provisional application without a cover sheet under 1.51(c)(1), the
later submission of a cover sheet under 1.51(c)(1) during the
pendency of the application will act to correct the earlier
identification of inventorship.
(g) The Office may require such other information as may be deemed
appropriate under the particular circumstances surrounding the
correction of inventorship.
19. Section 1.51 is revised 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.
(b) A complete application filed under 1.53(b) comprises:
(1) A specification as prescribed by 35 U.S.C. 112, including a claim
or claims, see 1.71 to 1.77;
(2) An oath or declaration, see 1.63 and 1.68;
(3) Drawings, when necessary, see 1.81 to 1.85; and
(4) The prescribed filing fee, see 1.16.
(c) A complete provisional application filed under 1.53(c)
comprises:
(1) A cover sheet identifying:
(i) The application as a provisional application,
(ii) The name or names of the inventor or inventors, (see
1.41(a)(2)),
(iii) The residence of each named inventor,
(iv) The title of the invention,
(v) The name and registration number of the attorney or agent (if
applicable),
(vi) The docket number used by the person filing the application to
identify the application (if applicable),
(vii) The correspondence address, and
(viii) 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);
(2) A specification as prescribed by the first paragraph of 35 U.S.C.
112, see 1.71;
(3) Drawings, when necessary, see 1.81 to 1.85; and
(4) The prescribed filing fee, see 1.16.
(d) Applicants are encouraged to file an information disclosure
statement in nonprovisional applications. See 1.97 and 1.98. No
information disclosure statementmay be filed in a provisional
application.
20. Section 1.52 is amended by revising paragraphs (a), (c) and (d) to
read as follows:
1.52 Language, paper, writing, margins.
(a) The application, any amendments or corrections thereto, and the
oath or declaration must be in the English language except as provided
for in 1.69 and paragraph(d) of this section, or be accompanied by a
translation of the application and a translation of any corrections or
amendments into the English language together with a statement that the
translation is accurate. All papers which are to become a part of the
permanent records of the Patent and Trademark Office must be legibly
written either by a typewriter or mechanical printer in permanent dark
ink or its equivalent in portrait orientation on flexible, strong,
smooth, non-shiny, durable, and white paper. All of the application
papers must be presented in a form having sufficient clarity and
contrast between the paper and the writing thereon to permit the direct
reproduction of readily legible copies in any number by use of
photographic, electrostatic, photo-offset, and microfilming processes
and electronic reproduction by use of digital imaging and optical
character recognition. If the papers are not of the required quality,
substitute typewritten or mechanically printed papers of suitable
quality will be required. See 1.125 for filing substitute typewritten
or mechanically printed papers constituting a substitute specification
when required by the Office.
* * * * *
(c) Any interlineation, erasure, cancellation or other alteration of
the application papers filed should be made on or before the signing of
any accompanying oath or declaration pursuant to 1.63 referring to
those application papers and should be dated and initialed or signed by
the applicant on the same sheet of paper. Application papers containing
alterations made after the signing of an oath or declaration referring
to those application papers must be supported by a supplemental oath or
declaration under 1.67(c). After the signing of the oath or
declaration referring to the application papers, amendments may only be
made in the manner provided by 1.121.
(d) An application may be filed in a language other than English. An
English translation of the non-English-language application, a statement
that the translation is accurate, and the fee set forth in 1.17(k)
are required to be filed with the application or within such time as may
be set by the Office.
21. Section 1.53 is revised to read as follows:
1.53 Application number, filing date, and completion of application.
(a) Application number. Any papers received in the Patent and
Trademark Office which purport to be an application for a patent will be
assigned an application number for identification purposes.
(b) Application filing requirements - Nonprovisional application. The
filing date of an application for patent filed under this section,
except for a provisional application under paragraph (c) of this section
or a continued prosecution application under paragraph (d) of this
section, is the date on which a specification as prescribed by 35 U.S.C.
112 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. No new matter may be introduced into an
application after its filing date. A continuing application, which may
be a continuation, divisional, or continuation-in-part application, may
be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c)
and 1.78(a).
(1) A continuation or divisional application that names as inventors
the same or fewer than all of the inventors named in the prior
application may be filed under this paragraph or paragraph (d) of this
section.
(2) A continuation-in-part application (which may disclose and claim
subject matter not disclosed in the prior application) or a continuation
or divisional application naming an inventor not named in the prior
application must be filed under this paragraph.
(c) Application filing requirements - Provisional application. The
filing date of a provisional application is the date on which a
specification as prescribed by the first paragraph of 35 U.S.C. 112, and
any drawing required by 1.81(a) are filed in the Patent and Trademark
Office. No amendment, other than to make the provisional application
comply with the patent statute and all applicable regulations, may be
made to the provisional application after the filing date of the
provisional application.
(1) A provisional application must also include the cover sheet
required by 1.51(c)(1) or a cover letter identifying the application
as a provisional application. Otherwise, the application will be treated
as an application filed under paragraph (b) of this section.
(2) An application for patent filed under paragraph (b) of this
section may be converted to a provisional application and be accorded
the original filing date of the application filed under paragraph (b) of
this section,
(i) Provided that a petition requesting the conversion, with the fee
set forth in 1.17(q), is filed prior to the earliest of:
(A) Abandonment of the application filed under paragraph (b) of this
section;
(B) Payment of the issue fee on the application filed under paragraph
(b) of this section;
(C) Expiration of twelve months after the filing date of the
application filed under paragraph (b) of this section; or
(D) The filing of a request for a statutory invention registration
under 1.293 in the application filed under paragraph (b) of this
section.
(ii) 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 paragraph (b) of this section.
(3) A provisional application is not entitled to the right of
priority under 35 U.S.C.119 or 365(a) or 1.55, or to the benefit of
an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or 1.78 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
through 1.825 regarding application disclosures containing nucleotide
and/or amino acid sequences are not mandatory for provisional
applications.
(d) Application filing requirements - Continued prosecution
(nonprovisional) application.
(1) A continuation or divisional application (but not a
continuation-in-part) of a prior nonprovisional application may be filed
as a continued prosecution application under this paragraph, provided
that:
(i) The prior nonprovisional application is either:
(A) Complete as defined by 1.51(b) and filed on or after June 8,
1995; or
(B) The national stage of an international application in compliance
with 35 U.S.C. 371 and filed on or after June 8, 1995; and
(ii) The application under this paragraph is filed before the
earliest of:
(A) Payment of the issue fee on the prior application, unless a
petition under 1.313(b)(5) is granted in the prior application;
(B) Abandonment of the prior application; or
(C) Termination of proceedings on the prior application.
(2) The filing date of a continued prosecution application is the
date on which a request on a separate paper for an application under
this paragraph is filed. An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the prior
application;
(iii) Names as inventors the same inventors named in the prior
application on the date the application under this paragraph was filed,
except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph,
will utilize the file jacket and contents of the prior application,
including the specification, drawings and oath ordeclaration from the
prior application, to constitute the new application, and will be
assigned the application number of the prior application for
identification purposes; and
(v) Is a request to expressly abandon the prior application as of the
filing date of the request for an application under this paragraph.
(3) The filing fee for a continued prosecution application filed
under this paragraph is:
(i) The basic filing fee as set forth in 1.16; and
(ii) Any additional 1.16 fee due based on the number of claims
remaining in the application after entry of any amendment accompanying
the request for an application under this paragraph and entry of any
amendments under 1.116 unentered in the prior application which
applicant has requested to be entered in the continued prosecution
application.
(4) An application filed under this paragraph may be filed by fewer
than all the inventors named in the prior application, provided that the
request for an application under this paragraph when filed is
accompanied by a statement requesting deletion of the name or names of
the person or persons who are not inventors of the invention being
claimed in the new application. No person may be named as an inventor in
an application filed under this paragraph who was not named as an
inventor in the prior application on the date the application under this
paragraph was filed, except by way of a petition under 1.48.
(5) Any new change must be made in the form of an amendment to the
prior application as it existed prior to the filing of an application
under this paragraph. No amendment in an application under this
paragraph (a continued prosecution application) may introduce new matter
or matter that would have been new matter in the prior application. Any
new specification filed with the request for an application under this
paragraph will not be considered part of the original application
papers, but will be treated as a substitute specification in accordance
with 1.125.
(6) The filing of a continued prosecution application under this
paragraph will be construed to include a waiver of confidentiality by
the applicant under 35 U.S.C. 122 to the extent that any member of the
public, who is entitled under the provisions of 1.14 to access to,
copies of, or information concerning either the prior application or any
continuing application filed under the provisions of this paragraph, may
be given similar access to, copies of, or similar information concerning
the other application or applications in the file jacket.
(7) A request for an application under this paragraph is the specific
reference required by 35 U.S.C. 120 to every application assigned the
application number identified in such request. No amendment in an
application under this paragraph may delete this specific reference to
any prior application.
(8) In addition to identifying the application number of the prior
application, applicant should furnish in the request for an application
under this paragraph the following information relating to the prior
application to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) Envelopes containing only requests and fees for filing an
application under this paragraph should be marked "Box CPA." Requests
for an application under this paragraph filed by facsimile transmission
should be clearly marked "Box CPA."
(e) Failure to meet filing date requirements.
(1) If an application deposited under paragraph (b), (c), or (d) of
this section does not meet the requirements of such paragraph to be
entitled to a filing date, applicant will be so notified, if a
correspondence address has been provided, and given a time period within
which to correct the filing error.
(2) Any request for review of a notification pursuant to paragraph
(e)(1) of this section, or a notification that the original application
papers lack a portion of the specification or drawing(s), must be by way
of a petition pursuant to this paragraph. Any petition under this
paragraph must be accompanied by the fee set forth in 1.17(i) in an
application filed under paragraphs (b) or (d) of this section, and the
fee set forth in 1.17(q) in an application filed under paragraph (c)
of this section. In the absence of a timely ( 1.181(f)) petition
pursuant to this paragraph, the filing date of an application in which
the applicant was notified of a filing error pursuant to paragraph
(e)(1) of this section will be the date the filing error is corrected.
(3) If an applicant is notified of a filing error pursuant to
paragraph (e)(1) of this section, but fails to correct the filing error
within the given time period or otherwise timely( 1.181(f)) take
action pursuant to this paragraph, proceedings in the application will
be considered terminated. Where proceedings in an application are
terminated pursuant to this paragraph, the application may be disposed
of, and any filing fees, less the handling fee set forth in 1.21(n),
will be refunded.
(f) Completion of application subsequent to filing - Nonprovisional
(including continued prosecution) application. If an application which
has been accorded a filing date pursuant to paragraph (b) of this
section, including a continuation, divisional, or continuation-in-part
application, does not include the appropriate filing fee or an oath or
declaration by the applicant pursuant to 1.63 or 1.175, or, if an
application which has been accorded a filing date pursuant to paragraph
(d) of this section does not include the appropriate filing fee,
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 the surcharge as set forth in 1.16(e) in order to
prevent abandonment of the application. See 1.63(d) concerning the
submission of a copy of the oath or declaration from the prior
application for a continuation or divisional application. 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 may be disposed of. The notification pursuant to this
paragraph may be made simultaneously with any notification pursuant to
paragraph (e) 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, the oath or declaration in an application
under paragraph (b) of this section, and 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.
(g) Completion of application subsequent to filing - Provisional
application. If a provisional application which has been accorded a
filing date pursuant to paragraph (c) of this section does not include
the appropriate filing fee or the cover sheet required by 1.51(c)(1),
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 the surcharge as set forth in 1.16(l) in order to prevent
abandonment of the application. If the required filing fee is not timely
paid, the application may be disposed of. The notification pursuant to
this paragraph may be made simultaneously with any notification pursuant
to paragraph (e) 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 the surcharge as set
forth in 1.16(l) in order to prevent abandonment of the application.
(h) Subsequent treatment of application - Nonprovisional (including
continued prosecution) application. An application for a patent filed
under paragraphs (b) or (d) of this section will not be placed on 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.
(i) Subsequent treatment of application - Provisional application. A
provisional application for a patent filed under paragraph (c) of this
section will not be placed on 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).
(j) Filing date of international application. The filing date of an
international application designating the United States of America is
treated as the filing date in the United States of America under PCT
Article 11(3), except as provided in 35 U.S.C. 102(e).
22. Section 1.54 is revised to read as follows:
1.54 Parts of application to be filed together; filing receipt.
(a) It is desirable that all parts of the complete application be
deposited in the Office together; otherwise, a letter must accompany
each part, accurately and clearly connecting it with the other parts of
the application. See 1.53(f) and (g) with regard to completion of an
application.
(b) Applicant will be informed of the application number and filing
date by a filing receipt, unless the application is an application filed
under 1.53(d).
23. Section 1.55 is amended by revising paragraph (a) to read as follows:
1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the
benefit of the filing date of one or more prior foreign applications
under the conditions specified in 35 U.S.C. 119(a) through (d) 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 situations,
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 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.
* * * * *
24. Section 1.59 and its heading are revised to read as follows:
1.59 Expungement of information or copy of papers in application file.
(a)(1) Information in an application will not be expunged and
returned, except as provided in paragraph (b) of this section. See
1.618 for return of unauthorized and improper papers in interferences.
(2) Information forming part of the original disclosure (i.e.,
written specification including the claims, drawings, and any
preliminary amendment specifically incorporated into an executed oath or
declaration under 1.63 and 1.175) will not be expunged from the
application file.
(b) Information, other than what is excluded by paragraph (a)(2) of
this section, maybe requested to be expunged and returned to applicant
upon petition under this paragraph and payment of the petition fee set
forth in 1.17(i). Any petition to expunge and return information from
an application must establish to the satisfaction of the Commissioner
that the return of the information is appropriate.
(c) Upon request by an applicant and payment of the fee specified in
1.19(b), the Office will furnish copies of an application, unless the
application has been disposed of (see 1.53(e), (f) and (g)). The
Office cannot provide or certify copies of an application that has been
disposed of.
25. Section 1.60 is removed and reserved.
1.60 [Reserved]
26. Section 1.62 is removed and reserved.
1.62 [Reserved]
27. Section 1.63 is amended by revising paragraphs (a) and (d) and
adding a paragraph (e) to read as follows:
1.63 Oath or declaration.
(a) An oath or declaration filed under 1.51(b)(2) as a part of an
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 by: full name, including the family name,
and at least one given name without abbreviation together with any other
given name or initial, and the residence, post office address and
country of citizenship of each inventor; and
(4) State whether the inventor is a sole or joint inventor of the
invention claimed.
* * * * *
(d)(1) A newly executed oath or declaration is not required under
1.51(b)(2) and 1.53(f) in a continuation or divisional application,
provided that:
(i)The prior nonprovisional application contained an oath or
declaration as prescribed by paragraphs (a) through (c) of this section;
(ii) The continuation or divisional application was filed by all or
by fewer than all of the inventors named in the prior application;
(iii) The specification and drawings filed in the continuation or
divisional application contain no matter that would have been new matter
in the prior application; and
(iv) A copy of the executed oath or declaration filed in the prior
application, showing the signature or an indication thereon that it was
signed, is submitted for the continuation or divisional application.
(2) The copy of the executed oath or declaration submitted under this
paragraph for a continuation or divisional application must be
accompanied by a statement requesting the deletion of the name or names
of the person or persons who are not inventors in the continuation or
divisional application.
(3) Where the executed oath or declaration of which a copy is
submitted for a continuation or divisional application was originally
filed in a prior application accorded status under 1.47, the copy of
the executed oath or declaration for such prior application must be
accompanied by:
(i) A copy of the decision granting a petition to accord 1.47
status to the prior application, unless all inventors or legal
representatives have filed an oath or declaration to join in an
application accorded status under 1.47 of which the continuation or
divisional application claims a benefit under 35 U.S.C. 120, 121, or
365(c); and
(ii) If one or more inventor(s) or legal representative(s) who
refused to join in the prior application or could not be found or
reached has subsequently joined in the prior application or another
application of which the continuation or divisional application claims a
benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently
executed oath(s) or declaration(s) filed by the inventor or legal
representative to join in the application.
(4) Where the power of attorney (or authorization of agent) or
correspondence address was changed during the prosecution of the prior
application, the change in power of attorney (or authorization of agent)
or correspondence address must be identified in the continuation or
divisional application. Otherwise, the Office may not recognize in the
continuation or divisional application the change of power of attorney
(or authorization of agent) or correspondence address during the
prosecution of the prior application.
(5) A newly executed oath or declaration must be filed in a
continuation or divisional application naming an inventor not named in
the prior application.
(e) A newly executed oath or declaration must be filed in any
continuation-in-part application, which application may name all, more,
or fewer than all of the inventors named in the prior application. The
oath or declaration in any continuation-in-part application mustalso
state that the person making the oath or declaration acknowledges the
duty to disclose to the Office all information known to the person to be
material to patentability as defined in 1.56 which became available
between the filing date of the prior application and the national or PCT
international filing date of the continuation-in-part application.
28. 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(f) 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 situations,
the oath or declaration here required may be made on information and
belief by an applicant other than the inventor.
* * * * *
29. Section 1.69 is amended by revising paragraph (b) to read as follows:
1.69 Foreign language oaths and declarations.
* * * * *
(b) Unless the text of any oath or declaration in a language other
than English is a form provided or approved by the Patent and Trademark
Office, it must be accompanied by an English translation together with a
statement that the translation is accurate, except that in the case of
an oath or declaration filed under 1.63, the translation may be filed
in the Office no later than two months from the date applicant is
notified to file the translation.
30. Section 1.78 is amended by revising paragraph (a) 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
copending 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 copending
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) An international application entitled to a filing date in
accordance with PCT Article 11 and designating the United States of
America; or
(ii) Complete as set forth in 1.51(b); or
(iii) Entitled to a filing date as set forth in 1.53(b) or
1.53(d) and include the basic filing fee set forth in 1.16; or
(iv) Entitled to a filing date as set forth in 1.53(b) and have
paid therein the processing and retention fee set forth in 1.21(l)
within the time period set forth in 1.53(f).
(2) Except for a continued prosecution application filed under
1.53(d), any nonprovisional application claiming the benefit of one or
more prior filed copending nonprovisional applications or international
applications designating the United States of America must contain 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. The request for a
continued prosecution application under 1.53(d) is the specific
reference required by 35 U.S.C. 120 to the prior application. The
identification of an application by application number under this
section is the specific reference required by 35 U.S.C. 120 to every
application assigned that application number. Cross-references to other
related applications may be made when appropriate (see 1.14(a)).
(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 on or 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(c); or
(ii) Entitled to a filing date as set forth in 1.53(c) 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).
* * * * *
31. Section 1.84 is amended by revising paragraphs (a)(2)(i), (b), (c)
and (g) to read as follows:
1.84 Standards for drawings.
(a) * * *
(2) * * *
(i) The fee set forth in 1.17(i);
* * * * *
(b) Photographs.
(1) Black and white. Photographs are not ordinarily permitted in
utility patent applications. However, the Office will accept photographs
in utility patent applications only after the granting of a petition
filed under this paragraph which requests that photographs be accepted.
Any such petition must include the following:
(i) The fee set forth in 1.17(i); and
(ii) Three (3) sets of photographs. Photographs must either be
developed on double weight photographic paper or be permanently mounted
on bristol board. The photographs must be of sufficient quality so that
all details in the drawings are reproducible in the printed patent.
(2) Color. Color photographs will be accepted in utility patent
applications if the conditions for accepting color drawings have been
satisfied. See paragraph (a)(2) of this section.
(c) Identification of drawings. Identifying indicia, if provided,
should include the application number or the title of the invention,
inventor's name, docket number (if any), and the name and telephone
number of a person to call if the Office is unable to match the drawings
to the proper application. This information should be placed on the back
of each sheet of drawings a minimum distance of 1.5 cm. (5/8 inch) down
from the top of the page. In addition, a reference to the application
number, or, if an application number has not been assigned, the
inventor's name, may be included in the left-hand corner, provided that
the reference appears within 1.5 cm. (5/8 inch) from the top of the
sheet.
* * * * *
(g) Margins. The sheets must not contain frames around the sight
(i.e., the usable surface), but should have scan target points (i.e.,
cross-hairs) printed on two catercorner margin corners. Each sheet must
include a top margin of at least 2.5 cm. (1 inch), a left sidemargin of
at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8
inch), and a bottom margin of at least 1.0 cm. (3/8 inch), thereby
leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7
cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm.
by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by
11 inch) drawing sheets.
* * * * *
32. Section 1.91 and its heading are revised to read as follows:
1.91 Models or exhibits not generally admitted as part of application
or patent.
(a) A model or exhibit will not be admitted as part of the record of
an application unless it:
(1) Substantially conforms to the requirements of 1.52 or 1.84;
(2) Is specifically required by the Office; or
(3) Is filed with a petition under this section including:
(i) The petition fee as set forth in 1.17(i); and
(ii) An explanation of why entry of the model or exhibit in the file
record is necessary to demonstrate patentability.
(b) Notwithstanding the provisions of paragraph (a) of this section,
a model, working model, or other physical exhibit may be required by the
Office if deemed necessary for any purpose in examination of the
application.
33. Section 1.92 is removed and reserved.
1.92 [Reserved]
34. Section 1.97 is amended by revising paragraphs (c) through (e) to
read as follows:
1.97 Filing of information disclosure statement.
* * * * *
(c) An information disclosure statement shall be considered by the
Office if filed by the applicant after the period specified in paragraph
(b) of this section, provided that the information disclosure statement
is filed before the mailing date of either a final action under
1.113, or a notice of allowance under 1.311, whichever occurs first,
and is accompanied by either:
(1) A statement as specified in paragraph (e) of this section; or
(2) The fee set forth in 1.17(p).
(d) An information disclosure statement shall be considered by the
Office if filed by the applicant after the period specified in paragraph
(c) of this section, provided that the information disclosure statement
is filed on or before payment of the issue fee and is accompanied by:
(1) A statement 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).
(e) A statement under this section must state either:
(1) That each item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application not more than three months
prior to the filing of the information disclosure statement; or
(2) That no item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application, and, to the knowledge of
the person signing the statement after making reasonable inquiry, no
item of information contained in the information disclosure statement
was known to any individual designated in 1.56(c) more than three
months prior to the filing of the information disclosure statement.
* * * * *
35. Section 1.101 is removed and reserved.
1.101 [Reserved]
36. Section 1.102 is amended by revising paragraph (a) to read as
follows:
1.102 Advancement of examination.
(a) Applications will not be advanced out of turn for examination or
for further action except as provided by this part, or upon order of the
Commissioner to expedite the business of the Office, or upon filing of a
request under paragraph (b) of this section or upon filing a petition
under paragraphs (c) or (d) of this section with a showing which, in the
opinion of the Commissioner, will justify so advancing it.
* * * * *
37. 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 reply by the applicant to an Office action is required.
* * * * *
38. Section 1.104 and its heading are revised to read as follows:
1.104 Nature of examination.
(a) Examiner's action.
(1) On taking up an application for examination or a patent in a
reexamination proceeding, the examiner shall make a thorough study
thereof and shall make a thorough investigation of the available prior
art relating to the subject matter of the claimed invention. The
examination shall be complete with respect both to compliance of the
application or patent under reexamination with the applicable statutes
and rules and to the patentability of the invention as claimed, as well
as with respect to matters of form, unless otherwise indicated.
(2) The applicant, or in the case of a reexamination proceeding, both
the patent owner and the requester, will be notified of the examiner's
action. The reasons for any adverse action or any objection or
requirement will be stated and such information or references will be
given as may be useful in aiding the applicant, or in the case of a
reexamination proceeding the patent owner, to judge the propriety of
continuing the prosecution.
(3) An international-type search will be made in all national
applications filed on and after June 1, 1978.
(4) Any national application may also have an international-type
search report prepared thereon at the time of the national examination
on the merits, upon specific written request therefor and payment of the
international-type search report fee set forth in 1.21(e). The Patent
and Trademark Office does not require that a formal report of an
international-type search be prepared in order to obtain a search fee
refund in a later filed international application.
(5) Copending applications will be considered by the examiner to be
owned by, or subject to an obligation of assignment to, the same person
if:
(i) The application files refer to assignments recorded in the Patent
and Trademark Office in accordance with Part 3 of this chapter which
convey the entire rights in the applications to the same person or
organization; or
(ii) Copies of unrecorded assignments which convey the entire rights
in the applications to the same person or organization are filed in each
of the applications; or
(iii) An affidavit or declaration by the common owner is filed which
states that there is common ownership and states facts which explain why
the affiant or declarant believes there is common ownership, which
affidavit or declaration may be signed by an official of the corporation
or organization empowered to act on behalf of the corporation or
organization when the common owner is a corporation or other
organization; or
(iv) Other evidence is submitted which establishes common ownership
of the applications.
(b) Completeness of examiner's action. The examiner's action will be
complete as to all matters, except that in appropriate circumstances,
such as misjoinder of invention, fundamental defects in the application,
and the like, the action of the examiner may be limited to such matters
before further action is made. However, matters of form need not be
raised by the examiner until a claim is found allowable.
(c) Rejection of claims.
(1) If the invention is not considered patentable, or not considered
patentable as claimed, the claims, or those considered unpatentable will
be rejected.
(2) In rejecting claims for want of novelty or for obviousness, the
examiner must cite the best references at his or her command. When a
reference is complex or shows or describes inventions other than that
claimed by the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence of each reference,
if not apparent, must be clearly explained and each rejected claim
specified.
(3) In rejecting claims the examiner may rely upon admissions by the
applicant, or the patent owner in a reexamination proceeding, as to any
matter affecting patentability and, insofar as rejections in
applications are concerned, may also rely upon facts within his or her
knowledge pursuant to paragraph (d)(2) of this section.
(4) Subject matter which is developed by another person which
qualifies as prior art only under 35 U.S.C. 102(f) or (g) may be used as
prior art under 35 U.S.C. 103 against a claimed invention unless the
entire rights to the subject matter and the claimed invention were
commonly owned by the same person or organization or subject to an
obligation of assignment to the same person or organization at the time
the claimed invention was made.
(5) The claims in any original application naming an inventor will be
rejected as being precluded by a waiver in a published statutory
invention registration naming that inventor if the same subject matter
is claimed in the application and the statutory invention registration.
The claims in any reissue application naming an inventor will be
rejected as being precluded by a waiver in a published statutory
invention registration naming that inventor if the reissue application
seeks to claim subject matter:
(i) Which was not covered by claims issued in the patent prior to the
date of publication of the statutory invention registration; and
(ii) Which was the same subject matter waived in the statutory
invention registration.
(d) Citation of references.
(1) If domestic patents are cited by the examiner, their numbers and
dates, and the names of the patentees must be stated. If foreign
published applications or patents are cited, their nationality or
country, numbers and dates, and the names of the patentees must be
stated, and such other data must be furnished as may be necessary to
enable the applicant, or in the case of a reexamination proceeding, the
patent owner, to identify the published applications or patents cited.
In citing foreign published applications or patents, in case only a part
of the document is involved, the particular pages and sheets containing
the parts relied upon must be identified. If printed publications are
cited, the author (if any), title, date, pages or plates, and place of
publication, or place where a copy can be found, shall be given.
(2) When a rejection in an application is based on facts within the
personal knowledge of an employee of the Office, the data shall be as
specific as possible, and the reference must be supported, when called
for by the applicant, by the affidavit of such employee, and such
affidavit shall be subject to contradiction or explanation by the
affidavits of the applicant and other persons.
(e) Reasons for allowance. If the examiner believes that the record
of the prosecution as a whole does not make clear his or her reasons for
allowing a claim or claims, the examiner may set forth such reasoning.
The reasons shall be incorporated into an Office action rejecting other
claims of the application or patent under reexamination or be the
subject of a separate communication to the applicant or patent owner.
The applicant or patent owner may file a statement commenting on the
reasons for allowance within such time as may be specified by the
examiner. Failure to file such a statement does not give rise to any
implication that the applicant or patent owner agrees with or acquiesces
in the reasoning of the examiner.
39. Section 1.105 is removed and reserved.
1.105 [Reserved]
40. Section 1.106 is removed and reserved.
1.106 [Reserved]
41. Section 1.107 is removed and reserved.
1.107 [Reserved]
42. Section 1.108 is removed and reserved.
1.108 [Reserved]
43. Section 1.109 is removed and reserved.
1.109 [Reserved]
44. Section 1.111 is amended by revising paragraph (b) to read as
follows:
1.111 Reply by applicant or patent owner.
* * * * *
(b) In order to be entitled to reconsideration or further
examination, the applicant or patent owner must reply to the Office
action. The reply by the applicant or patent owner must be reduced to a
writing which distinctly and specifically points out the supposed errors
in the examiner's action and must reply to every ground of objection and
rejection in the prior Office action. The reply must present arguments
pointing out the specific distinctions believed to render the claims,
including any newly presented claims, patentable over any applied
references. If the reply is with respect to an application, a request
may be made that objections or requirements as to form not necessary to
further consideration of the claims beheld in abeyance until allowable
subject matter is indicated. The applicant's or patent owner's reply
must appear throughout to be a bona fide attempt to advance the
application or the reexamination proceeding to final action. A general
allegation that the claims define a patentable invention without
specifically pointing out how the language of the claims patentably
distinguishes them from the references does not comply with the
requirements of this section.
* * * * *
45. Section 1.112 and its heading are revised to read as follows:
1.112 Reconsideration before final action.
After reply by applicant or patent owner ( 1.111) to a non-final
action, the application or patent under reexamination will be
reconsidered and again examined. The applicant or patent owner will be
notified if claims are rejected, or objections or requirements made, in
the same manner as after the first examination. Applicant or patent
owner may reply to such Office action in the same manner provided in
1.111, with or without amendment, unless such Office action indicates
that it is made final ( 1.113).
46. Section 1.113 is revised to read as follows:
1.113 Final rejection or action.
(a) On the second or any subsequent examination or consideration by
the examiner the rejection or other action may be made final, whereupon
applicant's or patent owner's reply is limited to appeal in the case of
rejection of any claim ( 1.191), or to amendment as specified in
1.116. Petition may be taken to the Commissioner in the case of
objections or requirements not involved in the rejection of any claim (
1.181). Reply to a final rejection or action must include cancellation
of, or appeal from the rejection of, each rejected claim. If any claim
stands allowed, the reply to a final rejection or action must comply
with any requirements or objections as to form.
(b) In making such final rejection, the examiner shall repeat or
state all grounds of rejection then considered applicable to the claims
in the application, clearly stating the reasons in support thereof.
47. Section 1.115 is removed and reserved.
1.115 [Reserved]
48. Section 1.116 is amended by revising its heading and paragraph (a)
to read as follows:
1.116 Amendments after final action or appeal.
(a) After a final rejection or other final action ( 1.113),
amendments may be made cancelling claims or complying with any
requirement of form expressly set forth in a previous Office action.
Amendments presenting rejected claims in better form for consideration
on appeal may be admitted. The admission of, or refusal to admit, any
amendment after final rejection, and any related proceedings, will not
operate to relieve the application or patent under reexamination from
its condition as subject to appeal or to save the application from
abandonment under 1.135.
* * * * *
49. Section 1.117 is removed and reserved.
1.117 [Reserved]
50. Section 1.118 is removed and reserved.
1.118 [Reserved]
51. Section 1.119 is removed and reserved.
1.119 [Reserved]
52. Section 1.121 is revised to read as follows:
1.121 Manner of making amendments.
(a) Amendments in nonprovisional applications, other than reissue
applications: Amendments in nonprovisional applications, excluding
reissue applications, are made by filing a paper, in compliance with
1.52, directing that specified amendments be made.
(1) Specification other than the claims. Except as provided in
1.125, amendments to add matter to, or delete matter from, the
specification, other than to the claims, may only be made as follows:
(i) Instructions for insertions: The precise point in the
specification must be indicated where an insertion is to be made, and
the matter to be inserted must be set forth.
(ii) Instructions for deletions: The precise point in the
specification must be indicated where a deletion is to be made, and the
matter to be deleted must be set forth or otherwise indicated.
(iii) Matter deleted by amendment can be reinstated only by a
subsequent amendment presenting the previously deleted matter as a new
insertion.
(2) Claims. Amendments to the claims may only be made as follows:
(i) Instructions for insertions and deletions: A claim may be amended
by specifying only the exact matter to be deleted or inserted by an
amendment and the precise point where the deletion or insertion is to be
made, where the changes are limited to:
(A) Deletions and/or
(B) The addition of no more than five (5) words in any one claim; or
(ii) Claim cancellation or rewriting: A claim may be amended by
directions to cancel the claim or by rewriting such claim with
underlining below the matter added and brackets around the matter
deleted. The rewriting of a claim in this form will be construed as
directing the deletion of the previous version of that claim. If a
previously rewritten claim is again rewritten, underlining and
bracketing will be applied relative to the previous version of the
claim, with the parenthetical expression "twice amended," "three times
amended," etc., following the original claim number. The original claim
number followed by that parenthetical expression must be used for the
rewritten claim. No interlineations or deletions of any prior amendment
may appear in the currently submitted version of the claim. A claim
canceled by amendment (not deleted and rewritten) can be reinstated only
by a subsequent amendment presenting the claim as a new claim with a new
claim number.
(3) Drawings.
(i) Amendments to the original application drawings are not
permitted. Any change to the application drawings must be by way of a
substitute sheet of drawings for each sheet changed submitted in
compliance with 1.84.
(ii) Where a change to the drawings is desired, a sketch in permanent
ink showing proposed changes in red, to become part of the record, must
be filed for approval by the examiner and should be in a separate paper.
(4) Any amendment to an application that is present in a substitute
specification submitted pursuant to 1.125 must be presented under the
provisions of this paragraph either prior to or concurrent with
submission of the substitute specification.
(5) The disclosure must be amended, when required by the Office, to
correct inaccuracies of description and definition, and to secure
substantial correspondence between the claims, the remainder of the
specification, and the drawings.
(6) No amendment may introduce new matter into the disclosure of an
application.
(b) Amendments in reissue applications: Amendments in reissue
applications are made by filing a paper, in compliance with 1.52,
directing that specified amendments be made.
(1) Specification other than the claims. Amendments to the
specification, other than to the claims, may only be made as follows:
(i) Amendments must be made by submission of the entire text of a
newly added or rewritten paragraph(s) with markings pursuant to
paragraph (b)(1)(iii) of this section, except that an entire paragraph
may be deleted by a statement deleting the paragraph without
presentation of the text of the paragraph.
(ii) The precise point in the specification must be indicated where
the paragraph to be amended is located.
(iii) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.
(2) Claims. Amendments to the claims may only be made as follows:
(i)(A) The amendment must be made relative to the patent claims in
accordance with paragraph (b)(6) of this section and must include the
entire text of each claim which is being amended by the current
amendment and of each claim being added by the current amendmentwith
markings pursuant to paragraph (b)(2)(i)(C) of this section, except that
a patent claim or added claim should be cancelled by a statement
cancelling the patent claim or added claim without presentation of the
text of the patent claim or added claim.
(B) Patent claims must not be renumbered and the numbering of any
claims added to the patent must follow the number of the highest
numbered patent claim.
(C) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made. If a claim is amended pursuant
to paragraph (b)(2)(i)(A) of this section, a parenthetical expression
"amended," "twice amended," etc., should follow the original claim
number.
(ii) Each amendment submission must set forth the status (i.e.,
pending or cancelled) as of the date of the amendment, of all patent
claims and of all added claims.
(iii) Each amendment when originally submitted must be accompanied by
an explanation of the support in the disclosure of the patent for the
amendment along with any additional comments on page(s) separate from
the page(s) containing the amendment.
(3) Drawings.
(i) Amendments to the original patent drawings are not permitted. Any
change to the patent drawings must be by way of a new sheet of drawings
with the amended figures identified as "amended" and with added figures
identified as "new" for each sheet changed submitted in compliance with
1.84.
(ii) Where a change to the drawings is desired, a sketch in permanent
ink showing proposed changes in red, to become part of the record, must
be filed for approval by the examiner and should be in a separate paper.
(4) The disclosure must be amended, when required by the Office, to
correct inaccuracies of description and definition, and to secure
substantial correspondence between the claims, the remainder of the
specification, and the drawings.
(5) No reissue patent shall be granted enlarging the scope of the
claims of the original patent unless applied for within two years from
the grant of the original patent, pursuant to 35 U.S.C. 251. No
amendment to the patent may introduce new matter or be made in an
expired patent.
(6) All amendments must be made relative to the patent specification,
including the claims, and drawings, which is in effect as of the date of
filing of the reissue application.
(c) Amendments in reexamination proceedings: Any proposed amendment
to the description and claims in patents involved in reexamination
proceedings must be made in accordance with 1.530(d).
53. Section 1.122 is removed and reserved.
1.122 [Reserved]
54. Section 1.123 is removed and reserved.
1.123 [Reserved]
55. Section 1.124 is removed and reserved.
1.124 [Reserved]
56. Section 1.125 is revised to read as follows:
1.125 Substitute specification.
(a) If the number or nature of the amendments or the legibility of
the application papers renders it difficult to consider the application,
or to arrange the papers for printing or copying, the Office may require
the entire specification, including the claims, or any part thereof, be
rewritten.
(b) A substitute specification, excluding the claims, may be filed at
any point up to payment of the issue fee if it is accompanied by:
(1) A statement that the substitute specification includes no new
matter; and
(2) A marked-up copy of the substitute specification showing the
matter being added to and the matter being deleted from the
specification of record.
(c) A substitute specification submitted under this section must be
submitted in clean form without markings as to amended material.
(d) A substitute specification under this section is not permitted in
a reissue application or in a reexamination proceeding.
57. Section 1.126 is revised to read as follows:
1.126 Numbering of claims.
The original numbering of the claims must be preserved throughout the
prosecution. When claims are canceled the remaining claims must not be
renumbered. When claims are added, they must be numbered by the
applicant consecutively beginning with the number next following the
highest numbered claim previously presented (whether entered or not).
When the application is ready for allowance, the examiner, if necessary,
will renumber the claims consecutively in the order in which they appear
or in such order as may have been requested by applicant.
58. Section 1.133 is amended by revising paragraph (b) to read as
follows:
1.133 Interviews.
* * * * *
(b) In every instance where reconsideration is requested in view of
an interview with an examiner, a complete written statement of the
reasons presented at the interview as warranting favorable action must
be filed by the applicant. An interview does not remove the necessity
for reply to Office actions as specified in 1.111 and 1.135.
59. The undesignated center heading in Subpart B-National Processing
Provisions, following 1.133 is revised to read as follows:
TIME FOR REPLY BY APPLICANT; ABANDONMENT
OF APPLICATION
60. Section 1.134 and its heading are revised to read as follows:
1.134 Time period for reply to an Office action.
An Office action will notify the applicant of any non-statutory or
shortened statutory time period set for reply to an Office action.
Unless the applicant is notified in writing that a reply is required in
less than six months, a maximum period of six months is allowed.
61. Section 1.135 and its heading are revised to read as follows:
1.135 Abandonment for failure to reply within time period.
(a) If an applicant of a patent application fails to reply within the
time period provided under 1.134 and 1.136, the application will
become abandoned unless an Office action indicates otherwise.
(b) Prosecution of an application to save it from abandonment
pursuant to paragraph (a) of this section must include such complete and
proper reply as the condition of the application may require. The
admission of, or refusal to admit, any amendment after final rejection
or any amendment not responsive to the last action, or any related
proceedings, will not operate to save the application from abandonment.
(c) When reply by the applicant is a bona fide attempt to advance the
application to final action, and is substantially a complete reply to
the non-final Office action, but consideration of some matter or
compliance with some requirement has been inadvertently omitted,
applicant may be given a new time period for reply under 1.134 to
supply the omission.
62. Section 1.136 and its heading are revised to read as follows:
1.136 Extensions of time.
(a)(1) If an applicant is required to reply within a nonstatutory or
shortened statutory time period, applicant may extend the time period
for reply up to the earlier of the expiration of any maximum period set
by statute or five months after the time period set for reply, if a
petition for an extension of time and the fee set in 1.17(a) are
filed, unless:
(i) Applicant is notified otherwise in an Office action;
(ii) The reply is a reply brief submitted pursuant to 1.193(b);
(iii) The reply is a request for an oral hearing submitted pursuant
to 1.194(b);
(iv) The reply is to a decision by the Board of Patent Appeals and
Interferences pursuant to 1.196, 1.197 or 1.304; or
(v) The application is involved in an interference declared pursuant
to 1.611.
(2) The date on which the petition and the fee have been filed is the
date for purposes of determining the period of extension and the
corresponding amount of the fee. The expiration of the time period is
determined by the amount of the fee paid. A reply must be filed prior to
the expiration of the period of extension to avoid abandonment of the
application ( 1.135), but in no situation may an applicant reply later
than the maximum time period set by statute, or be granted an extension
of time under paragraph (b) of this section when the provisions of this
paragraph are available. See 1.136(b) for extensions of time relating
to proceedings pursuant to 1.193(b), 1.194, 1.196 or 1.197;
1.304 for extension of time to appeal to the U.S. Court of Appeals for
the Federal Circuit or to commence a civil action; 1.550(c) for
extension of time in reexamination proceedings; and 1.645 for
extension of time in interference proceedings.
(3) A written request may be submitted in an application that is an
authorization to treat any concurrent or future reply, requiring a
petition for an extension of time under this paragraph for its timely
submission, as incorporating a petition for extension of time for the
appropriate length of time. An authorization to charge all required
fees, fees under 1.17, or all required extension of time fees will be
treated as a constructive petition for an extension of time in any
concurrent or future reply requiring a petition for an extension of time
under this paragraph for its timely submission. Submission of the fee
set forth in 1.17(a) will also be treated as a constructive petition
for an extension of time in any concurrent reply requiring a petition
for an extension of time under this paragraph for its timely submission.
(b) When a reply cannot be filed within the time period set for such
reply and the provisions of paragraph (a) of this section are not
available, the period for reply will be extended only for sufficient
cause and for a reasonable time specified. Any request for an extension
of time under this paragraph must be filed on or before the day on which
such reply is due, but the mere filing of such a request will not effect
any extension under this paragraph. In no situation can any extension
carry the date on which reply is due beyond the maximum time period set
by statute. See 1.304 for extension of time to appeal to the U.S.
Court of Appeals for the Federal Circuit or to commence a civil action;
1.645 for extension of time in interference proceedings; and
1.550(c) for extension of time in reexamination proceedings.
63. Section 1.137 and its heading are revised to read as follows:
1.137 Revival of abandoned application or lapsed patent.
(a) Unavoidable. Where the delay in reply was unavoidable, a petition
may be filed to revive an abandoned application or a lapsed patent
pursuant to this paragraph. A grantable petition pursuant to this
paragraph must be accompanied by:
(1) The required reply, unless previously filed. In a nonprovisional
application abandoned for failure to prosecute, the required reply may
be met by the filing of a continuing application. In an application or
patent, abandoned or lapsed for failure to pay the issue fee or any
portion thereof, the required reply must be the payment of the issue fee
or any outstanding balance thereof;
(2) The petition fee as set forth in 1.17(l);
(3) A showing to the satisfaction of the Commissioner that the entire
delay in filing the required reply from the due date for the reply until
the filing of a grantable petition pursuant to this paragraph was
unavoidable; and
(4) Any terminal disclaimer (and fee as set forth in 1.20(d))
required pursuant to paragraph (c) of this section.
(b) Unintentional. Where the delay in reply was unintentional, a
petition may be filed to revive an abandoned application or a lapsed
patent pursuant to this paragraph. A grantable petition pursuant to this
paragraph must be accompanied by:
(1) The required reply, unless previously filed. In a nonprovisional
application abandoned for failure to prosecute, the required reply may
be met by the filing of a continuing application. In an application or
patent, abandoned or lapsed for failure to pay the issue fee or any
portion thereof, the required reply must be the payment of the issue fee
or any outstanding balance thereof;
(2) The petition fee as set forth in 1.17(m);
(3) A statement that the entire delay in filing the required reply
from the due date for the reply until the filing of a grantable petition
pursuant to this paragraph was unintentional. The Commissioner may
require additional information where there is a question whether the
delay was unintentional; and
(4) Any terminal disclaimer (and fee as set forth in 1.20(d))
required pursuant to paragraph (c) of this section.
(c) In a design application, a utility application filed before June
8, 1995, or a plant application filed before June 8, 1995, any petition
to revive pursuant to this section must be accompanied by a terminal
disclaimer and fee as set forth in 1.321 dedicating to the public a
terminal part of the term of any patent granted thereon equivalent to
the period of abandonment of the application. Any terminal disclaimer
pursuant to this paragraph must also apply to any patent granted on any
continuing application that contains a specific reference under 35
U.S.C. 120, 121, or 365(c) to the application for which revival is
sought. The provisions of this paragraph do not apply to lapsed patents.
(d) Any request for reconsideration or review of a decision refusing
to revive an abandoned application or lapsed patent upon petition filed
pursuant to this section, to be considered timely, must be filed within
two months of the decision refusing to revive or within such time as set
in the decision. Unless a decision indicates otherwise, this time period
may be extended under the provisions of 1.136.
(e) A provisional application, abandoned for failure to timely
respond to an Office requirement, may be revived pursuant to this
section so as to be pending for a period of no longer than twelve months
from its filing date. Under no circumstances will a provisional
application be regarded as pending after twelve months from its filing
date.
64.Section 1.139 is removed and reserved.
1.139 [Reserved]
65. Section 1.142 is amended by revising paragraph (a) to read as
follows:
1.142 Requirement for restriction.
(a) If two or more independent and distinct inventions are claimed in
a single application, the examiner in an Office action will require the
applicant in the reply to that action to elect an invention to which the
claims will be restricted, this official action being called a
requirement for restriction (also known as a requirement for division).
Such requirement will normally be made before any action on the merits;
however, it may be made at any time before final action.
* * * * *
66. Section 1.144 is revised to read as follows:
1.144 Petition from requirement for restriction.
After a final requirement for restriction, the applicant, in addition to
making any reply due on the remainder of the action, may petition the
Commissioner to review the requirement. Petition may be deferred until
after final action on or allowance of claims to the invention elected,
but must be filed not later than appeal. A petition will not be
considered if reconsideration of the requirement was not requested (see
1.181).
67. Section 1.146 is revised to read as follows:
1.146 Election of species.
In the first action on an application containing a generic claim to a
generic invention (genus) and claims to more than one patentably
distinct species embraced thereby, the examiner may require the
applicant in the reply to that action to elect a species of his or her
invention to which his or her claim will be restricted if no claim to
the genus is found to be allowable. However, if such application
contains claims directed to more than a reasonable number of species,
the examiner may require restriction of the claims to not more than a
reasonable number of species before taking further action in the
application.
68. Section 1.152 is revised to read as follows:
1.152 Design drawings.
(a) The design must be represented by a drawing that complies with
the requirements of 1.84, and must contain a sufficient number of
views to constitute a complete disclosure of the appearance of the
design.
(1) Appropriate and adequate surface shading should be used to show
the character or contour of the surfaces represented. Solid black
surface shading is not permitted except when used to represent the color
black as well as color contrast. Broken lines may be used to show
visible environmental structure, but may not be used to show hidden
planes and surfaces which cannot be seen through opaque materials.
Alternate positions of a design component, illustrated by full and
broken lines in the same view are not permitted in a design drawing.
(2) Color photographs and color drawings are not permitted in design
applications in the absence of a grantable petition pursuant to
1.84(a)(2). Photographs and ink drawings are not permitted to be
combined as formal drawings in one application. Photographs submitted in
lieu of ink drawings in design patent applications must comply with
1.84(b) and must not disclose environmental structure but must be
limited to the design for the article claimed.
(b) Any detail shown in the ink or color drawings or photographs
(formal or informal) deposited with the original application papers
constitutes an integral part of the disclosed and claimed design, except
as otherwise provided in this paragraph. This detail may include, but is
not limited to, color or contrast, graphic or written indicia, including
identifying indicia of a proprietary nature, surface ornamentation on an
article, or any combination thereof.
(1) When any detail shown in informal drawings or photographs does
not constitute an integral part of the disclosed and claimed design, a
specific disclaimer must appear in the original application papers
either in the specification or directly on the drawings or photographs.
This specific disclaimer in the original application papers will provide
antecedent basis for the omission of the disclaimed detail(s) in
later-filed drawings or photographs.
(2) When informal color drawings or photographs are deposited with
the original application papers without a disclaimer pursuant to
paragraph (b)(1) of this section, formal color drawings or photographs,
or a black and white drawing lined to represent color, will be required.
69. Section 1.154 is amended by revising its heading and paragraph
(a)(3) as to readfollows:
1.154 Arrangement of application elements.
(a) * * *
(3) Preamble, stating name of the applicant, title of the design, and
a brief description of the nature and intended use of the article in
which the design is embodied.
* * * * *
70. Section 1.155 and its heading are revised to read as follows:
1.155 Issue of design patents.
If, on examination, it appears that the applicant is entitled to a
design patent under the law, a notice of allowance will be sent to the
applicant, or applicant's attorney or agent, calling for the payment of
the issue fee ( 1.18(b)). If this issue fee is not paid within three
months of the date of the notice of allowance, the application shall be
regarded as abandoned.
71. Section 1.163 is amended by revising its heading and paragraph (b)
to read asfollows:
1.163 Specification and arrangement of application elements.
* * * * *
(b) Two copies of the specification (including the claim) must be
submitted, but only one signed oath or declaration is required.
* * * * *
72. Section 1.167 is revised to read as follows:
1.167 Examination.
Applications may be submitted by the Patent and Trademark Office to the
Department of Agriculture for study and report.
73. Section 1.171 is revised to read as follows:
1.171 Application for reissue.
An application for reissue must contain the same parts required for an
application for an original patent, complying with all the rules
relating there to except as otherwise provided, and in addition, must
comply with the requirements of the rules relating to reissue
applications.
74. Section 1.172 is amended by revising paragraph (a) to read as
follows:
1.172 Applicants, assignees.
(a) A reissue oath must be signed and sworn to or declaration made by
the inventor or inventors except as otherwise provided (see 1.42,
1.43, 1.47), and must be accompanied by the written consent of all
assignees, if any, owning an undivided interest in the patent, but a
reissue oath may be made and sworn to or declaration made by the
assignee of the entire interest if the application does not seek to
enlarge the scope of the claims of the original patent. All assignees
consenting to the reissue must establish their ownership interest in the
patent by filing in the reissue application a submission in accordance
with the provisions of 3.73(b).
* * * * *
75. Section 1.175 is amended by revising paragraphs (a) and (b) and
adding paragraphs (c) and (d) to read as follows:
1.175 Reissue oath or declaration.
(a) The reissue oath or declaration in addition to complying with the
requirements of 1.63, must also state that:
(1) The applicant believes the original patent to be wholly or partly
inoperative or invalid by reason of a defective specification or
drawing, or by reason of the patentee claiming more or less than the
patentee had the right to claim in the patent, stating at least one
error being relied upon as the basis for reissue; and
(2) All errors being corrected in the reissue application up to the
time of filing of the oath or declaration under this paragraph arose
without any deceptive intention on the part of the applicant.
(b)(1) For any error corrected, which is not covered by the oath or
declaration submitted under paragraph (a) of this section, applicant
must submit a supplemental oath or declaration stating that every such
error arose without any deceptive intention on the part of the
applicant. Any supplemental oath or declaration required by this
paragraph must be submitted before allowance and may be submitted:
(i) With any amendment prior to allowance; or
(ii) In order to overcome a rejection under 35 U.S.C. 251 made by the
examiner where it is indicated that the submission of a supplemental
oath or declaration as required byt his paragraph will overcome the
rejection.
(2) For any error sought to be corrected after allowance, a
supplemental oath or declaration must accompany the requested correction
stating that the error(s) to be corrected arose without any deceptive
intention on the part of the applicant.
(c) Having once stated an error upon which the reissue is based, as
set forth in paragraph (a)(1), unless all errors previously stated in
the oath or declaration are no longer being corrected, a subsequent oath
or declaration under paragraph (b) of this section need not specifically
identify any other error or errors being corrected.
(d) The oath or declaration required by paragraph (a) of this section
may be submitted under the provisions of 1.53(f).
76. Section 1.182 is revised to read as follows:
1.182 Questions not specifically provided for.
All situations not specifically provided for in the regulations of this
part will be decided in accordance with the merits of each situation by
or under the authority of the Commissioner, subject to such other
requirements as may be imposed, and such decision will be communicated
to the interested parties in writing. Any petition seeking a decision
under this section must be accompanied by the petition fee set forth in
1.17(h).
77. Section 1.184 is removed and reserved.
1.184 [Reserved]
78. Section 1.191 is amended by revising paragraphs (a) and (b) to read
as follows:
1.191 Appeal to Board of Patent Appeals and Interferences.
(a) Every applicant for a patent or for reissue of a patent, and
every owner of a patent under reexamination, any of whose claims has
been twice or finally ( 1.113) rejected, may appeal from the decision
of the examiner to the Board of Patent Appeals and Interferences by
filing a notice of appeal and the fee set forth in 1.17(b) within the
time period provided under 1.134 and 1.136 for reply.
(b) The signature requirement of 1.33 does not apply to a notice
of appeal filed under this section.
* * * * *
79. Section 1.192 is amended by revising paragraph (a) to read as
follows:
1.192 Appellant's brief.
(a) Appellant must, within two months from the date of the notice of
appeal under 1.191 or within the time allowed for reply to the action
from which the appeal was taken, if such time is later, file a brief in
triplicate. The brief must be accompanied by the fee set forth in
1.17(c) and must set forth the authorities and arguments on which
appellant will rely to maintain the appeal. Any arguments or authorities
not included in the brief will be refused consideration by the Board of
Patent Appeals and Interferences, unless good cause is shown.
* * * * *
80. Section 1.193 and its heading are revised to read as follows:
1.193 Examiner's answer and reply brief.
(a)(1) The primary examiner may, within such time as may be directed
by the Commissioner, furnish a written statement in answer to
appellant's brief including such explanation of the invention claimed
and of the references and grounds of rejection as may be necessary,
supplying a copy to appellant. If the primary examiner finds that the
appeal is not regular in form or does not relate to an appealable
action, the primary examiner shall so state.
(2) An examiner's answer must not include a new ground of rejection,
but if an amendment under 1.116 proposes to add or amend one or more
claims and appellant was advised that the amendment under 1.116 would
be entered for purposes of appeal and which individual rejection(s) set
forth in the action from which the appeal was taken would be used to
reject the added or amended claim(s), then the appeal brief must address
the rejection(s) of the claim(s) added or amended by the amendment under
1.116 as appellant was so advised and the examiner's answer may
include the rejection(s) of the claim(s) added or amended by the
amendment under 1.116 as appellant was so advised. The filing of an
amendment under 1.116 which is entered for purposes of appeal
represents appellant's consent that when so advised any appeal proceed
on those claim(s) added or amended by the amendment under 1.116
subject to any rejection set forth in the action from which the appeal
was taken.
(b)(1) Appellant may file a reply brief to an examiner's answer
within two months from the date of such examiner's answer. See
1.136(b) for extensions of time for filing a reply brief in a patent
application and 1.550(c) for extensions of time for filing a reply
brief in a reexamination proceeding. The primary examiner must either
acknowledge receipt and entry of the reply brief or withdraw the final
rejection and reopen prosecution to respond to the reply brief. A
supplemental examiner's answer is not permitted, unless the application
has been remanded by the Board of Patent Appeals and Interferences for
such purpose.
(2) Where prosecution is reopened by the primary examiner after an
appeal or reply brief has been filed, appellant must exercise one of the
following two options to avoid abandonment of the application:
(i) File a reply under 1.111, if the Office action is not final,
or a reply under 1.113, if the Office action is final; or
(ii) Request reinstatement of the appeal. If reinstatement of the
appeal is requested, such request must be accompanied by a supplemental
appeal brief, but no new amendments, affidavits ( 1.130, 1.131 or
1.132) or other evidence are permitted.
81. Section 1.194 is revised to read as follows:
1.194 Oral hearing.
(a) An oral hearing should be requested only in those circumstances
in which appellant considers such a hearing necessary or desirable for a
proper presentation of the appeal. An appeal decided without an oral
hearing will receive the same consideration by the Board of Patent
Appeals and Interferences as appeals decided after oral hearing.
(b) If appellant desires an oral hearing, appellant must file, in a
separate paper, a written request for such hearing accompanied by the
fee set forth in 1.17(d) within two months from the date of the
examiner's answer. If appellant requests an oral hearing and submits
therewith the fee set forth in 1.17(d), an oral argument may be
presented by, or on behalf of, the primary examiner if considered
desirable by either the primary examiner or the Board. See 1.136(b)
for extensions of time for requesting an oral hearing in a patent
application and 1.550(c) for extensions of time for requesting an
oral hearing in are examination proceeding.
(c) If no request and fee for oral hearing have been timely filed by
appellant, the appeal will be assigned for consideration and decision.
If appellant has requested an oral hearing and has submitted the fee set
forth in 1.17(d), a day of hearing will be set, and due notice
thereof given to appellant and to the primary examiner. A hearing will
be held as stated in the notice, and oral argument will be limited to
twenty minutes for appellant and fifteen minutes for the primary
examiner unless otherwise ordered before the hearing begins. If the
Board decides that a hearing is not necessary, the Board will so notify
appellant.
82. Section 1.196 is amended by revising paragraphs (b) and (d) to read
as follows:
1.196 Decision by the Board of Patent Appeals and Interferences.
* * * * *
(b) Should the Board of Patent Appeals and Interferences have
knowledge of any grounds not involved in the appeal for rejecting any
pending claim, it may include in the decision a statement to that effect
with its reasons for so holding, which statement constitutes a new
ground of rejection of the claim. A new ground of rejection shall not be
considered final for purposes of judicial review. When the Board of
Patent Appeals and Interferences makes a new ground of rejection, the
appellant, within two months from the date of the decision, must
exercise one of the following two options with respect to the new ground
of rejection to avoid termination of proceedings ( 1.197(c)) as to the
rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which event the application
will be remanded to the examiner. The new ground of rejection is binding
upon the examiner unless an amendment or showing of facts not previously
of record be made which, in the opinion of the examiner, overcomes the
new ground of rejection stated in the decision. Should the examiner
reject the claims, appellant may again appeal pursuant to 1.191
through 1.195 to the Board of Patent Appeals and Interferences.
(2) Request that the application be reheard under 1.197(b) by the
Board of Patent Appeals and Interferences upon the same record. The
request for rehearing must address the new ground of rejection and state
with particularity the points believed to have been misapprehended or
overlooked in rendering the decision and also state all other grounds
upon which rehearing is sought. Where request for such rehearing is
made, the Board of Patent Appeals and Interferences shall rehear the new
ground of rejection and, if necessary, render anew decision which shall
include all grounds of rejection upon which a patent is refused. The
decision on rehearing is deemed to incorporate the earlier decision for
purposes of appeal, except for those portions specifically withdrawn on
rehearing, and is final for the purpose of judicial review, except when
noted otherwise in the decision.
* * * * *
(d) The Board of Patent Appeals and Interferences may require
appellant to address any matter that is deemed appropriate for a
reasoned decision on the pending appeal. Appellant will be given a
non-extendable time period within which to respond to such a requirement.
* * * * *
83. Section 1.197 is amended by revising paragraphs (a) and (b) to read
as follows:
1.197 Action following decision.
(a) After decision by the Board of Patent Appeals and Interferences,
the application will be returned to the examiner, subject to appellant's
right of appeal or other review, for such further action by appellant or
by the examiner, as the condition of the application may require, to
carry into effect the decision.
(b) Appellant may file a single request for rehearing within two
months from the date of the original decision, unless the original
decision is so modified by the decision on rehearing as to become, in
effect, a new decision, and the Board of Patent Appeals and
Interferences so states. The request for rehearing must state with
particularity the points believed to have been misapprehended or
overlooked in rendering the decision and also state all other grounds
upon which rehearing is sought. See 1.136(b) for extensions of time
for seeking rehearing in a patent application and 1.550(c) for
extensions of time for seeking rehearing in a reexamination proceeding.
* * * * *
84. Section 1.291 is amended by revising paragraph (c) to read as
follows:
1.291 Protests by the public against pending applications.
* * * * *
(c) A member of the public filing a protest in an application under
paragraph (a) of this section will not receive any communications from
the Office relating to the protest, other than the return of a
self-addressed postcard which the member of the public may include with
the protest in order to receive an acknowledgment by the Office that the
protest has been received. In the absence of a request by the Office, an
applicant has no duty to, and need not, reply to a protest. The limited
involvement of the member of the public filing a protest pursuant to
paragraph (a) of this section ends with the filing of the protest, and
no further submission on behalf of the protestor will be considered,
except for additional prior art, or unless such submission raises new
issues which could not have been earlier presented.
85. Section 1.293 is amended by revising paragraph (c) to read as
follows:
1.293 Statutory invention registration.
* * * * *
(c) A waiver filed with a request for a statutory invention
registration will be effective, upon publication of the statutory
invention registration, to waive the inventor's right to receive a
patent on the invention claimed in the statutory invention registration,
in any application for an original patent which is pending on, or filed
after, the date of publication of the statutory invention registration.
A waiver filed with a request for a statutory invention registration
will not affect the rights of any other inventor even if the subject
matter of the statutory invention registration and an application of
another inventor are commonly owned. A waiver filed with a request for a
statutory invention registration will not affect any rights in a patent
to the inventor which issued prior to the date of publication of the
statutory invention registration unless a reissue application is filed
seeking to enlarge the scope of the claims of the patent. See also
1.104(c)(5).
86. Section 1.294 is amended by revising paragraph (b) to read as
follows:
1.294 Examination of request for publication of a statutory invention
registration and patent application to which the request is directed.
* * * * *
(b) Applicant will be notified of the results of the examination set
forth in paragraph (a) of this section. If the requirements of 1.293
and this section are not met by the request filed, the notification to
applicant will set a period of time within which to comply with the
requirements in order to avoid abandonment of the application. If the
application does not meet the requirements of 35 U.S.C. 112, the
notification to applicant will include a rejection under the appropriate
provisions of 35 U.S.C. 112. The periods for reply established pursuant
to this section are subject to the extension of time provisions of
1.136. After reply by the applicant, the application will again be
considered for publication of a statutory invention registration. If the
requirements of 1.293 and this section are not timely met, the
refusal to publish will be made final. If the requirements of 35 U.S.C.
112 are not met, the rejection pursuant to 35 U.S.C. 112 will be made
final.
* * * * *
87. Section 1.304 is amended by revising paragraph (a)(1) to read as
follows:
1.304 Time for appeal or civil action.
(a)(1) The time for filing the notice of appeal to the U.S. Court of
Appeals for the Federal Circuit ( 1.302) or for commencing a civil
action ( 1.303) is two months from the date of the decision of the
Board of Patent Appeals and Interferences. If a request for rehearing or
reconsideration of the decision is filed within the time period provided
under 1.197(b) or 1.658(b), the time for filing an appeal or
commencing a civil action shall expire two months after action on the
request. In interferences, the time for filing a cross-appeal or
cross-action expires:
(i) 14 days after service of the notice of appeal or the summons and
complaint; or
(ii) Two months after the date of decision of the Board of Patent
Appeals and Interferences, whichever is later.
* * * * *
88. 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. For reissue applications, see 1.175(b), which requires a
supplemental oath or declaration to accompany the amendment.
89. Section 1.316 is revised to read as follows:
1.316 Application abandoned for failure to pay issue fee.
If the issue fee is not paid within three months from the date of the
notice of allowance, the application will be regarded as abandoned. Such
an abandoned application will not be considered as pending before the
Patent and Trademark Office.
90. Section 1.317 is revised to read as follows:
1.317 Lapsed patents; delayed payment of balance of issue fee.
If the issue fee paid is the amount specified in the notice of
allowance, but a higher amount is required at the time the issue fee is
paid, any remaining balance of the issue fee is to be paid within three
months from the date of notice thereof and, if not paid, the patent will
lapse at the termination of the three-month period.
91. Section 1.318 is removed and reserved.
1.318 [Reserved]
92. Section 1.324 is revised to read as follows:
1.324 Correction of inventorship in patent.
(a) Whenever through error a person is named in an issued patent as
the inventor, or through error an inventor is not named in an issued
patent and such error arose without any deceptive intention on his or
her part, the Commissioner may, on petition, or on order of a court
before which such matter is called in question, issue a certificate
naming only the actual inventor or inventors. A petition to correct
inventorship of a patent involved in an interference must comply with
the requirements of this section and must be accompanied by a motion
under 1.634.
(b) Any petition pursuant to paragraph (a) of this section must be
accompanied by:
(1) A statement from each person who is being added as an inventor
and from each person who is being deleted as an inventor that the
inventorship error occurred without any deceptive intention on his or
her part;
(2) A statement from the current named inventors who have not
submitted a statement under paragraph (b)(1) of this section either
agreeing to the change of inventorship or stating that they have no
disagreement in regard to the requested change;
(3) A statement from all assignees of the parties submitting a
statement under paragraphs (b)(1) and (b)(2) of this section agreeing to
the change of inventorship in the patent, which statement must comply
with the requirements of 3.73(b); and
(4) The fee set forth in 1.20(b).
93. Section 1.352 is removed and reserved.
1.352 [Reserved]
94. Section 1.366 is amended by revising paragraphs (b) through (d) to
read as follows:
1.366 Submission of maintenance fees.
* * * * *
(b) A maintenance fee and any necessary surcharge submitted for a
patent must be submitted in the amount due on the date the maintenance
fee and any necessary surcharge are paid. A maintenance fee or surcharge
may be paid in the manner set forth in 1.23 or by an authorization to
charge a deposit account established pursuant to 1.25. Payment of a
maintenance fee and any necessary surcharge or the authorization to
charge a deposit account must be submitted within the periods set forth
in 1.362(d), (e), or (f). Any payment or authorization of maintenance
fees and surcharges filed at any other time will not be accepted and
will not serve as a payment of the maintenance fee except insofar as a
delayed payment of the maintenance fee is accepted by the Commissioner
in an expired patent pursuant to a petition filed under 1.378. Any
authorization to charge a deposit account must authorize the immediate
charging of the maintenance fee and any necessary surcharge to the
deposit account. Payment of less than the required amount, payment in a
manner other than that set forth 1.23, or in the filing of an
authorization to charge a deposit account having insufficient funds will
not constitute payment of a maintenance fee or surcharge on a patent.
The procedures set forth in 1.8 or 1.10 may be utilized in paying
maintenance fees and any necessary surcharges.
(c) In submitting maintenance fees and any necessary surcharges,
identification of the patents for which maintenance fees are being paid
must include the following:
(1) The patent number; and
(2) The application number of the United States application for the
patent on which the maintenance fee is being paid.
(d) Payment of maintenance fees and any surcharges should identify
the fee being paid for each patent as to whether it is the 3 1/2, 7 1/2,
or 11 1/2-year fee, whether small entity status is being changed or
claimed, the amount of the maintenance fee and any surcharge being paid,
and any assigned customer number. If the maintenance fee and any
necessary surcharge is being paid on a reissue patent, the payment must
identify the reissue patent by reissue patent number and reissue
application number as required by paragraph (c) of this section and
should also include the original patent number.
* * * * *
95. Section 1.377 is amended by revising paragraph (c) to read as
follows:
1.377 Review of decision refusing to accept and record payment of a
maintenance fee filed prior to expiration of patent.
* * * * *
(c) any petition filed under this section must comply with the
requirements of 1.181(b) and must be signed by an attorney or agent
registered to practice before the Patent and Trademark Office, or by the
patentee, the assignee, or other party in interest.
96. Section 1.378 is amended by revising paragraph (d) to read as
follows:
1.378 Acceptance of delayed payment of maintenance fee in expired
patent to reinstate patent.
* * * * *
(d) Any petition under this section must be signed by an attorney or
agent registered to practice before the Patent and Trademark Office, or
by the patentee, the assignee, or other party in interest.
* * * * *
97. Section 1.425 is revised to read as follows:
1.425 Filing by other than inventor.
Where an international application which designates the United States of
America is filed and where one or more inventors refuse to sign the
Request for the international application or cannot be found or reached
after diligent effort, the Request need not be signed by such inventor
if it is signed by another applicant. Such international application
must be accompanied by a statement explaining to the satisfaction of the
Commissioner the lack of the signature concerned.
98. Section 1.484 is amended by revising paragraphs (d) through (f) to
read as follows:
1.484 Conduct of international preliminary examination.
* * * * *
(d) The International Preliminary Examining Authority will establish
a written opinion if any defect exists or if the claimed invention lacks
novelty, inventive step or industrial applicability and will set a
non-extendable time limit in the written opinion for the applicant to
reply.
(e) If no written opinion under paragraph (d) of this section is
necessary, or after any written opinion and the reply thereto or the
expiration of the time limit for reply to such written opinion, an
international preliminary examination report will be established by the
International Preliminary Examining Authority. One copy will be
submitted to the International Bureau and one copy will be submitted to
the applicant.
(f) An applicant will be permitted a personal or telephone interview
with the examiner, which must be conducted during the non-extendable
time limit for reply by the applicant to a written opinion. Additional
interviews may be conducted where the examiner determines that such
additional interviews may be helpful to advancing the international
preliminary examination procedure. A summary of any such personal or
telephone interview must be filed by the applicant as a part of the
reply to the written opinion or, if applicant files no reply, be made of
record in the file by the examiner.
99. Section 1.485 is amended by revising paragraph (a) to read as
follows:
1.485 Amendments by applicant during international preliminary
examination.
(a) The applicant may make amendments at the time of filing of the
Demand and within the time limit set by the International Preliminary
Examining Authority for reply to any notification under 1.484(b) or
to any written opinion. Any such amendments must:
(1) Be made by submitting a replacement sheet for every sheet of the
application which differs from the sheet it replaces unless an entire
sheet is cancelled; and
(2) Include a description of how the replacement sheet differs from
the replaced sheet.
* * * * *
100. Section 1.488 is amended by revising paragraph (b)(3) to read as
follows:
1.488 Determination of unity of invention before the International
Preliminary Examining Authority.
* * * * *
(b) * * *
(3) If applicant fails to restrict the claims or pay additional fees
within the time limit set for reply, the International Preliminary
Examining Authority will issue a written opinion and/or establish an
international preliminary examination report on the main invention and
shall indicate the relevant facts in the said report. In case of any
doubt as to which invention is the main invention, the invention first
mentioned in the claims and previously searched by an International
Searching Authority shall be considered the main invention.
* * * * *
101. Section 1.492 is amended by adding a new paragraph (g) to read as
follows:
1.492 National stage fees.
* * * * *
(g) If the additional fees required by paragraphs (b), (c), and (d)
are not paid on presentation of the claims for which the additional fees
are due, they must be paid or the claims cancelled by amendment, prior
to the expiration of the time period set for reply by the Office in any
notice of fee deficiency.
102. Section 1.494 is amended by revising paragraph (c) to read as
follows:
1.494 Entering the national stage in the United States of America as
a Designated Office.
* * * * *
(c) If applicant complies with paragraph (b) of this section before
expiration of 20 months from the priority date but omits:
(1) A translation of the international application, as filed, into
the English language, if it was originally filed in another language (35
U.S.C. 371(c)(2)); and/or
(2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); see
1.497), applicant will be so notified and given a period of time
within which to file the translation and/or oath or declaration in order
to prevent abandonment of the application. The payment of the processing
fee set forth in 1.492(f) is required for acceptance of an English
translation later than the expiration of 20 months after the priority
date. The payment of the surcharge set forth in 1.492(e) is required
for acceptance of the oath or declaration of the inventor later than the
expiration of 20 months after the priority date. A copy of the
notification mailed to applicant should accompany any reply thereto
submitted to the Office.
* * * * *
103. Section 1.495 is amended by revising paragraph (c) to read as
follows:
1.495 Entering the national stage in the United States of America as
an Elected Office.
* * * * *
(c) If applicant complies with paragraph (b) of this section before
expiration of 30 months from the priority date but omits:
(1) A translation of the international application, as filed, into
the English language, if it was originally filed in another language (35
U.S.C. 371(c)(2)); and/or
(2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); see
1.497), applicant will be so notified and given a period of time
within which to file the translation and/or oath or declaration in order
to prevent abandonment of the application. The payment of the processing
fee set forth in 1.492(f) is required for acceptance of an English
translation later than the expiration of 30 months after the priority
date. The payment of the surcharge set forth in 1.492(e) is required
for acceptance of the oath or declaration of the inventor later than the
expiration of 30 months after the priority date. A copy of the
notification mailed to applicant should accompany any reply there to
submitted to the Office.
* * * * *
104. Section 1.510 is amended by revising paragraph (e) to read as
follows:
1.510 Request for reexamination.
* * * * *
(e) A request filed by the patent owner may include a proposed
amendment in accordance with 1.530(d).
* * * * *
105. Section 1.530 is amended by removing paragraph (e) and revising its
heading and paragraph (d) to read as follows:
1.530 Statement; amendment by patent owner.
* * * * *
(d) Amendments in reexamination proceedings. Amendments in
reexamination proceedings are made by filing a paper, in compliance with
paragraph (d)(5) of this section, directing that specified amendments be
made.
(1) Specification other than the claims. Amendments to the
specification, other than to the claims, may only be made as follows:
(i)Amendments must be made by submission of the entire text of a
newly added or rewritten paragraph(s) with markings pursuant to
paragraph (d)(1)(iii) of this section, except that an entire paragraph
may be deleted by a statement deleting the paragraph without
presentation of the text of the paragraph.
(ii) The precise point in the specification must be indicated where
the paragraph to be amended is located.
(iii) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.
(2) Claims. Amendments to the claims may only be made as follows:
(i)(A) The amendment must be made relative to the patent claims in
accordance with paragraph (d)(8) of this section and must include the
entire text of each claim which is being proposed to be amended by the
current amendment and each proposed new claim being added by the current
amendment with markings pursuant to paragraph (d)(2)(i)(C) of this
section, except that a patent claim or previously proposed new claim
should be cancelled by a statement cancelling the patent claim or
proposed new claim without presentation of the text of the patent claim
or proposed new claim.
(B) Patent claims must not be renumbered and the numbering of any new
claims proposed to be added to the patent must follow the number of the
highest numbered patent claim.
(C) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made. If a claim is amended pursuant
to paragraph (d)(2)(i)(A) of this section, a parenthetical expression
"amended," "twice amended," etc., should follow the original claim
number.
(ii) Each amendment submission must set forth the status (i.e.,
pending or cancelled) as of the date of the amendment, of all patent
claims and of all new claims currently or previously proposed.
(iii) Each amendment, when submitted for the first time, must be
accompanied by an explanation of the support in the disclosure of the
patent for the amendment along with any additional comments on page(s)
separate from the page(s) containing the amendment.
(3) No amendment may enlarge the scope of the claims of the patent or
introduce new matter. No amendment may be proposed for entry in an
expired patent. Moreover, no amendment will be incorporated into the
patent by certificate issued after the expiration of the patent.
(4) Although the Office actions will treat proposed amendments as
though they have been entered, the proposed amendments will not be
effective until the reexamination certificate is issued.
(5) The form of amendments other than to the patent drawings must be
in accordance with the following requirements. All amendments must be in
the English language and must be legibly written either by a typewriter
or mechanical printer in at least 11 point type in permanent dark ink or
its equivalent in portrait orientation on flexible, strong, smooth,
non-shiny, durable, white paper. All amendments must be presented in a
form having sufficient clarity and contrast between the paper and the
writing thereon to permit the direct reproduction of readily legible
copies in any number by use of photographic, electrostatic,
photo-offset, and microfilming processes and electronic reproduction by
use of digital imaging or optical character recognition. If the
amendments are not of the required quality, substitute typewritten or
mechanically printed papers of suitable quality will be required. The
papers, including the drawings, must have each page plainly written on
only one side of a sheet of paper. The sheets of paper must be the same
size and either 21.0 cm. by 29.7 cm. (DIN sizeA4) or 21.6 cm. by 27.9
cm. (8 and 1/2 by 11 inches). Each sheet must include a top margin of at
least 2.0 cm. (3/4 inch), a left side margin of at least 2.5 cm. (1
inch), a right side margin of at least 2.0 cm. (3/4 inch), and a bottom
margin of at least 2.0 cm. (3/4 inch), and no holes should be made in
the sheets as submitted. The lines must be double spaced, or one and
one-half spaced. The pages must be numbered consecutively, starting with
1, the numbers being centrally located, preferably below the text, or
above the text.
(6) Drawings.
(i) The original patent drawing sheets may not be altered. Any
proposed change to the patent drawings must be by way of a new sheet of
drawings with the amended figures identified as "amended" and with added
figures identified as "new" for each sheet change submitted in
compliance with 1.84.
(ii) Where a change to the drawings is desired, a sketch in permanent
ink showing proposed changes in red, to become part of the record, must
be filed for approval by the examiner and should be in a separate paper.
(7) The disclosure must be amended, when required by the Office, to
correct inaccuracies of description and definition and to secure
substantial correspondence between the claims, the remainder of the
specification, and the drawings.
(8) All amendments to the patent must be made relative to the patent
specification, including the claims, and drawings, which is in effect as
of the date of filing of the request for reexamination.
106. Section 1.550 is amended by revising paragraphs (a), (b) and (e) to
read as follows:
1.550 Conduct of reexamination proceedings.
(a) All reexamination proceedings, including any appeals to the Board
of Patent Appeals and Interferences, will be conducted with special
dispatch within the Office. After issuance of the reexamination order
and expiration of the time for submitting any responses thereto, the
examination will be conducted in accordance with 1.104, 1.110
through 1.113 and 1.116, and will result in the issuance of a
reexamination certificate under 1.570.
(b) The patent owner will be given at least thirty days to respond to
any Office action. Such response may include further statements in
response to any rejections or proposed amendments or new claims to place
the patent in a condition where all claims, if amended as proposed,
would be patentable.
* * * * *
(e) The reexamination requester will be sent copies of Office actions
issued during the reexamination proceeding. After filing of a request
for reexamination by a third party requester, any document filed by
either the patent owner or the third party requester must be served on
the other party in the reexamination proceeding in the manner provided
by 1.248. The document must reflect service or the document may be
refused consideration by the Office.
(1) The active participation of the reexamination requester ends with
the reply pursuant to 1.535, and no further submissions on behalf of
the reexamination requester will be acknowledged or considered. Further,
no submissions on behalf of any third parties will be acknowledged or
considered unless such submissions are:
(i) In accordance with 1.510; or
(ii) Entered in the patent file prior to the date of the order to
reexamine pursuant to 1.525.
(2) Submissions by third parties, filed after the date of the order
to reexamine pursuant to 1.525, must meet the requirements of and
will be treated in accordance with 1.501(a).
107. Section 1.770 is revised to read as follows:
1.770 Express withdrawal of application for extension of patent term.
An application for extension of patent term may be expressly withdrawn
before a determination is made pursuant to 1.750 by filing in the
Office, in duplicate, a written declaration of withdrawal signed by the
owner of record of the patent or its agent. An application may not be
expressly withdrawn after the date permitted for reply to the final
determination on the application. An express withdrawal pursuant to this
section is effective when acknowledged in writing by the Office. The
filing of an express withdrawal pursuant to this section and its
acceptance by the Office does not entitle applicant to a refund of the
filing fee ( 1.20(j)) or any portion thereof.
108. Section 1.785 is amended by revising paragraph (d) to read as
follows:
1.785 Multiple applications for extension of term of the same patent
or of different patents for the same regulatory review period for a
product.
* * * * *
(d) An application for extension shall be considered complete and
formal regardless of whether it contains the identification of the
holder of the regulatory approval granted with respect to the regulatory
review period. When an application contains such information, or is
amended to contain such information, it will be considered in
determining whether an application is eligible for an extension under
this section. A request may be made of any applicant to supply such
information within a non-extendable period of not less than one month
whenever multiple applications for extension of more than one patent are
received and rely upon the same regulatory review period. Failure to
provide such information within the period for reply set shall be
regarded as conclusively establishing that the applicant is not the
holder of the regulatory approval.
* * * * *
109. Section 1.804 is amended by revising paragraph (b) to read as
follows:
1.804 Time of making an original deposit.
* * * * *
(b) When the original deposit is made after the effective filing date
of an application for patent, the applicant must promptly submit a
statement from a person in a position to corroborate the fact, stating
that the biological material which is deposited is a biological material
specifically identified in the application as filed.
110. Section 1.805 is amended by revising paragraph (c) to read as
follows:
1.805 Replacement or supplement of deposit.
* * * * *
(c) A request for a certificate of correction under this section
shall not be granted unless the request is made promptly after the
replacement or supplemental deposit has been made and the request:
(1) Includes a statement of the reason for making the replacement or
supplemental deposit;
(2) Includes a statement from a person in a position to corroborate
the fact, and stating that the replacement or supplemental deposit is of
a biological material which is identical to that originally deposited;
(3) Includes a showing that the patent owner acted
diligently --
(i) In the case of a replacement deposit, in making the deposit after
receiving notice that samples could no longer be furnished from an
earlier deposit; or
(ii) In the case of a supplemental deposit, in making the deposit after
receiving notice that the earlier deposit had become contaminated or had
lost its capability to function as described in the specification;
(4) Includes a statement that the term of the replacement or
supplemental deposit expires no earlier than the term of the deposit
being replaced or supplemented; and
(5) Otherwise establishes compliance with these regulations.
* * * * *
PART 3 - ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
111. The authority citation for 37 CFR Part 3 continues to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
112. Section 3.11 is revised to read as follows:
3.11 Documents which will be recorded.
(a) Assignments of applications, patents, and registrations,
accompanied by completed cover sheets as specified in 3.28 and
3.31, will be recorded in the Office. Other documents, accompanied by
completed cover sheets as specified in 3.28 and 3.31, affecting
title to applications, patents, or registrations, will be recorded as
provided in this part or at the discretion of the Commissioner.
(b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR
1943-1948 Comp., p. 303) requires the several departments and other
executive agencies of the Government, including Government-owned or
Government-controlled corporations, to forward promptly to the
Commissioner of Patents and Trademarks for recording all licenses,
assignments, or other interests of the Government in or under patents or
patent applications. Assignments and other documents affecting title to
patents or patent applications and documents not affecting title to
patents or patent applications required by Executive Order 9424 to be
filed will be recorded as provided in this part.
113. 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 application number (e.g.,
PCT/US90/01234). If an assignment of a patent application filed under
1.53(b) 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 under 1.53(c) 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.
114. Section 3.26 is revised to read as follows:
3.26 English language requirement.
The Office will accept and record non-English language documents only if
accompanied by an English translation signed by the individual making
the translation.
115. Section 3.27 is revised to read as follows:
3.27 Mailing address for submitting documents to be recorded.
(a) Except as provided in paragraph (b) of this section, documents
and cover sheets to be recorded should be addressed to the Commissioner
of Patents and Trademarks, Box Assignment, Washington, D.C. 20231,
unless they are filed together with new applications or with a petition
under 3.81(b).
(b) A document required by Executive Order 9424 to be filed which
does not affect title and is so identified in the cover sheet (see
3.31(c)(2)) must be addressed and mailed to the Commissioner of Patents
and Trademarks, Box Government Interest, Washington, D.C. 20231.
116. Section 3.31 is amended by adding paragraph (c) to read as follows:
3.31 Cover sheet content.
* * * * *
(c) Each patent cover sheet required by 3.28 seeking to record a
governmental interest as provided by 3.11(b) must:
(1) Indicate that the document is to be recorded on the Governmental
Register, and, if applicable, that the document is to be recorded on the
Secret Register (see 3.58); and
(2) Indicate, if applicable, that the document to be recorded is not
a document affecting title (see 3.41(b)).
117. Section 3.41 is revised to read as follows:
3.41 Recording fees.
(a) All requests to record documents must be accompanied by the
appropriate fee. Except as provided in paragraph (b) of this section, a
fee is required for each application, patent and registration against
which the document is recorded as identified in the cover sheet. The
recording fee is set in 1.21(h) of this chapter for patents and in
2.6(q) of this chapter for trademarks.
(b) No fee is required for each patent application and patent against
which a document required by Executive Order 9424 is to be filed if:
(1) The document does not affect title and is so identified in the
cover sheet (see 3.31(c)(2)); and
(2) The document and cover sheet are mailed to the Office in
compliance with 3.27(b).
118. Section 3.51 is revised to read as follows:
3.51 Recording date.
The date of recording of a document is the date the document meeting the
requirements for recording set forth in this part is filed in the
Office. A document which does not comply with the identification
requirements of 3.21 will not be recorded. Documents not meeting the
other requirements for recording, for example, a document submitted
without a completed cover sheet or without the required fee, will be
returned for correction to the sender where a correspondence address is
available. The returned papers, stamped with the original date of
receipt by the Office, will be accompanied by a letter which will
indicate that if the returned papers are corrected and resubmitted to
the Office within the time specified in the letter, the Office will
consider the original date of filing of the papers as the date of
recording of the document. The procedure set forth in 1.8 or 1.10
of this chapter may be used for resubmissions of returned papers to have
the benefit of the date of deposit in the United States Postal Service.
If the returned papers are not corrected and resubmitted within the
specified period, the date of filing of the corrected papers will be
considered to be the date of recording of the document. The specified
period to resubmit the returned papers will not be extended.
119. Section 3.58 is added to read as follows:
3.58 Governmental registers.
(a) The Office will maintain a Departmental Register to record
governmental interests required to be recorded by Executive Order 9424.
This Departmental Register will not be open to public inspection but
will be available for examination and inspection by dulyauthorized
representatives of the Government. Governmental interests recorded on
the Departmental Register will be available for public inspection as
provided in 1.12.
(b) The Office will maintain a Secret Register to record governmental
interests required to be recorded by Executive Order 9424. Any
instrument to be recorded will be placed on this Secret Register at the
request of the department or agency submitting the same. No information
will be given concerning any instrument in such record or register, and
no examination or inspection thereof or of the index thereto will be
permitted, except on the written authority of the head of the department
or agency which submitted the instrument and requested secrecy, and the
approval of such authority by the Commissioner of Patents and
Trademarks. No instrument or record other than the one specified may be
examined, and the examination must take place in the presence of a
designated official of the Patent and Trademark Office. When the
department or agency which submitted an instrument no longer requires
secrecy with respect to that instrument, it must be recorded anew in the
Departmental Register.
120. The undesignated center heading in Part 3 - Assignment, Recording
and Rights of Assignee, following 3.61 is revised to read as follows:
ACTION TAKEN BY ASSIGNEE
121. Section 3.73 is amended by revising its heading and paragraph (b)
to read as follows:
3.73 Establishing right of assignee to take action.
* * * * *
(b) When an assignee seeks to take action in a matter before the
Office with respect to a patent application, trademark application,
patent, registration, or reexamination proceeding, the assignee must
establish its ownership of the property to the satisfaction of the
Commissioner. Ownership is established by submitting to the Office, in
the Office file related to the matter in which action is sought to be
taken, documentary evidence of a chain of title from the original owner
to the assignee (e.g., copy of an executed assignment submitted
forrecording) or by specifying (e.g., reel and frame number) where such
evidence is recorded in the Office. The submission establishing
ownership must be signed by a party authorized to act on behalf of the
assignee. Documents submitted to establish ownership may be required to
be recorded as a condition to permitting the assignee to take action in
a matter pending before the Office.
PART 5 - SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE
APPLICATIONS IN FOREIGN COUNTRIES
122. The authority citation for 37 CFR Part 5 continues to read as
follows:
Authority: 35 U.S.C. 6, 41, 181-188, as amended by the Patent Law
Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102 Stat. 1567;
the Arms Export Control Act, as amended, 22 U.S.C. 2751 et seq.; the
Atomic Energy Act of 1954, as amended, 42 U.S.C. 2011 et seq.; and the
Nuclear Non-Proliferation Act of 1978, 22 U.S.C. 3201 et seq.; and the
delegations in the regulations under these Acts to the Commissioner (15
CFR 370.10(j), 22 CFR 125.04, and 10 CFR 810.7).
123. Section 5.1 and its heading are revised to read as follows:
5.1 Correspondence.
All correspondence in connection with this part, including petitions,
must be addressed to "Assistant Commissioner for Patents (Attention
Licensing and Review), Washington, DC 20231."
124. Section 5.2 is amended by removing paragraphs (c) and (d) and
revising paragraph (b)to read as follows:
5.2 Secrecy order.
* * * * *
(b) Any request for compensation as provided in 35 U.S.C. 183 must
not be made to the Patent and Trademark Office, but directly to the
department or agency which caused the secrecy order to be issued.
125. Section 5.3 is amended by revising paragraph (c) to read as follows:
5.3 Prosecution of application under secrecy orders; withholding
patent.
* * * * *
(c) When the national application is found to be in condition for
allowance except for the secrecy order the applicant and the agency
which caused the secrecy order to be issued will be notified. This
notice (which is not a notice of allowance under 1.311 of this
chapter) does not require reply by the applicant and places the national
application in a condition of suspension until the secrecy order is
removed. When the secrecy order is removed the Patent and Trademark
Office will issue a notice of allowance under 1.311 of this chapter,
or take such other action as may then be warranted.
* * * * *
126. Section 5.4 is amended by revising paragraphs (a) and (d) to read
as follows:
5.4 Petition for rescission of secrecy order.
(a) A petition for rescission or removal of a secrecy order may be
filed by, or on behalf of, any principal affected thereby. Such petition
may be in letter form, and it must be in duplicate.
* * * * *
(d) Appeal to the Secretary of Commerce, as provided by 35 U.S.C.
181, from a secrecy order cannot be taken until after a petition for
rescission of the secrecy order has been made and denied. Appeal must be
taken within sixty days from the date of the denial, and the party
appealing, as well as the department or agency which caused the order to
be issued, will be notified of the time and place of hearing.
127. Section 5.5 is amended by revising paragraphs (b) and (e) to read
as follows:
5.5 Permit to disclose or modification of secrecy order.
* * * * *
(b) Petitions for a permit or modification must fully recite the
reason or purpose for the proposed disclosure. Where any proposed
disclosee is known to be cleared by a defense agency to receive
classified information, adequate explanation of such clearance should be
made in the petition including the name of the agency or department
granting the clearance and the date and degree thereof. The petition
must be filed in duplicate.
* * * * *
(e) Organizations requiring consent for disclosure of applications
under secrecy order to persons or organizations in connection with
repeated routine operation may petition for such consent in the form of
a general permit. To be successful such petitions must ordinarily recite
the security clearance status of the disclosees as sufficient for the
highest classification of material that may be involved.
128. Section 5.6 is removed and reserved.
5.6 [Reserved]
129. Section 5.7 is removed and reserved.
5.7 [Reserved]
130. Section 5.8 is removed and reserved.
5.8 [Reserved]
131. Section 5.11 is amended by revising paragraphs (b), (c) and (e)(3)
to read as follows:
5.11 License for filing in a foreign country an application on an
invention made in the United States or for transmitting international
application.
* * * * *
(b) The license from the Commissioner of Patents and Trademarks
referred to in paragraph (a) would also authorize the export of
technical data abroad for purposes relating to the preparation, filing
or possible filing and prosecution of a foreign patent application
without separately complying with the regulations contained in 22 CFR
Parts 121 through 130 (International Traffic in Arms Regulations of the
Department of State), 15 CFR Part 779 (Regulations of the Office of
Export Administration, International Trade Administration, Department of
Commerce) and 10 CFR Part 810 (Foreign Atomic Energy Programs of the
Department of Energy).
(c) Where technical data in the form of a patent application, or in
any form, is being exported for purposes related to the preparation,
filing or possible filing and prosecution of a foreign patent
application, without the license from the Commissioner of Patents and
Trademarks referred to in paragraphs (a) or (b) of this section, or on
an invention not made in the United States, the export regulations
contained in 22 CFR Parts 120 through 130 (International Traffic in Arms
Regulations of the Department of State), 15 CFR Parts 768-799 (Export
Administration Regulations of the Department of Commerce) and 10 CFR
Part 810 (Assistance to Foreign Atomic Energy Activities Regulations of
the Department of Energy) must be complied with unless a license is not
required because a United States application was on file at the time of
export for at least six months without a secrecy order under 5.2
being placed thereon. The term "exported" means export as it is defined
in 22 CFR Part 120, 15 CFR Part 779 and activities covered by 10 CFR
Part 810.
* * * * *
(e) * * *
(3) For subsequent modifications, amendments and supplements
containing additional subject matter to, or divisions of, a foreign
patent application if:
(i) A license is not, or was not, required under paragraph (e)(2) of
this section for the foreign patent application;
(ii) The corresponding United States application was not required to
be made available for inspection under 35 U.S.C. 181; and
(iii) Such modifications, amendments, and supplements do not, or did
not, change the general nature of the invention in a manner which would
require any corresponding United States application to be or have been
available for inspection under 35 U.S.C. 181.
* * * * *
132. Section 5.12 is amended by revising paragraph (b) to read as
follows:
5.12 Petition for license.
* * * * *
(b) Petitions for license should be presented in letter form, and
must include the petitioner's address and full instructions for delivery
of the requested license when it is to be delivered to other than the
petitioner. If expedited handling of the petition under this paragraph
is sought, the petition must also include the fee set forth in
1.17(h).
133. Section 5.13 is revised to read as follows:
5.13 Petition for license; no corresponding application.
If no corresponding national or international application has been filed
in the United States, the petition for license under 5.12(b) must
also be accompanied by a legible copy of the material upon which a
license is desired. This copy will be retained as a measure of the
license granted.
134. Section 5.14 is amended by revising paragraph (a) to read as
follows:
5.14 Petition for license; corresponding U.S. application.
(a) When there is a corresponding United States application on file,
a petition for license under 5.12(b) must also identify this
application by application number, filing date, inventor, and title, but
a copy of the material upon which the license is desired is not
required. The subject matter licensed will be measured by the disclosure
of the United States application.
* * * * *
135. Section 5.15 is amended by revising paragraph (a), (b), (c) and (e)
to read as follows:
5.15 Scope of license.
(a) Applications or other materials reviewed pursuant to 5.12
through 5.14, which were not required to be made available for
inspection by defense agencies under 35 U.S.C. 181, will be eligible for
a license of the scope provided in this paragraph. This license permits
subsequent modifications, amendments, and supplements containing
additional subject matter to, or divisions of, a foreign patent
application, if such changes to the application do not alter the general
nature of the invention in a manner which would require the United
States application to have been made available for inspection under 35
U.S.C. 181. Grant of this license authorizing the export and filing of
an application in a foreign country or the transmitting of an
international application to any foreign patent agency or international
patent agency when the subject matter of the foreign or international
application corresponds to that of the domestic application. This
license includes authority:
(1) To export and file all duplicate and formal application papers in
foreign countries or with international agencies;
(2) To make amendments, modifications, and supplements, including
divisions, changes or supporting matter consisting of the illustration,
exemplification, comparison, or explanation of subject matter disclosed
in the application; and
(3) To take any action in the prosecution of the foreign or
international application provided that the adding of subject matter or
taking of any action under paragraphs (a)(1) or (2) of this section does
not change the general nature of the invention disclosed in the
application in a manner which would require such application to have
been made available for inspection under 35 U.S.C. 181 by including
technical data pertaining to:
(i) Defense services or articles designated in the United States
Munitions List applicable at the time of foreign filing, the unlicensed
exportation of which is prohibited pursuant to the Arms Export Control
Act, as amended, and 22 CFR Parts 121 through 130; or
(ii) Restricted Data, sensitive nuclear technology or technology
useful in the production or utilization of special nuclear material or
atomic energy, dissemination of which is subject to restrictions of the
Atomic Energy Act of 1954, as amended, and the Nuclear Non-Proliferation
Act of 1978, as implemented by the regulations for Unclassified
Activities in Foreign Atomic Energy Programs, 10 CFR Part 810, in effect
at the time of foreign filing.
* * * * *
(b) Applications or other materials which were required to be made
available for inspection under 35 U.S.C. 181 will be eligible for a
license of the scope provided in this paragraph. Grant of this license
authorizes the export and filing of an application in a foreign country
or the transmitting of an international application to any foreign
patent agency or international patent agency. Further, this license
includes authority to export and file all duplicate and formal papers in
foreign countries or with foreign and international patent agencies and
to make amendments, modifications, and supplements to, file divisions
of, and take any action in the prosecution of the foreign or
international application, provided subject matter additional to that
covered by the license is not involved.
(c) A license granted under 5.12(b) pursuant to 5.13 or 5.14
shall have the scope indicated in paragraph (a) of this section, if it
is so specified in the license. A petition, accompanied by the required
fee ( 1.17(h)), may also be filed to change a license having the scope
indicated in paragraph (b) of this section to a license having the scope
indicated in paragraph (a) of this section. No such petition will be
granted if the copy of the material filed pursuant to 5.13 or any
corresponding United States application was required to be made
available for inspection under 35 U.S.C. 181. The change in the scope of
a license will be effective as of the date of the grant of the petition.
* * * * *
(e) Any paper filed abroad or transmitted to an international patent
agency following the filing of a foreign or international application
which changes the general nature of the subject matter disclosed at the
time of filing in a manner which would require such application to have
been made available for inspection under 35 U.S.C. 181 or which involves
the disclosure of subject matter listed in paragraphs (a)(3)(i) or (ii)
of this section must be separately licensed in the same manner as a
foreign or international application. Further, if no license has been
granted under 5.12(a) on filing the corresponding United States
application, any paper filed abroad or with an international patent
agency which involves the disclosure of additional subject matter must
be licensed in the same manner as a foreign or international application.
* * * * *
136. Section 5.16 is removed and reserved.
5.16 [Reserved]
137. Section 5.17 is removed and reserved.
5.17 [Reserved]
138. Section 5.18 is revised to read as follows:
5.18 Arms, ammunition, and implements of war.
(a) The exportation of technical data relating to arms, ammunition,
and implements of war generally is subject to the International Traffic
in Arms Regulations of the Department of State (22 CFR Parts 120 through
130); the articles designated as arms, ammunitions, and implements of
war are enumerated in the U.S. Munitions List (22 CFR Part 121).
However, if a patent applicant complies with regulations issued by the
Commissioner of Patents and Trademarks under 35 U.S.C. 184, no separate
approval from the Department of State is required unless the applicant
seeks to export technical data exceeding that used to support a patent
application in a foreign country. This exemption from Department of
State regulations is applicable regardless of whether a license from the
Commissioner is required by the provisions of 5.11 and 5.12 (22 CFR
Part 125).
(b) When a patent application containing subject matter on the
Munitions List (22 CFR Part 121) is subject to a secrecy order under
5.2 and a petition is made under 5.5 for a modification of the
secrecy order to permit filing abroad, a separate request to the
Department of State for authority to export classified information is
not required (22 CFR Part 125).
139. Section 5.19 is revised to read as follows:
5.19. Export of technical data.
(a) Under regulations (15 CFR 770.10(j)) established by the
Department of Commerce, a license is not required in any case to file a
patent application or part thereof in a foreign country if the foreign
filing is in accordance with the regulations ( 5.11 through 5.25) of
the Patent and Trademark Office.
(b) An export license is not required for data contained in a patent
application prepared wholly from foreign-origin technical data where
such application is being sent to the foreign inventor to be executed
and returned to the United States for subsequent filing in the U.S.
Patent and Trademark Office (15 CFR 779A.3(e)).
140. Section 5.20 is revised to read as follows:
5.20 Export of technical data relating to sensitive nuclear
technology.
Under regulations (10 CFR 810.7) established by the United States
Department of Energy, an application filed in accordance with the
regulations ( 5.11 through 5.25) of the Patent and Trademark Office
and eligible for foreign filing under 35 U.S.C. 184, is considered to be
information available to the public in published form and a generally
authorized activity for the purposes of the Department of Energy
regulations.
141. Section 5.25 is amended by removing paragraph (c).
142. Section 5.31 is removed and reserved.
5.31 [Reserved]
143. Section 5.32 is removed and reserved.
5.32 [Reserved]
144. Section 5.33 is removed and reserved.
5.33 [Reserved]
PART 7 - REGISTER OF GOVERNMENT INTERESTS IN PATENTS
145. Part 7 is removed and reserved.
Part 7 [Reserved]
PART 10 - REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE
146. The authority citation for 37 CFR Part 10 continues to read as
follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32, 41.
147. Section 10.18 and its heading are revised to read as follows:
10.18 Signature and certificate for correspondence filed in the
Patent and Trademark Office.
(a) For all documents filed in the Office in patent, trademark, and
other non-patent matters, except for correspondence that is required to
be signed by the applicant or party, each piece of correspondence filed
by a practitioner in the Patent and Trademark Office must bear a
signature, personally signed by such practitioner, in compliance with
1.4(d)(1) of this chapter.
(b) By presenting to the Office (whether by signing, filing,
submitting, or later advocating) any paper, the party presenting such
paper, whether a practitioner or non-practitioner, is certifying that --
(1) All statements made therein of the party's own knowledge are
true, all statements made therein on information and belief are believed
to be true, and all statements made therein are made with the knowledge
that whoever, in any matter within the jurisdiction of the Patent and
Trademark Office, knowingly and willfully falsifies, conceals, or covers
up by any trick, scheme, or device a material fact, or makes any false,
fictitious or fraudulent statements or representations, or makes or uses
any false writing or document knowing the same to contain any false,
fictitious or fraudulent statement or entry, shall be subject to the
penalties set forth under 18 U.S.C. 1001, and that violations of this
paragraph may jeopardize the validity of the application or document, or
the validity or enforceability of any patent, trademark registration, or
certificate resulting therefrom; and
(2) To the best of the party's knowledge, information and belief,
formed after an inquiry reasonable under the circumstances, that--
(i) The paper is not being presented for any improper purpose, such
as to harass someone or to cause unnecessary delay or needless increase
in the cost of prosecution before the Office;
(ii) The claims and other legal contentions therein are warranted by
existing law or by a nonfrivolous argument for the extension,
modification, or reversal of existing law or the establishment of new
law;
(iii) The allegations and other factual contentions have evidentiary
support or, if specifically so identified, are likely to have
evidentiary support after a reasonable opportunity for further
investigation or discovery; and
(iv) The denials of factual contentions are warranted on the
evidence, or if specifically so identified, are reasonably based on a
lack of information or belief.
(c) Violations of paragraph (b)(1) of this section by a practitioner
or non-practitionermay jeopardize the validity of the application or
document, or the validity or enforceability of any patent, trademark
registration, or certificate resulting therefrom. Violations of any of
paragraphs (b)(2)(i) through (iv) of this section are, after notice and
reasonable opportunity to respond, subject to such sanctions as deemed
appropriate by the Commissioner, or the Commissioner's designee, which
may include, but are not limited to, any combination of --
(1) Holding certain facts to have been established;
(2) Returning papers;
(3) Precluding a party from filing a paper, or presenting or
contesting an issue;
(4) Imposing a monetary sanction;
(5) Requiring a terminal disclaimer for the period of the delay; or
(6) Terminating the proceedings in the Patent and Trademark Office.
(d) Any practitioner violating the provisions of this section may
also be subject to disciplinary action. See 10.23(c)(15).
148. Section 10.23 is amended by revising paragraph (c)(15) to read as
follows:
10.23 Misconduct.
* * * * *
(c) * * *
(15) Signing a paper filed in the Office in violation of the
pro-visions of 10.18 or making a scandalous or indecent statement in
a paper filed in the Office.
* * * * *
September 26, 1997 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
[1203 TMOG 63]